Valentino Globe BV v Pacific Rim Industries Inc: Trade Mark Registration Opposition
Valentino Globe BV ("the Appellant") appealed against the High Court's decision to reject its opposition to Pacific Rim Industries Inc’s (“the Respondent”) application for the registration of the latter’s mark known as the “Emilio Valentino & V Device”. The Appellant argued that the registration should not be allowed due to the likelihood of confusion and the Respondent's bad faith. The Court of Appeal dismissed the appeal, finding no likelihood of confusion and insufficient evidence of bad faith on the part of the Respondent.
1. Case Overview
1.1 Court
Court of Appeal1.2 Outcome
Appeal Dismissed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Valentino Globe BV opposed Pacific Rim Industries Inc's trade mark registration. The Court of Appeal dismissed the appeal, upholding the High Court's decision.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Valentino Globe BV | Appellant | Corporation | Appeal Dismissed | Lost | |
| Pacific Rim Industries Inc | Respondent | Corporation | Application for Registration Upheld | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chao Hick Tin | Justice of the Court of Appeal | Yes |
| Andrew Phang Boon Leong | Justice of the Court of Appeal | No |
| V K Rajah | Justice of the Court of Appeal | No |
4. Counsels
4. Facts
- Respondent filed for trade mark registration of "Emilio Valentino & V Device" for leather goods.
- Appellant opposed the registration, citing similarity to its "Valentino" trade marks and bad faith.
- Appellant argued Respondent's mark would cause public confusion.
- Appellant alleged Respondent copied the mark from an Italian gentleman.
- Appellant claimed Respondent lacked proprietorship of the mark in Singapore.
- The High Court rejected the opposition, finding no likelihood of confusion or bad faith.
- The Appellant appealed to the Court of Appeal.
5. Formal Citations
- Valentino Globe BV v Pacific Rim Industries Inc, Civil Appeal No 46 of 2009, [2010] SGCA 14
- Valentino Globe BV v Pacific Rim Industries Inc, , [2009] 4 SLR(R) 577
6. Timeline
| Date | Event |
|---|---|
| Respondent filed the Application Mark for registration | |
| Registration application was accepted and advertised in the Trade Marks Journal | |
| Appellant filed a notice of opposition | |
| Court of Appeal decision |
7. Legal Issues
- Likelihood of Confusion
- Outcome: The Court held that there was no likelihood of confusion.
- Category: Substantive
- Sub-Issues:
- Similarity of marks
- Similarity of goods or services
- Bad Faith
- Outcome: The Court held that there was insufficient evidence of bad faith.
- Category: Substantive
- Sub-Issues:
- Copying of trademark
- Lack of proprietorship
8. Remedies Sought
- Rejection of Trade Mark Registration
9. Cause of Actions
- Opposition to Trade Mark Registration
10. Practice Areas
- Trade Mark Registration
- Intellectual Property Litigation
11. Industries
- Fashion
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Valentino Globe BV v Pacific Rim Industries Inc | High Court | Yes | [2009] 4 SLR(R) 577 | Singapore | The High Court decision that was appealed against in the current judgment. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | Court of Appeal | Yes | [2006] 2 SLR(R) 690 | Singapore | Cited for the approach to determining similarity under s 27(2) of the Trade Marks Act. |
| In the Matter of an Application by the Pianotist Company Ld for the Registration of a Trade Mark | Not Available | Yes | (1906) 23 RPC 774 | England and Wales | Cited for the factors to consider when determining similarity between trademarks. |
| Rothmans of Pall Mall Ltd v Maycolson International Ltd | High Court | Yes | [2006] 2 SLR(R) 551 | Singapore | Cited for the principle that once bad faith is established, the application for registration of a mark must be refused. |
| Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and another and another appeal | Court of Appeal | Yes | [2009] 2 SLR(R) 814 | Singapore | Cited for the principle that the legal burden of proof needed to substantiate an action for revocation and/or invalidation of the registration of a trade mark lies throughout on the plaintiff. |
| Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd | Not Available | Yes | [1999] RPC 367 | England and Wales | Cited for the definition of bad faith in trade mark law. |
| Demon Ale Trade Mark | Not Available | Yes | [2000] RPC 345 | England and Wales | Cited for the interpretation of bad faith in trade mark registration. |
| Harrison v Teton Valley Trading Co Ltd | English Court of Appeal | Yes | [2004] 1 WLR 2577 | England and Wales | Cited for the test for determining the presence of bad faith. |
| Weir Warman Ltd v Research & Development Pty Ltd | High Court | Yes | [2007] 2 SLR(R) 1073 | Singapore | Cited for the interpretation of bad faith in trade mark registration. |
| Ajit Weekly Trade Mark | Not Available | Yes | [2006] RPC 25 | England and Wales | Cited for the combined test of bad faith. |
| Nautical Concept Pte Ltd v Jeffery Mark Richard and another | High Court | Yes | [2007] 1 SLR(R) 1071 | Singapore | Cited for the principle that an allegation of bad faith is a serious claim to make and it must be sufficiently supported by the evidence. |
| Royal Enfield Trade Marks | Not Available | Yes | [2002] RPC 508 | England and Wales | Cited for the principle that a plea of fraud should not be lightly made. |
| Auvi Pte Ltd v Seah Siew Tee and another | Not Available | Yes | [1991] 2 SLR(R) 786 | Singapore | Cited regarding the shifting of burden of proof in cases of copying. |
| Application by Brown Shoe Company Inc for Rectification of the Register in Respect of Trade Mark No B720,262 | Not Available | Yes | [1959] RPC 29 | England and Wales | Cited regarding the shifting of burden of proof in cases of copying. |
| Rainforest Coffee Products Pte Ltd v Rainforest Cafe, Inc | Court of Appeal | Yes | [2000] 1 SLR(R) 725 | Singapore | Cited for the test for the validity of a trade mark licence. |
| BOSTITCH Trade Mark | Not Available | Yes | [1963] RPC 183 | England and Wales | Cited for the test for the validity of a trade mark licence. |
13. Applicable Rules
| Rule Name |
|---|
| Trade Mark Rules |
| r 14 |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act | Singapore |
| s 8(2) | Singapore |
| s 7(6) | Singapore |
| Evidence Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark registration
- Likelihood of confusion
- Bad faith
- Proprietorship
- Valentino
- Emilio Valentino
- Trade Marks Act
- Nice Classification
15.2 Keywords
- trade mark
- registration
- opposition
- bad faith
- confusion
- Valentino
- Emilio Valentino
- leather goods
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Trademark Infringement | 80 |
| Contract Law | 30 |
16. Subjects
- Trade Mark Opposition
- Intellectual Property