Richemont International SA v Da Vinci Collections: Trade Mark Infringement & Validity

Richemont International SA sued Da Vinci Collections Pte Ltd in the High Court of Singapore on August 22, 2006, alleging trade mark infringement of its registered "DA VINCI" mark. Richemont sought an injunction to restrain Da Vinci Collections from using the mark on watches and watch straps. Da Vinci Collections denied infringement and counterclaimed for revocation or invalidation of the registration. The court granted summary judgment in favor of Richemont, issuing an injunction against Da Vinci Collections' use of the "DA VINCI" mark in relation to watches, finding that Da Vinci Collections' use infringed Richemont's registered trade mark.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiff

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Richemont sued Da Vinci Collections for trade mark infringement. The court granted an injunction, finding Da Vinci's use infringed Richemont's mark.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Richemont International SAPlaintiffCorporationJudgment for PlaintiffWon
Da Vinci Collections Pte LtdDefendantCorporationInjunction GrantedLost

3. Judges

Judge NameTitleDelivered Judgment
Andrew AngJudgeYes

4. Counsels

Counsel NameOrganization
Paul TeoDrew & Napier LLC
Dedar Singh GillDrew & Napier LLC
Penny Leng Li YuenDrew & Napier LLC
Tan Tee JimLee & Lee
Lam Chung NianLee & Lee

4. Facts

  1. Richemont owns the registered trade mark “DA VINCI” in Singapore for watches and watch straps.
  2. Da Vinci Collections used the word mark “Da Vinci” on watches.
  3. Richemont alleged that Da Vinci Collections' use of “Da Vinci” infringed its registered trade mark.
  4. Da Vinci Collections denied infringement and counterclaimed for revocation of the trade mark registration.
  5. The “DA VINCI” mark was registered in block capitals.
  6. Richemont used the “DA VINCI” mark in cursive form and in block capitals.
  7. Richemont also used the mark in plain typeface on advertisements and catalogues.

5. Formal Citations

  1. Richemont International SA v Da Vinci Collections Pte Ltd, Suit 800/2005, SUM 374/2006, [2006] SGHC 150

6. Timeline

DateEvent
Registered Mark registered in the name of IWC
Richemont Group acquired the International Watch Company
Registered Mark transferred to the plaintiff
Suit filed
First affidavit of Marc Frisanco filed
Judgment issued

7. Legal Issues

  1. Trade Mark Infringement
    • Outcome: The court found that the defendant infringed the plaintiff's registered trade mark.
    • Category: Substantive
    • Sub-Issues:
      • Use of identical sign
      • Genuine use of registered mark
      • Distinctiveness of mark
      • Bad faith in registration
  2. Revocation of Trade Mark
    • Outcome: The court rejected the defendant's counterclaim for revocation of the plaintiff's trade mark.
    • Category: Substantive
    • Sub-Issues:
      • Non-use of trade mark
      • Lack of distinctiveness
      • Bad faith in registration

8. Remedies Sought

  1. Injunction
  2. Damages
  3. Account of Profits
  4. Delivery Up of Infringing Goods

9. Cause of Actions

  • Trade Mark Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Trade Mark Infringement

11. Industries

  • Luxury Goods
  • Retail
  • Watches

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Nation Fittings (M) Sdn Bhd v Oystertec PlcHigh CourtYes[2006] 1 SLR 712SingaporeDistinguished from the present case; the court in Oystertec was considering a situation where the registered mark had been subsumed within other elements to such an extent that it could not be considered to have been used within the meaning of s 22(1) of the Act.
In the Matter of Morny Ld’s Trade MarksCourt of AppealYes(1951) 68 RPC 131EnglandCited for the principle that registration of a word mark in block capital confers protection in a very wide range of typefaces.
Safari Trade MarkRegistrarYes[2002] RPC 23UnknownCited for the principle that a secondary or even third-level product identifier can function as a trade mark if it indicates to the consumer that the product originates from a particular undertaking.
Levi Strauss & Co v ShahHigh CourtYes[1985] RPC 371UnknownCited for the principle that the use of a registered trade mark with other trade marks constitutes 'use' and prevents the mark from being revoked on the ground of non-use.
George Weston Foods Ltd v Manildra Flour Mills Pty LtdUnknownYes(1999) 47 IPR 145UnknownCited for the principle that the use of a registered trade mark with other trade marks constitutes 'use' and prevents the mark from being revoked on the ground of non-use.
Bud and Budweiser Budbräu Trade MarksUnknownYes[2003] RPC 25UnknownCited to explain the distinction between plain words and stylised words in trade mark law.
Express Newspapers Ltd v Star Newspaper CoUK RegYes[1984] IPD 7090United KingdomCited for the principle that if registration of a name or word or other mark takes a particular form, then it is to be inferred that it is intended to confine the mark and its use to that form. If not registered in a particular form, then a mark may be safeguarded by use in some different form, provided that its name or other significance comes shining through.
Elle Trade MarksUnknownYes[1997] FSR 529UnknownDistinguished from the present case; the registered mark in Elle Trade Marks was not a plain word mark.
British Sugar Plc v James Robertson & Sons LtdUnknownYes[1996] RPC 281UnknownCited for the definition of 'devoid of any distinctive character' in trade mark law.
OHIM v Wm Wrigley Jr Company (Doublemint)UnknownYes[2004] RPC 18UnknownCited as an example of a mark consisting of terms which may be used in trade to designate the characteristics of chewing gum.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade mark
  • Infringement
  • Registered mark
  • Distinctive character
  • Genuine use
  • Revocation
  • Word mark
  • Device mark
  • Indicator of origin

15.2 Keywords

  • trade mark
  • infringement
  • da vinci
  • watches
  • singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Trademark Infringement95
Trademarks90
Summary Judgement30
Civil Procedure20
Judgments and Orders20
Contract Law10
Innocent Misrepresentation5
Misrepresentation5
Formation of contract5
Breach of Contract5

16. Subjects

  • Trade Mark Law
  • Intellectual Property