Campomar SL v Nike International Ltd: Trade Mark Registration Dispute
Campomar SL appealed against the decision to allow Nike International Ltd to register the 'NIKE' trademark. Campomar argued that its earlier, identical trademark registration should have prevented Nike's registration. The Court of Appeal of Singapore allowed Campomar's appeal, holding that the registration of Nike's mark would result in two identical marks being owned by two different parties on the register for a period of time, which is not permissible under the Trade Marks Act.
1. Case Overview
1.1 Court
Court of Appeal1.2 Outcome
Campomar's appeal is allowed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Campomar SL and Nike International Ltd dispute the registration of the 'NIKE' trademark. The court addresses the issue of conflicting earlier trademarks.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Campomar SL | Appellant | Corporation | Appeal allowed | Won | |
| Nike International Ltd | Respondent | Corporation | Appeal dismissed | Lost |
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
- Campomar registered the 'NIKE' mark in Class 3 on 30 December 1989, effective from 2 April 1986.
- Nike International applied to register the 'NIKE' mark in Class 3 on 20 November 2001.
- Nike International applied to revoke Campomar's mark on 21 January 2002.
- Campomar’s rights to the 1986 Mark were deemed to have ceased from 21 January 2002.
- The registration of Nike's mark would take effect from 20 November 2001.
- The 1986 Mark was on the register until 21 January 2002.
5. Formal Citations
- Campomar SL v Nike International Ltd, Civil Appeal No 78 of 2010, [2011] SGCA 6
6. Timeline
| Date | Event |
|---|---|
| Campomar applied to register the mark “NIKE” in Class 3. | |
| Campomar’s mark was registered. | |
| Nike International applied to register the Mark in Class 3. | |
| Nike International filed an application to revoke Campomar’s 1986 Mark. | |
| Campomar's mark was revoked following the decision of the Court of Appeal. | |
| Nike International’s Registration Application was accepted for registration and published. | |
| Campomar filed a notice of opposition. | |
| Hearing before the Principal Assistant Registrar of Trade Marks. | |
| The PAR held that Campomar failed on both grounds of opposition. | |
| The Judge dismissed Campomar’s appeal. | |
| Judgment reserved. |
7. Legal Issues
- Trade Mark Registration
- Outcome: The court held that the registration of Nike's mark would result in two identical marks being owned by two different parties on the register for a period of time, which is not permissible under the Trade Marks Act.
- Category: Substantive
- Sub-Issues:
- Conflicting earlier trade mark
- Validity of trade mark registration
- Related Cases:
- [2005] 4 SLR(R) 76
- [2006] 1 SLR(R) 919
- [2010] 3 SLR 951
- [2003] RPC 50
- [2001] RPC 10
- [1999] 2 SLR(R) 541
- [2009] SGIPOS 7
- [2004] EWHC 943 (CH)
8. Remedies Sought
- Rejection of Trade Mark Registration
- Declaration of Invalidity of Trade Mark Registration
9. Cause of Actions
- Opposition to Trade Mark Registration
- Application for Revocation of Trade Mark
10. Practice Areas
- Trade Mark Registration
- Intellectual Property Litigation
11. Industries
- Retail
- Fashion
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Nike International Ltd and another v Campomar SL | High Court | Yes | [2005] 4 SLR(R) 76 | Singapore | Reversed the decision of the Principal Assistant Registrar of Trade Marks regarding the revocation of Campomar's 1986 mark. |
| Nike International Ltd v Campomar SL | Court of Appeal | Yes | [2006] 1 SLR(R) 919 | Singapore | Restored the decision of the Principal Assistant Registrar of Trade Marks, revoking Campomar’s 1986 mark. |
| Campomar SL v Nike International Ltd | High Court | Yes | [2010] 3 SLR 951 | Singapore | The Judge dismissed Campomar’s appeal against the PAR’s decision. |
| Riveria Trade Mark | UK Trade Marks Registry | Yes | [2003] RPC 50 | United Kingdom | Discusses the relevant time to consider if there was an “earlier trade mark”. |
| Transpay Trade Mark | UK Trade Marks Registry | Yes | [2001] RPC 10 | United Kingdom | Discusses events occurring between the date of application for registration and the date on which the decision was made on the application. |
| Tiffany & Co v Fabriques de Tabac Reunies SA | Court of Appeal | Yes | [1999] 2 SLR(R) 541 | Singapore | The appropriate time to consider if the public was likely to be confused by an applicant’s mark was at the time at which the opposition proceeding was heard. |
| Hugo Boss AG v Reemtsma Cigarettenfabriken GMBH | Intellectual Property Office of Singapore | Yes | [2009] SGIPOS 7 | Singapore | The point in time at which the Registrar should consider if prior expunged marks were still “on the register” for the purposes of a s 23(1) objection was at the point in time when the Registrar decided whether the later mark could be entered onto the register. |
| Kambly SA Specialities de Biscuits Suisses v Intersnack Knabber-Geback GMBH & Co KG | High Court of Justice | Yes | [2004] EWHC 943 (CH) | England and Wales | The critical date for determining whether there was already on the register a trade mark belonging to a different proprietor was the date when the mark was to be entered on the register. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 8(1) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(1) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 22(7) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 15(2) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 23(3) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Registration
- Revocation
- Earlier trade mark
- Bad faith
- Relation-back
- Overlap period
15.2 Keywords
- Trade mark
- Registration
- Nike
- Campomar
- Intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Trademark Infringement | 80 |
| Administrative Law | 30 |
16. Subjects
- Trade Mark Law
- Intellectual Property