Appropriate time to determine whether mark is an “earlier mark” clarified

In Campomar SL v Nike International Ltd ([2010] SGHC 140, May 5 2010), the High Court of Singapore has dismissed Campomar SL's appeal against the decision of the principal assistant registrar of trademarks in Campomar SL v Nike International Ltd ([2009] SGIPOS 11). The principal assistant registrar had allowed the registration of Nike International Ltd's trademark NIKE in Class 3 of the Nice Classification, despite Campomar’s earlier trademark registration for NIKE in Class 3.
Campomar owned a registration for the trademark NIKE for “perfumery with essential oils” in Class 3 (the filing date of the application was April 2 1986). On January 21 2002 Nike successfully applied for the mark to be revoked on the basis of non-use. As such, the mark was revoked, effective from January 21 2002.
In addition, on November 21 2000 Nike applied to register the trademark NIKE in Class 3. Campomar opposed Nike’s application on August 14 2006 on the basis that, as at the date of Nike’s application, Campomar’s registration was still valid (since it was revoked only from January 21 2002). Campomar argued that its mark was an “earlier mark” under Sections 2(1) and 8(1) of the Trademarks Act (Cap 332, 1999). 
Sections 2(1) and 8(1) provide as follows:
"2. (1) In this act, unless the context otherwise requires -
“earlier trademark” means -
(a) a registered trademark or an international trademark (Singapore), the application for registration of which was made earlier than the trademark in question, taking account (where appropriate) of the priorities claimed in respect of the trademarks;
and includes a trademark in respect of which an application for registration has been made and which, if registered, would be an earlier trademark by virtue of Paragraph (a), subject to its being so registered.
8. (1) A trademark shall not be registered if it is identical with an earlier trademark, and the goods or services for which the trademark is sought to be registered are identical with the goods or services for which the earlier trademark is protected."
The High Court held that the appropriate time to determine whether a mark was an “earlier trademark” was at the time of the opposition proceedings, and not at the time of application. It held that, although Section 2(1) defines an 'earlier trademark', it does not indicate the relevant date for determining if one existed. The court concluded that, since Campomar's mark had already been revoked at the time of the opposition proceedings, it was not an earlier trademark for the purposes of Sections 2(1) and 8(1) of the act. 
Campomar has appealed against this decision.
Paul Teo and Michelle Chiang, Drew & Napier LLC, Singapore

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