WARMAN first user fails to invalidate later registration

In Weir Warman Ltd v Research & Development Pty Ltd, the Singapore High Court has held that proprietorship of a trademark based on prior use is merely a default right under common law, which can be removed by an agreement concerning the right to register the mark.

Research & Development Pty Ltd (R&D) and Weir Warman Ltd, two Australian companies, manufacture and sell products that bear the same WARMAN mark. The companies entered into agreements which, among other things, allowed both to sell WARMAN-branded products in Singapore, but restrained R&D from manufacturing its products in Singapore. R&D obtained a registration for the mark WARMAN in Class 7 of the Nice Classification in 1996, but it only commenced using the mark in 2001. Weir Warman, which had first used the mark in Singapore in the 1980s, filed an application to invalidate and revoke R&D's registration in Singapore.

The proceedings raised the following issues, among others:

• Did the agreements, which prevented R&D from manufacturing in Singapore, confer on Weir Warman sole proprietorship of the WARMAN mark?
  
  
• Did R&D act in bad faith in securing the registration of the WARMAN mark on the basis that Weir Warman had made prior use of the mark?
  
  
• Should R&D's registration be revoked on the basis that R&D had not used the WARMAN mark?

The High Court dismissed the application for invalidation and granted partial revocation of the Class 7 registration.

On the first issue, the High Court held that the agreements did not confer on Weir Warman sole proprietorship of the trademark in Singapore. The court reasoned that the fact and place of manufacture were often irrelevant in assessing the rights to register a trademark. So long as the registrant has a legitimate right to use that mark, a prima facie right to register the mark follows.

On the second issue, the court noted that the agreements did not provide for the ownership of trademark rights in Singapore. However, a term could be implied into the agreements such that both parties had the right to register the trademark. This was necessary to give business efficacy to the parties' right to sell WARMAN products in Singapore. Therefore, the court held that R&D had not acted in bad faith in securing its trademark registration, notwithstanding the prior use of the same mark by Weir Warman.

On the third issue, the court granted only partial revocation of the Class 7 registration given that R&D had made genuine use of the mark in relation to certain key Class 7 products sold in Singapore during the relevant period. R&D was considered to have taken an 'active step' in Singapore beyond merely placing the WARMAN mark on the Internet, and facilitating access and enquiries from the Singapore public.

Dedar Singh Gill and Siau Wen Lim, Drew & Napier LLC, Singapore