Tomy Inc v Dentsply Sirona Inc: Trade Mark Invalidity & Bad Faith Dispute

In Tomy Inc v Dentsply Sirona Inc, the High Court of Singapore dismissed Tomy's appeal against the Adjudicator's decision to invalidate Tomy's trade mark registrations for "MICROARCH," "SENTALLOY," and "BIOFORCE." The court held that Tomy had acted in bad faith by registering the marks despite knowing of Dentsply Sirona's existing contractual rights to those marks under a distribution agreement. The court found that Tomy's actions constituted unacceptable commercial behavior, affirming the invalidation of the trade marks.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

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

Tomy's trade mark registrations invalidated due to bad faith. Tomy registered marks despite knowing Dentsply Sirona's contractual rights, constituting unacceptable commercial behavior.

1.7 Decision Date

19 May 2020

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Tomy Incorporated	Appellant	Corporation	Appeal Dismissed	Lost	Foo Maw Jiun of Dentons Rodyk & Davidson LLP Lee Ai Ming of Dentons Rodyk & Davidson LLP Desmond Chew of Dentons Rodyk & Davidson LLP
Dentsply Sirona Inc.	Respondent	Corporation	Appeal Dismissed	Won	Suhaimi Bin Lazim of Mirandah Law LLP Khoo Lih-Han of Mirandah Law LLP

3. Judges

Judge Name	Title	Delivered Judgment
Dedar Singh Gill	Judicial Commissioner	Yes

4. Counsels

Counsel Name	Organization
Foo Maw Jiun	Dentons Rodyk & Davidson LLP
Lee Ai Ming	Dentons Rodyk & Davidson LLP
Desmond Chew	Dentons Rodyk & Davidson LLP
Suhaimi Bin Lazim	Mirandah Law LLP
Khoo Lih-Han	Mirandah Law LLP

4. Facts

Tomy and GAC had a longstanding distribution relationship spanning five decades.
The relationship was governed by successive agreements, including those signed in 1986, 1998, 2004, and 2012.
The 2012 Agreement was the subsisting agreement when Tomy registered the Subject Marks in Singapore.
The 2012 Agreement defined 'Existing Trademarks' as those owned or licensed by GAC or its Affiliates.
Exhibit 3 of the 2012 Agreement listed the Disputed Marks as 'Existing Trademarks' of GAC/Dentsply.
Tomy registered the Subject Marks despite knowing of Dentsply Sirona's contractual rights to the marks.
The patents in respect of the Products bearing the Disputed Marks belong to the respondent.

5. Formal Citations

Tomy Inc v Dentsply Sirona Inc, Tribunal Appeal No 18 of 2019, [2020] SGHC 105

6. Timeline

Date	Event
1967-01-01	Tomy appointed GAC to distribute orthodontic products.
1986-01-04	1986 Agreement signed between Tomy and GAC.
1998-09-01	1998 Agreement signed between Tomy and GAC.
2004-12-01	2004 Agreement signed between Tomy and GAC.
2012-03-22	2012 Agreement signed between Tomy and GAC.
2013-01-22	Tomy applied to register the Subject Marks in Singapore.
2013-06-07	Registration procedure for Subject Marks concluded.
2017-09-07	Dentsply Sirona filed an application to invalidate the Subject Marks.
2019-06-25	Oral submissions heard by the Adjudicator.
2019-09-02	Adjudicator issued the grounds of decision.
2019-09-30	Tomy filed an appeal against the Adjudicator’s decision.
2019-12-20	Respondent filed its submissions.
2020-01-09	Judgment reserved.
2020-05-20	Judgment delivered.

7. Legal Issues

Bad Faith in Trade Mark Registration
- Outcome: The court held that Tomy registered the Subject Marks in bad faith, thus invalidating the registrations.
- Category: Substantive
- Sub-Issues:
  - Trade mark hijacking
  - Breach of contractual obligations
  - Registration of trade mark belonging to business partner
Trade Mark Ownership
- Outcome: The court determined that ownership of the Disputed Marks vested in GAC and/or the respondent, Dentsply Sirona.
- Category: Substantive
- Sub-Issues:
  - Interpretation of distribution agreements
  - Proprietorship of trade marks
  - Existing trademarks vs Tomy trademarks
Contractual Interpretation
- Outcome: The court interpreted the 2012 Agreement, finding that it demonstrated an intention to divide ownership of trade marks between Tomy and GAC/Dentsply Sirona.
- Category: Substantive
- Sub-Issues:
  - Interpretation of distribution agreements
  - Cross-licensing agreements
  - Obligations under agreements

