BIGFOOT INTERNET VENTURES PTE. LTD. (Applicant), a wholly-owned international investment subsidiary of the Bigfoot Group of Companies, applied to revoke the trademark belonging to, APPLE INC. (Registered Proprietor), on the ground that it had not been used in Singapore for a continuous period of 5 years.
The trade mark was applied for in 1998 for “Computer software; all included in Class 9″, and completed registration on 5 March, 2001. In this revocation, the Applicants relied on both Sections 22(1)(a) and 22(1)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”).
The mark “Sherlock” was first used by the Proprietors as a software application in connection with version 8.5 of the Macintosh computer operating system, Mac OS. “Sherlock” was an integrated search tool which performed two main functions: as an internet search engine and for searching for (and finding) files within the Mac OS system.
For some time, the “Sherlock” search tool was also progressively updated along with these newer versions of Mac OS. However, over time, “Sherlock” was replaced by other tools (although it continued to be included with the default installation). The “Sherlock” search tool was finally removed altogether from Mac OS in 2007.
The case centered on whether the evidence of use adduced by the Registered Proprietor was sufficient to establish genuine use of the Subject Mark in Singapore within the relevant periods such that it ought not to be revoked under Sections 22(1)(a) or 22(1)(b) of the Act, i.e. (i) 6 March 2001 to 5 March 2006 (the “First 5-Year Period”) and (ii) 12 March 2010 to 11 March 2015 (the “Second 5-Year Period”).
The Proprietors found no issues at all with convincing the Hearing officer that there had been genuine use of the trade mark during the first 5-Year period. However, the same could not be said for the Second 5-Year Period as the “Sherlock” software was removed from the Mac OS in 2007.
During oral argument though, counsel for the Proprietors sought to persuade the Hearing Officer that just because there was a newer operating system does not mean that older versions of the Mac OS were not being used, and that users of older Mac OS versions may still look to download the Update Combo (upgrades and updates).
However, the Hearing Officer opined at [44] that: “with the effluxion of time, and the obsolescence of the “Sherlock” application, in the absence of clear and convincing evidence that there are still downloads of the Update Combos from Singapore in the Second 5-Year Period between 12 March 2010 to 11 March 2015 (or indeed any other evidence of genuine use), I cannot arrive at the conclusion that the Subject Mark was put to genuine use in Singapore within the Second 5-Year Period. The burden of proof is on the Proprietors and in my judgment, they have failed to discharge it”.
For these reasons, the Hearing Officer concluded that the Subject Mark was not put to genuine use in Singapore within the Second 5-Year Period and the application for revocation was successful.
Another noteworthy observation of the decision concerned the issues of ‘software updates’ and ‘whether merely providing software updates on a website was enough’.
The Hearing Officer clarified that, based on the persuasive reasoning found in Ansul BV v Ajax Brandbeveiliging BV [2003] IP & T 970, post-sale products/support (such as upgrades and updates) could amount to genuine use of the Subject Mark in Singapore.
However, the application and acceptance of this principle would depend on the factual matrix of each case.