Nike v Campomar: Res Judicata & Trade Mark Revocation for Non-Use of NIKE in Perfumery

Nike International Ltd and Nike Singapore Pte Ltd (collectively, "Nike") opposed Campomar Sociedad Limitada's ("Campomar") application to register the NIKE trademark and sought to revoke Campomar's existing NIKE trademark registration in Singapore. The High Court dismissed Nike's appeal against the dismissal of its opposition based on res judicata. The court allowed Campomar's appeal against the revocation of its trademark, finding sufficient evidence of genuine use of the NIKE mark in Singapore within the relevant period.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal in OM 25 dismissed; appeal in OM 26 allowed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Nike's opposition to Campomar's NIKE trademark registration was dismissed due to res judicata. Campomar successfully appealed the revocation of its NIKE trademark.

1.7 Decision Date

4 August 2005

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Nike International Ltd	Appellant, Applicant	Corporation	Appeal dismissed	Lost	Christopher Woo, Clarence Lee
Nike Singapore Pte Ltd	Appellant	Corporation	Appeal dismissed	Lost	Christopher Woo, Clarence Lee
Campomar Sociedad Limitada	Respondent, Defendant	Corporation	Appeal allowed	Won	Patrick Yap

3. Judges

Judge Name	Title	Delivered Judgment
Tay Yong Kwang	Judge	Yes

4. Counsels

Counsel Name	Organization
Christopher Woo	Harry Elias Partnership
Clarence Lee	Harry Elias Partnership
Patrick Yap	K L Tan and Associates

4. Facts

Campomar applied to register the NIKE trademark in Class 3 in 1992.
Nike International opposed the application.
The Assistant Registrar directed amendment of the specification.
Nike International applied for leave to appeal out of time, which was dismissed.
Campomar's application with the amended specification was re-advertised.
Nike companies lodged a second notice of opposition.
Nike International applied to revoke Campomar's trade mark registration.
Campomar filed statutory declarations claiming use of the mark.
Nike International filed statutory declarations disputing Campomar's claims.
Campomar obtained leave to file a further affidavit exhibiting a 2001 price list.

5. Formal Citations

Nike International Ltd and Another v Campomar Sociedad Limitada, OM 25/2004, 26/2004, [2005] SGHC 139

6. Timeline

Date	Event
1986-04-02	Trade mark registered
1989-12-30	Trade mark registration
1992-08-21	Campomar applied to register “NIKE” in class 3
1996-05-01	NIKE mark used on perfume products
1996-11-05	Sale of NIKE perfume products ceased
1997-10-10	Campomar’s application was advertised before acceptance
2001-04-01	First opposition heard
2001-07-16	AR Chua's grounds of decision dated
2001-07-24	Campomar restricted the specification by lodging Form TM27
2001-08-24	Nike International wrote to AR Chua
2001-08-31	Application heard before Kan Ting Chiu J
2001-10-11	Nike International wrote to IPOS
2001-11-30	Campomar’s application with the amended specification was re-advertised
2002-01-21	Nike International filed its application for revocation
2002-01-25	The Nike companies lodged a notice of opposition against the re-advertised mark
2004-01-01	Second opposition took place
2004-10-01	Campomar obtained leave of court from Andrew Ang JC to file a further affidavit by Corrales exhibiting a 2001 price list
2004-11-29	Corrales said
2005-08-05	Decision Date

7. Legal Issues

Res Judicata
- Outcome: The court held that res judicata applied, barring the second opposition.
- Category: Procedural
- Related Cases:
  - [1988] SLR 921
  - [2001] 1 SLR 591
Trade Mark Revocation
- Outcome: The court allowed Campomar's appeal, setting aside the revocation of its trade mark, finding sufficient evidence of genuine use.
- Category: Substantive
- Related Cases:
  - [1979] RPC 27
  - [1994] 1 SLR 625
  - [2002] FSR 51
  - [1962] RPC 1
  - [2004] WL 2945720
Genuine Use of Trade Mark
- Outcome: The court found that Campomar had demonstrated genuine use of its mark on perfume products imported into Singapore commercially.
- Category: Substantive

8. Remedies Sought

Dismissal of Trade Mark Application
Revocation of Trade Mark Registration

9. Cause of Actions

Trade Mark Opposition
Trade Mark Revocation

10. Practice Areas

Intellectual Property Law
Trade Mark Opposition
Trade Mark Revocation

11. Industries

Cosmetics
Retail

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Reebok International Ltd v Royal Corp	High Court	Yes	[1988] SLR 921	Singapore	Cited for the essential conditions for res judicata and issue estoppel.
Chia Ah Sng v Hong Leong Finance Limited	High Court	Yes	[2001] 1 SLR 591	Singapore	Cited for the application of the doctrine of res judicata.
Tiffany & Co v Fabriques de Tabac Reunies SA	Court of Appeal	Yes	[1999] 3 SLR 147	Singapore	Cited regarding the determination of rights in trademark cases, specifically whether to consider facts occurring after the date of application.
REVUE Trade Mark	N/A	Yes	[1979] RPC 27	N/A	Cited for the principle that promotional materials can constitute use of a mark.
Swanfu Trading Pte Ltd v Beyer Electrical Enterprises Pte Ltd	Court of Appeal	Yes	[1994] 1 SLR 625	Singapore	Cited in relation to the meaning of 'bona fide use' in trademark law.
Laboratoire De La Mer Trade Marks	N/A	Yes	[2002] FSR 51	N/A	Cited for the principle that the smaller the amount of use of a trademark, the more carefully it must be proved.
“NODOZ” Trade Mark	N/A	Yes	[1962] RPC 1	N/A	Cited for the principle that a single use of a trademark can suffice in an appropriate case, but such use should be established by convincing proof.
La Mer Technology Inc v Laboratoires Goemar SA	N/A	Yes	[2004] WL 2945720	N/A	Cited for the principle that the use of a mark which is merely internal to the proprietor would be insufficient to constitute “genuine use”

13. Applicable Rules

Rule Name
r 23 of the Trade Marks Rules (Cap 332, 2000 Rev Ed)

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 1999 Rev Ed)	Singapore
s 22(1) of the Trade Marks Act (Cap 332, 1999 Rev Ed)	Singapore
s 105 of the Trade Marks Act (Cap 332, 1999 Rev Ed)	Singapore
s 22(2) of the Trade Marks Act (Cap 332, 1999 Rev Ed)	Singapore
Trade Marks Act (Cap 332, 1992 Rev Ed)	Singapore
ss 22(3) and 22(4) of the TMA 1999	Singapore
ss 27(4)(c) of the TMA 1999	Singapore
ss 18 and 19(1) of the TMA 1992	Singapore
s 21 of the TMA 1992	Singapore
s 40(1)(b) of the TMA 1992	Singapore
s 34(1)(c) of the Supreme Court of Judicature Act (Cap 322, 1999 Rev Ed)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Res Judicata
Trade Mark
Genuine Use
Revocation
Opposition
Specification
Advertisement
Proprietor
Non-Use
Perfume
Cosmetics
Associated Companies
Entrepot Trade

15.2 Keywords

Trade Mark
NIKE
Campomar
Res Judicata
Revocation
Non-Use
Perfume
Singapore

16. Subjects

Trade Marks
Intellectual Property
Civil Procedure

17. Areas of Law

Trade Mark Law
Res Judicata
Civil Procedure