8. Remedies Sought

Declaration of Invalidity of Trade Mark Registration
Costs

9. Cause of Actions

Invalidation of Trade Mark Registration
Breach of Contract

10. Practice Areas

Trade Mark Litigation
Commercial Litigation

11. Industries

Manufacturing
Healthcare
Dental

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Weir Warman Ltd v Research & Development Pty Ltd	High Court	Yes	[2007] 2 SLR(R) 1073	Singapore	Cited for the principle that the first user of a mark in Singapore is the true owner, absent contractual agreements.
Sifco Industries Inc v Dalia SA	High Court	Yes	[1997] 3 SLR(R) 930	Singapore	Cited in Weir Warman for the proposition that the first user of a mark in Singapore is the true owner.
Hotel Cipriani Srl and others v Cipriani (Grosvenor Street) Ltd and others	High Court of Justice	Yes	[2008] EWHC 3032 (Ch)	England and Wales	Cited for the principle that bad faith is an exception to the 'first-to-file' system.
Hotel Cipriani Srl and others v Cipriani (Grosvenor Street) Ltd and others	Court of Appeal	Yes	[2010] EWCA Civ 110	England and Wales	Upheld the High Court's decision that bad faith is an exception to the 'first-to-file' system.
Festina Lotus SA v Romanson Co Ltd	Court of Appeal	Yes	[2010] 4 SLR 552	Singapore	Cited for the principle that bad faith is determined at the date of application, considering subsequent events.
Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd	High Court	Yes	[1999] RPC 367	England and Wales	Cited for the definition of bad faith, including dealings falling short of acceptable commercial behavior.
Valentino Globe BV v Pacific Rim Industries Inc	Court of Appeal	Yes	[2010] 2 SLR 1203	Singapore	Affirmed the Gromax definition of bad faith and the combined subjective/objective test.
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd	High Court	Yes	[2009] 2 SLR(R) 814	Singapore	Cited for the combined subjective and objective test for bad faith.
Demon Ale Trade Mark	Trade Marks Registry	Yes	[2000] RPC 345	United Kingdom	Cited for the principle that bad faith can involve behavior not breaching any legal duty.
Nautical Concept Pte Ltd v Jeffery Mark Richard	High Court	Yes	[2007] 1 SLR(R) 1071	Singapore	Cited for the relevance of the parties' pre-existing relationship in determining bad faith.
Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH	European Court of Justice	Yes	Case C-529/07	European Union	Cited for factors to consider in a holistic assessment of bad faith.
Philip Morris Products S A v PT Perusahaan Dagang Dan Industri Tresno	Intellectual Property Office of Singapore	Yes	[2010] SGIPOS 8	Singapore	Affirmed the principles from Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH regarding bad faith assessment.
OMG Holdings Pte Ltd v Pos Ad Sdn Bhd	High Court	Yes	[2012] 4 SLR 201	Singapore	Cited for the presumption that foreign law is the same as the lex fori in the absence of pleading or proof.
Converse Inc v Southern Rubber Works Sdn Bhd	Intellectual Property Office of Singapore	Yes	[2015] SGIPOS 11	Singapore	Cited for the principle that 'any person' may bring opposition proceedings under s 13(2) of the Act.
Itochu Corporation v Worldwide Brands, Inc.	Intellectual Property Office of Singapore	Yes	[2007] SGIPOS 9	Singapore	Cited for the principle that 'any person' may bring opposition proceedings under s 13(2) of the Act.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)	Singapore
s 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed)	Singapore
s 23(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed)	Singapore
s 23(5) of the Trade Marks Act	Singapore
s 4(1) of the Trade Marks Act	Singapore
s 36 of the Trade Marks Act	Singapore
s 101(c)(i) of the Trade Marks Act	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade Marks
Bad Faith
Existing Trademarks
Tomy Trademarks
Distribution Agreement
Invalidation
Proprietorship
Non-Exclusive License
Original Equipment Manufacturer
Contractual Obligations

15.2 Keywords

Trade Marks
Invalidity
Bad Faith
Singapore
Intellectual Property
Distribution Agreement
Orthodontic Devices

17. Areas of Law

Area Name	Relevance Score
Trademarks	95
Trade names	90
Bad faith	90
Invalidity	85
Ownership	75
Contract Law	60
Commercial Law	50
Breach of Contract	40
Corporate Law	30

16. Subjects

Trade Mark Law
Intellectual Property
Contract Law