So you think you’ve got a registration: invalidation challenges against trade marks registered in bad faith

Two recent cases in Singapore, where registered trade marks were successfully invalidated on the grounds of bad faith, illustrate that dishonesty by way of “first to file” opportunism does not yield enduring registered rights.

How true are your motives? A bad faith challenge

  1. USA Pro IP Limited v Montfort Services Sdn. Bhd. [2018] SGIPOS 3

USA Pro IP Limited (“USA Pro“) successfully invalidated a registered trade mark for “USA PRO” by Montfort Services Sdn. Bhd (“Montfort“).  USA Pro asserted its registrations of the “USA PRO” mark in several other countries dating back to 1994; USA Pro was also found to be the first user of the  “USA PRO” mark in Singapore, though it had been beaten to the Singapore Register by Montfort. 

In the course of proceedings it transpired that there was a pre-existing relationship between the parties prior to the filing date of the subject mark. The relationship had soured during Montfort’s failed attempt to acquire USA Pro between 2006 and 2008, and shortly after negotiations broke down, Montfort had applied to register the subject mark with knowledge of USA Pro’s rights thereto. Separately, the Registry also found that the subject mark was not used by Montfort at all, and that their actions in other jurisdictions (for e.g. the abandonment of other USA PRO marks) suggested their lack of intent to use. 

Notably, the Registry found that the evidence adduced by USA Pro was sufficient to shift the burden of proof onto Montfort to explain its actions. Montfort failed to do so as the evidence in support of their purported conceptualization of the subject mark was dated between 2010 to 2014, which post-dated Montfort’s application date.  

2. Mahendra Naidu A/L R. Manogaran trading as Sri Sai Traders v Navin Trading Pte. Ltd. [2019] SGIPOS 2

Like USA Pro and Montfort, the parties in this case also had prior dealings, albeit of a different nature. 

A former employee of a company, who had arranged for purchases of Sri Sai Traders’ “SHREE” and “SHREE GOLD” products, left his employer and set up his own company, Navin Trading, which then applied to register stylised versions of the marks “SHREE GOLD” and “SREE GOLD”. Sri Sai Traders sought to invalidate Navin Trading’s registrations on the grounds of bad faith.

Navin Trading chose to remain silent in the face of Sri Sai Traders’ allegations of bad faith, neither responding to the pre-action demand letter, nor filing any evidence in the invalidation proceedings. The Registry regarded this silence as “damning” and had “no trouble finding that [Navin Trading’s] actions fell far below what reasonable and experience traders would regard as commercially acceptable“. Navin Trading’s registered marks were thus invalidated.

It is trite law that there is a high burden of proof for all claims premised on bad faith. However, once the party alleging bad faith has successfully discharged its burden of proof, the evidential burden then shifts to the registered proprietor to refute the allegations. Remaining silent in the face of such allegations, or relying on evidence “after the fact” may well lead to the demise of the proprietor’s registration on the basis of bad faith. 

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