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Article on Emilio Valentino

June 2010

Valentino Globe BV v Pacific Rim Industries Inc [2010] SGCA 14    -    The luxury fashion brand Valentino Globe B.V. (“Valentino Globe”) failed in their bid to establish that their marks were well known in Singapore and also failed to prevent the registration of the mark “Emilio Valentino & Device” by Pacific Rim Industries Inc. (“ Pacific Rim ”).  Pacific Rim was represented by Samuel Seow Law Corporation (“SSLC”).

 

Background

In 2003, SSLC filed Trademark Application No. T03/20621F in Class 18 (“TM Application”) on behalf of Pacific Rim. The mark was known as the “Emilio Valentino & V Device” (“the Application Mark”). The registration of the TM Application was then opposed by Valentino Globe. 

Valentino Globe owns an array of “Valentino” trade marks being various designs and these are referred to as “the Valentino Marks” hereinafter. Valentino Globe’s opposition was dismissed on all grounds of opposition brought forth by Valentino Globe. The Registrar of Trade Marks (“the Registrar”) found the Application Mark to be inherently distinctive and capable of distinguishing Pacific Rim ’s goods from those of Valentino Globe. The learned Registrar ruled in favour of Pacific Rim and Valentino Globe appealed this decision in the High Court. 

Valentino Globe’s case was dismissed in its entirety by High Court Judge, Justice Chan Seng Onn.  The High Court upheld the ruling by the learned Registrar and accepted the arguments made on behalf of Pacific Rim .

Appeal to the Court of Appeal

Valentino Globe pursued their objection to the Application Mark, filing Civil Appeal No. 46 of 2009 against the High Court ruling. Valentino Globe relied on inter alia sections 7(6) and 8(2) of the Trade Marks Act 1999 (“the Act”).  They argued as follows:-

(1)   Pursuant to section 8(2), the registration of the Application Mark should not be allowed because there existed a likelihood of confusion on the part of the public as the Application Mark was similar to the Valentino Marks and was to be registered for similar or identical goods (“the Confusingly Similar Issue”).

(2)   Pursuant to section 7(6), the registration of the Application Mark should not be allowed because of Pacific Rim ’s bad faith.

Section 8(2) of the Act provides as follows:-

A trade mark shall not be registered if because –

(a)   It is identical with an earlier trade mark and is to be registered for good s or services similar to those for which the earlier trade mark is protected; or

(b)   It is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public.

In respect of the Confusingly Similar Issue, while only 2 of the Valentino Marks (“the 2 Appeal Marks”) could be said to be similar to the Application Mark, section 8(2)(b) was therefore deemed applicable.

The Application Mark was to be registered for Class 18 of the Nice classification, in respect of “Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; hides; trunks and travelling bags; umbrellas; parasols and walking sticks; whips, harness and saddles”.  The Application Mark and the 2 Appeal Marks are shown here as follows:

 

Decision of the Court of Appeal

The Court of Appeal examined the 3 marks closely. Each mark consisted of a combination of word(s) and design. The only thing that was identical in all the 3 marks was the word “valentino” but even there the font for the word “valentine” in all the 3 marks was different.  The Court of Appeal said that the most one could say about all 3 designs were that they were based on the letter “v”. To this very limited extent, there was similarity between the Application Mark and the 2 Appeal Marks. The Court of Appeal did not think it could reasonably hold that the Application Mark was similar to the 2 Appeal Marks.

The Court of Appeal noted that the Appeal Marks were registered in respect of Class 25 of the Nice Classification. It therefore found that the Application Mark was not registered in respect of the same or similar goods as the Appeal Marks.

The Court of Appeal did not think that there would be any likelihood of confusion on the part of the public if the Application Mark were to be registered. The fact that goods sold under Valentino Globe’s brand were up-market goods was not lost on the Court. The section of the public which would purchase Valentino Globe’s goods was likely to be a fairly discernible lot and clearly not a moron in a hurry. Valentino Globe’s ground of objection to the registration of the Application Mark based on section 8(s) therefore failed.

As regards the bad faith issue, Section 7(6) of the Act reads as follows:

A trade mark shall not be registered if or the extent that the application is made in bad faith. The Court of Appeal referred to the leading case of Gromax Plasticulture Ltd v Do & Low Nonwovens Ltd [1999] RPC 367 wherein it was held that

“Plainly [bad faith] includes dishonesty and …it includes also some dealings which fall short of the standards of acceptable commercial behavior observed by reasonable and experienced men in the particular are [of trade] being examined.”

The Court also considered local case law. Once bad faith is established, the application for registration of a mark must be refused even though the mark would not cause confusion. (Rothmans of Pall Mall Ltd v Maycolson International Ltd [2006] 2 SLR(R) 551.

The Court of Appeal was of the opinion that even though presently Valentino Globe was opposing the registration of the Application Mark, there was no difference as regards the burden of proof on bad faith in both scenarios. It was therefore for Valentino Globe to bear the burden of proof to substantiate the ground for opposing the said registration.

It was strenuously argued for Valentino Globe that the High Court Judge had failed to apply the proper test to determine the question of bad faith and consequently, had failed to take into account or failed to give proper weight to the following 3 main issues, of which 2 were addressed by the Court of Appeal. The Court of Appeal considered the 3rd contention that Pacific Rim had hijacked the Valentino Marks because the Application Mark contained the same word “valentine” as absolutely without merit and did not feel the need to address that contention. 

Valentino Globe contended as follows:-

(1)   Pacific Rim had copied the Application Mark from the trademark of one Mr Emilio Valentino

(2)   The proprietorship of the Application Mark in Singapore did into belong to Pacific Rim.

The Court of Appeal considered that it was Valentino Globe had to show, not only the conduct of Pacific Rim in applying for the said registration fell short of normally accepted standards of commercial behavior, but also that Pacific Rim knew of facts which, to an ordinary person, would have made the latter realise that what it was doing would be regarded as breaching those standards.

There was significantly no evidence shown before the Court of Appeal that Pacific Rim had in deriving the Application Mark had copied the Valentino Marks.  It was also not disputed that there was no connection between Mr Emilio Valentino and PRII.

While it was true that the EV Mark incorporated the name of Mr Emilio Valentino, this fact could not per se suggest that Pacific Rim had copied the Application Mark from the EV Mark. Pacific Rim had claimed that its President had created the Application Mark independently. The High Court Judge had however noted that counsel for Valentino Globe did not call on Pacific Rim’s President to testify as to the originality of her design.  The Court of Appeal stated that Valentino Globe had failed to even make a prima facie case of bad faith and had failed to discharge this burden of proof. The burden of disproving any element of bad faith on Pacific Rim’s part did not arise.  There was nothing for PRII to rebut and no adverse inference was to be drawn against Pacific Rim. 

The Court of Appeal found it clear that Valentino Globe had no valid reasons to object to the registration of the Application Mark. It was of the opinion that Valentino Globe sought to acquire, which it was not entitled to, a monopoly over the use of a common name “Valentino”. The Appeal was dismissed with costs and the usual consequential orders.

The case was led by our Managing Director, Mr Samuel Seow, assisted by Mr Kelvin Lee and Ms Esther Seow.

www.sslawcorp.com 

 

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