June 1, 2013
Rodyk successfully represented a local company (the Applicant) in revoking the trade mark registration of Autozone Parts Inc, a Fortune 500 company in the USA (the Registered Proprietor).
A registered trade mark may be revoked upon the application of a third party on the ground that the mark has not been used for an uninterrupted period of five years.
The Applicant, Autozone Automotive Enterprise, is a business registered inSingapore and is involved in the import, export and wholesale of automotive spare parts for Japanese vehicles.
The Registered Proprietor registered “AUTOZONE” and (Registered Marks) in Singapore in respect of “retail services, including retail of automotive parts”.
The Registered Proprietor did not have a business presence in Singapore, but had offered goods for sale under the Registered Marks online through their website at www.autozone.com since 1996. The website only accepted online orders for shipments made to addresses within the United States, US Territories and overseas US military addresses. In making orders online, a US ZIP code had to be provided. A person with an address in Singapore was unable to make an order online.
In support of their contention that the Registered Mark has been used in Singapore, the Registered Proprietor submitted evidence that it had shipped mechanic gloves on two separate occasions to a customer based in Singapore. These two sales were made pursuant to an email enquiry initiated by the customer.
The Registrar of the Intellectual Property Office of Singapore accepted the Registered Proprietor’s submission that their retail services were not restricted to their online sales portal, and that their retail services may be offered through other means, such as the use of a merchandise website on the Internet and email communications to facilitate orders.
However, the Registrar noted that the Registered Marks have to be used in relation to the goods and services for which they are registered. In this case, the Registered Marks were registered for retail services and not for goods. Accordingly, even though mechanic gloves were ordered by email and delivered to Singapore, it would not be appropriate to conclude that retail services were provided by the Registered Proprietor in Singapore under the Registered Marks.
The Registrar then considered whether the Registered Marks were “used in Singapore” by virtue of the fact that these marks were used on the Registered Proprietor’s website. The Registrar approved of and adopted the approach taken in other jurisdictions that the mere usage of a trade mark on a website is not sufficient to constitute “use of the trade mark in Singapore” for the purposes of defending a revocation action. It was not enough for the Registered Proprietor to merely offer or advertise retail services on the Internet and hope that someone from Singapore would enquire about its services or goods. The Registered Proprietor must show it had taken an additional active step to offer or advertise its retail services in the form of “direct encouragement or advertisement”. Although the Registered Proprietor produced evidence showing that 282 unique Singapore users had visited its website over a period of 23 months, there was no evidence of any active step on the part of the Registered Proprietor to lead, encourage or induce consumers to the website.
Accordingly, the Registrar held that the Registered Proprietor did not put the Registered Marks to genuine use in the course of trade in Singapore and revoked the registration of the Registered Marks as of 1 March 2010, the date the application for revocation was made by the Applicant.
This case highlights the importance of using a trade mark after it has been registered to prevent third parties from revoking the registration, and that mere use of a trade mark on the Internet without any active step to offer goods/services to the relevant consumers will not be sufficient to defend an attack on the ground of non-use.