Time to stop use of DA VINCI mark on watches, says High Court

In Richemont International SA v Da Vinci Collections Pte Ltd, the Singapore High Court has ruled that the defendant, Da Vinci Collections Pte Ltd, had infringed Richemont International SA's Singapore registered trademark DA VINCI in respect of "watches".

Richemont International owns all the Singapore registered trademarks of the International Watch Company, including the DA VINCI trademark in Class 14 of the Nice Classification.

Da Vinci Collections is a Singaporean company which had started off selling luxury furniture and light fittings for residential, commercial and office premises in 1994 under the DA VINCI mark. In 2004, it branched out into the retail of fashion accessories such as watches, jewellery and leather goods under the DA VINCI brand.

Da Vinci Collections used the mark DA VINCI in respect of watches and watch straps in three ways:

• as a word mark;
  
  
• as a composite word and device mark; and
  
  
• as a device mark.
  

Richemont commenced an action against Da Vinci Collections in November 2005 for infringement of the DA VINCI trademark and applied for summary judgment in respect of Da Vinci Collections' use of the DA VINCI word mark on watches. Da Vinci Collections filed an amended defence and counterclaim denying infringement and counterclaiming for: (i) an order for revocation of the DA VINCI trademark on the basis of, among other things, non-use; and/or (ii) a declaration of invalidity of the registration on the basis that the mark was devoid of any distinctive character.

The court, finding for Richemont on the question of infringement under Section 27(1) of the Singapore Trademarks Act 1998, held that there was no doubt that Da Vinci Collections had used a sign in the form of words 'DA VINCI' in respect of watches and watch straps and that the sign was identical to the DA VINCI trademark.

Da Vinci Collections' defence and counterclaims that Richemont's mark was invalid on the basis of non-use and/or was not distinctive were rejected by the court.

Accordingly, the court granted an injunction to restrain Da Vinci Collections from infringing Richemont's registered trademark DA VINCI together with the usual orders for an inquiry into damages, delivery up and costs.

Da Vinci Collections has appealed against the High Court's decision and was allowed a partial stay of execution pending the appeal.

Dedar Singh Gill and Paul Teo, Drew & Napier LLC, Singapore