Australian firm Weir Warman Ltd sought to invalidate and revoke the trade mark "Warman" registered in Singapore by related firm, Research & Development Pty Ltd on the grounds that the three applications registered in classes 7, 37 and 42, were made in bad faith; that registration was procured by misrepresentation; and there was no genuine use of the mark. The High Court dismissed the application to invalidate but allowed partial revocation.
It was accepted that the Defendant had commenced using the mark on pumps and pump parts in Singapore only in 2001, whereas the Plaintiff, had allegedly been selling "Warman"-marked equipment locally since the early 1960s.
On the facts, the court found that both parties had the rights to protect and register the "Warman" trade mark in non-exclusive territories, including Singapore. The Defendant was thus entitled to individually and independently avail themselves of the protection afforded by the trade mark registration regime. So long as the registrant had a legitimate right to use the mark in the place of registration, the absence of manufacturing rights in the place of registration was irrelevant and was not a basis to refuse registration or removal of a registered trade mark.
As a registrant had no general "duty to disclose" relevant circumstances, the omission by the Defendant to state its contractual manufacturing restraints did not amount to a misrepresentation.
The court also held that non-use had been established in respect of classes 37, 42 and "milling equipment and valves" in Class 7 and consequently revoked the registrations. There was however, genuine use in respect of "pumps and pump parts" in class 7 - such use need not be quantitatively significant, as long as it was sufficient to create or maintain market share for the goods or services. This was evidenced by the Defendant's sales transactions such as the purchase order, shipping and documentation instructions, bills and invoice. In the absence of actual sales evidence, genuine use could still be established by showing the requisite "active step" that went beyond simply advertising the goods on a website and waiting for enquiries. In this case, the Defendant adduced evidence through their fax to a Singapore company offering the sale of "Warman" pumps and through a relevant meeting report.