Before Assistant Registrar Chua Ser Ching
18 and 25 July 2001
Trade Mark - application for registration - opposition - whether there is existing reputation in Singapore - bona fides of application - applicant's claim to the mark suspect - Trade Marks Act (1992 Revised Edition) s 12 and 15.
The Applicant applied for the registration of a mark consisting of the words "Valentino Rudy" in respect of Class 14 goods. The Opponent has no prior registration for "Valentino" but claims to have used "Valentino" in Singapore since 1989. The Opponent was unable, however, to provide any direct evidence of use in Singapore.
The Opponent also alleged that the Applicant's application is not bona fide. The Applicant claimed that its goods are designed by a famous fashion designer called Valentino Rudy but such a person does not, from the Opponent's evidence, exist. The Applicant also claimed a connection with an Italian company Valentino Rudy S.r.l. but the company seems to have been adjudicated bankrupt and its assets sold.
- The Opponent has failed to show that "Valentino" has a reputation in Singapore for the goods concerned. The s15 ground therefore fails.
- The evidence pertaining to the bankruptcy of Valentino Rudy S.r.l. is unacceptable due to the lack of English translations of the relevant documents.
- The Applicant's manner of marketing its goods may be questionable but it is no basis for rejecting the subject application. Ultimately, the question to be decided under s12 is whether the Applicant is the rightful proprietor of the subject mark.
- There is no evidence that the word "Valentino" belongs to anyone else in Singapore for the goods concerned.
- Trade Marks Act (Cap. 332, 1992 Revised Edition), Sections 12 and 15.
- Harrods Case (1935) 52 RPC 65
- Plantation Wood [1958] RPC 400
- Rawhide [1962] RPC 133
- Tiffany & Co v Fabrique de Tabac Reunies SA [1999] 3 SLR 47
- Mr Lim Teng Leong (M/s Donaldson & Burkinshaw) for the Applicant;
- Ms Michelle Tan (Drew & Napier LLC) for the Opponent.