Campomar SL v Nike International Ltd: Trade Mark Opposition Based on Earlier Trade Mark

Campomar SL appealed against the decision of the Principal Assistant Registrar of Trade Marks, which allowed Nike International Ltd's application to register the trademark "Nike" in Class 3. Campomar opposed the application, arguing that it was identical to their earlier registered mark. The High Court dismissed the appeal, holding that the relevant time to determine if there was an earlier trade mark was at the time of the opposition proceedings, and since Campomar's mark had been revoked by that time, it could not be considered an earlier trade mark. The court ordered costs to be taxed if not agreed.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Campomar SL opposed Nike International Ltd's trademark registration. The court dismissed the appeal, finding Campomar's earlier trademark was revoked during opposition.

1.7 Decision Date

4 May 2010

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Campomar SL	Appellant	Corporation	Appeal dismissed	Lost	Prithipal Singh of K.L. Tan & Associates
Nike International Ltd	Respondent	Corporation	Application allowed	Won	Toh Wei Yi of Harry Elias Partnership Michael Palmer of Harry Elias Partnership

3. Judges

Judge Name	Title	Delivered Judgment
Choo Han Teck	J	Yes

4. Counsels

Counsel Name	Organization
Prithipal Singh	K.L. Tan & Associates
Toh Wei Yi	Harry Elias Partnership
Michael Palmer	Harry Elias Partnership

4. Facts

Campomar registered the mark “Nike” in Class 3 for “perfumery with essential oils” on 2 April 1986.
Nike filed an application seeking registration of the trademark “Nike” in Class 3 on 20 November 2001.
Nike applied to have the 1986 mark revoked on 21 January 2002.
The Court of Appeal found in favour of Nike and ordered that Campomar’s rights to the 1986 mark be deemed to have ceased from 21 January 2002.
Nike’s application to register the application mark was published on 14 June 2006.
Campomar filed a Notice of Opposition on 14 August 2006.

5. Formal Citations

Campomar SL v Nike International Ltd, Originating Summons No 1353 of 2009, [2010] SGHC 140

6. Timeline

Date	Event
1986-04-02	Campomar registered the mark “Nike” in Class 3
2001-11-20	Nike filed an application seeking registration of the trademark “Nike” in Class 3
2002-01-21	Nike applied to have the 1986 mark revoked
2006-06-14	Application mark was published
2006-08-14	Campomar filed a Notice of Opposition
2010-05-05	Judgment delivered

7. Legal Issues

Trade Mark Opposition
- Outcome: The court held that the relevant time to determine if there was an earlier trade mark was at the time of the opposition proceedings.
- Category: Substantive
- Related Cases:
  - [2006] 1 SLR(R) 919
  - [2003] RPC 50
  - [2001] RPC 10
  - [1999] 2 SLR(R) 541

8. Remedies Sought

Refusal of Trade Mark Registration

9. Cause of Actions

Trade Mark Opposition

10. Practice Areas

Trade Mark Opposition
Intellectual Property Litigation

11. Industries

Retail
Cosmetics

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Nike International Ltd v Campomar SL	Court of Appeal	Yes	[2006] 1 SLR(R) 919	Singapore	Court of Appeal found in favour of Nike and ordered that Campomar’s rights to the 1986 mark be deemed to have ceased from the date of the application of the revocation proceedings.
Riveria Trade Mark	UK Trade Marks Registry	No	[2003] RPC 50	United Kingdom	Discussed in relation to the appropriate time to consider if there was an “earlier trade mark” but distinguished by the court.
Transpay Trade Mark	UK Trade Mark Registry	Yes	[2001] RPC 10	United Kingdom	Cited for the position that at opposition proceedings, it was proper to take into account events that occurred between the date of application for registration and the date the final decision came to be made.
Tiffany & Co v Fabriques de Tabac Reunies SA	Court of Appeal	Yes	[1999] 2 SLR(R) 541	Singapore	Cited for the approach that the courts must be aware of the realities of the situation at the date that the opposition proceedings are heard.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)	Singapore
s 2(1) of the Trade Marks Act	Singapore
s 8(1) of the Trade Marks Act	Singapore
s 8(2) of the Trade Marks Act	Singapore
s 13 of the Trade Marks Act	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Earlier trade mark
Trade mark revocation
Opposition proceedings
Registered trade mark

15.2 Keywords

Trade mark
Opposition
Earlier trade mark
Revocation
Registration

17. Areas of Law

Area Name	Relevance Score
Trademarks	95
Administrative Law	30

16. Subjects

Trade Marks
Intellectual Property