In more detail

The Applicant, a UK-based intellectual property (IP) leasing company, applied to register the "SKINS" word mark in Singapore in February 2020 for goods in Class 24, including textiles, towels and bed linen.

The Opponent, a Hong Kong-based sports-branding company, opposed the application based on its earlier " " mark registered in Classes 10, 18, 25, and 28.

The Opponent alleged that the Applicant's actions were in bad faith, citing its close corporate ties to Sports Direct Holdings Limited ("Sports Direct") and Four Marketing Limited ("Four Marketing"), entities that had previously distributed or attempted to acquire rights to the "SKINS" brand. The Applicant, Sports Direct, and Four Marketing are all ultimately owned by Frasers Group plc. The Applicant was incorporated just three weeks after Four Marketing's failed bid to acquire the Opponent's IP rights and immediately began filing trade mark applications for "SKINS" globally, including in Singapore. Since its incorporation, the Applicant had been completely dormant and had not traded or taken any step in trade or commerce to legitimize, create or establish any lawful right to seek registration of the "SKINS" word mark.

The PAR found that the Applicant must have known of the Opponent's rights in the "SKINS" mark, given the corporate relationships and prior dealings. The Applicant did not rebut these allegations or provide any explanation for its choice of mark.

The PAR applied the legal framework for bad faith as set out in Valentino Globe BV v. Pacific Rim Industries Inc [2010] 2 SLR 1203, which included both subjective and objective elements. The subjective element was satisfied due to the Applicant's knowledge of the Opponent's rights. The objective element was also met, as the Applicant's conduct (attempting to register a mark identical to the Opponent's mark without justification) was deemed commercially unacceptable.

Although the goods covered by the marks were in different classes (Class 24 versus Classes 10, 18, 25 and 28), the PAR emphasized that once bad faith is established, the application must be refused even if the mark would not cause any confusion.

While the PAR declined to rule definitively on the other grounds of opposition under sections 8(2)(b), 8(4)(b)(i) and 8(7)(a) of the TMA, she expressed preliminary doubts about the similarity of goods and the strength of the Opponent's evidence on goodwill and reputation in Singapore.

Ultimately, the PAR found that the opposition succeeded on the ground of bad faith, and the application was refused. She also awarded costs to the Opponent.

Key takeaways

This decision is a good example of how corporate affiliations, prior dealings and potential transactions can be relied upon to establish the requisite "nexus" for the finding of bad faith.

IPOS has also reaffirmed that trade mark applications made with knowledge of another party's rights and without legitimate commercial justification may be refused for bad faith, even in the absence of confusion or overlapping goods or services.

Importantly, the Applicant's failure to explain its choice of mark or rebut the Opponent's allegations was a critical factor in the finding of bad faith. Applicants seeking to rebut a presumption of bad faith should therefore ensure they are able to put forth positive evidence as to why they have chosen a particular name or mark with a good faith intention to use such mark.  

This decision underscores the importance of monitoring trade mark filings by related third party entities and acting swiftly to oppose applications that may be made in bad faith to protect a brand owner's rights, and deter against unauthorized use, applications and potential dilution of rights.

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