Symphony Holdings Limited v Skins IP Limited [2025] SGIPOS 3

Background and Key Facts

This case involved an opposition proceeding before the IPOS. The Opponent, Symphony Holdings Limited, owned an earlier registered trade mark in Singapore (the “Earlier Mark”). The Applicant, Skins IP Limited, sought to register the same word mark, “SKINS,” in plain font.

A critical factual element was the relationship between the parties. The Applicant, Skins IP Limited, was a company within the Frasers Group, which also included companies that had previously distributed goods bearing the Opponent’s Earlier Mark or were involved in bids related to its intellectual property. The Principal Assistant Registrar found that due to this relationship within the same corporate group, the Applicant knew or must have known of the Opponent’s ownership of the Earlier Mark.

Further relevant facts included the Applicant’s Companies House filings showing it had been completely dormant since its incorporation, suggesting it had not traded or taken steps to establish a lawful right to seek registration. Crucially, the Applicant filed evidence through its attorney but did not explain why it chose to use “SKINS” as its company name and trade mark, nor did it rebut the Opponent’s allegations of bad faith.

Procedural History

The Opponent had previously acquired the Earlier Mark through a purchase agreement. The Applicant had initiated a non-use revocation action against the Earlier Mark, which resulted in a partial revocation after an appeal to the High Court. This specific case was the Opponent’s challenge to the Applicant’s subsequent attempt to register the “SKINS” mark.

Issues

The Opponent raised several grounds for opposing the Applicant’s trade mark application under Singapore’s Trade Marks Act 1998. The primary issue addressed and decided by the tribunal was whether the Applicant’s trade mark application was made in bad faith under Section 7(6) of the Act. Other grounds were also raised but did not need to be decided upon as the bad faith ground was sufficient to dispose of the case.

Judgment

The Principal Assistant Registrar found that the opposition succeeded. The Applicant’s trade mark application was refused registration.

Holding

The tribunal held that the Applicant’s trade mark application was made in bad faith under Section 7(6) of the Trade Marks Act 1998.

Rule of Law Applied

The decision hinged on Section 7(6) of the Trade Marks Act 1998, which states that a trade mark must not be registered if the application is made in bad faith. The established legal principles regarding bad faith from the case Valentino Globe BV v Pacific Rim Industries Inc were applied. These principles state that “bad faith” includes not only actual dishonesty but also dealings considered commercially unacceptable. Whether bad faith exists depends on the specific facts of the case. An allegation of bad faith is serious and must be distinctly proved, though a prima facie case can shift the burden to the responding party.

Reasoning

The tribunal’s reasoning for finding bad faith was based on the specific facts presented. It highlighted the nexus between the Applicant and the Opponent due to their shared corporate group (Frasers Group) and the group’s prior interactions with the Opponent’s mark. This relationship led to the reasonable assumption that the Applicant had knowledge of the Earlier Mark.

Applying the objective test for bad faith – whether the Applicant’s dealings would be commercially unacceptable to reasonable experienced persons in the trade – the tribunal found that such persons would take umbrage with the Applicant’s actions. The Applicant had taken the entire word element of the Earlier Mark. The Applicant’s dormancy and, critically, its failure to offer any explanation for choosing the mark or rebut the allegations strongly supported the finding of bad faith. The tribunal referenced previous cases noting that copying with knowledge and failure to explain can be indicative of bad faith.

The finding of bad faith alone was sufficient to refuse the application, regardless of whether the marks would cause confusion.

Significance for brand owners

This case serves as a crucial reminder for businesses seeking to register trade marks:

• Bad Faith Can Prevent Registration: Even if your mark is similar to an existing one but arguably distinguishable enough not to cause confusion (which was not decided here), an application can be refused solely because it was filed in bad faith.
• Knowledge is Key: If you are aware of an existing mark when you apply for a similar one, especially if you or related entities have a history with that mark, you must be able to demonstrate that your application is made in good faith. Copying a mark with knowledge is a significant factor that can lead to a bad faith finding.
• Transparency Matters: If challenged, the ability to explain your reasons for choosing a particular mark and to rebut allegations of bad faith is vital. Failing to do so can reinforce the perception of commercially unacceptable behaviour.
• Commercially Unacceptable Dealings: Actions perceived as unfair or commercially unacceptable by industry standards, such as copying a competitor’s mark with knowledge and without legitimate justification, can constitute bad faith.
• Conduct Beyond Confusion: This case highlights that trade mark law isn’t just about preventing consumer confusion; it also protects against improper conduct in the application process itself.

For businesses, especially those with complex corporate structures or those acquiring assets previously associated with specific brands, conducting thorough due diligence and ensuring transparent, justifiable reasons for trade mark applications are essential steps to avoid potential bad faith challenges.