Case Note: Symphony Holdings Limited v Skins IP Limited [2025] SGIPOS 3 - Good faith in trade mark registrations
By Stuart Peter
Under the Trade Marks Act 1998, a registration of a mark can be opposed if it can be shown that the application was made in bad faith. This ground of opposition was successfully established by the Opponent (“Symphony”) in Symphony Holdings Limited v Skins IP Limited [2025] SGIPOS 3. The Grounds of Decision issued by Principal Assistant Registrar Tan Mei Lin raises several poignant points for consideration:
First, “bad faith” for the purposes of opposition embraces not only actual dishonesty but also dealings which would be considered commercially unacceptable by reasonable and experienced persons in the trade.
Second, the decision shows that the separate legal status of a subsidiary may not operate as a shield where the circumstances shows that the existence of an earlier mark must have been known within the group (even if the specific subsidiary did not have direct dealings involving the mark). In the present case, the evidence showed that another entity within the group had made an unsuccessful bid for an IP portfolio including the earlier mark (which Symphony successfully bid for). Shortly after, the group incorporated Skins IP Limited (“the Applicant”), and sought to register a similar mark under the Applicant in various jurisdictions, including in Singapore, where it sought to revoke the registration of the earlier mark on the grounds of non-use.
The Registrar however found that the Applicant must have known that Symphony had recently acquired the rights to the earlier mark and had accordingly made the application in bad faith. Further, no explanation had been provided by the Applicant as to why it chose the exact same word reflected in the earlier mark (“SKINS”) if this was not the case.
Third, the decision makes clear that even if the mark sought to be registered would not cause confusion (by virtue of being deployed in relation to the provision of a different class of goods or services), once bad faith is established, the registration will be refused regardless.
The case not only sheds light on the ambit and importance of the good faith requirements in IP registrations, but underscores the importance of prompt and comprehensive IP protections being put into place by proprietors.
Note: An appeal from this decision to the General Division of the High Court is pending.
Speak to our lawyers to better understand how to protect your IP.
Ronald JJ Wong
Deputy Managing Director
Stuart Peter
Associate Director