Reemtsma v Hugo Boss: Revocation of Trade Mark for Non-Use under Trade Marks Act

Reemtsma Cigarttenfabriken GMBH applied to the High Court of Singapore to revoke the trade marks of Hugo Boss AG for non-use under section 22 of the Trade Marks Act. The marks in question were "BOSS" and "HUGO BOSS" for cigarettes and related products. The court, presided over by Justice Belinda Ang Saw Ean, found that Hugo Boss had not genuinely used the marks in Singapore within the statutory period and that the court had no discretion to maintain the marks on the register. The court allowed Reemtsma's applications with costs.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Applicant's applications allowed with costs.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Reemtsma sought to revoke Hugo Boss's trade marks for non-use. The court revoked the marks, finding no genuine use and no discretion to maintain registration.

1.7 Decision Date

9 September 2003

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Reemtsma Cigarttenfabriken GMBH	Applicant	Corporation	Applications allowed	Won	Low Chai Chong of Rodyk & Davidson Ian Fok of Rodyk & Davidson Catherine Lee of Rodyk & Davidson
Hugo Boss AG	Respondent	Corporation	Applications dismissed	Lost	Paul Teo of Drew & Napier LLC Dedar Singh Gill of Drew & Napier LLC

3. Judges

Judge Name	Title	Delivered Judgment
Belinda Ang Saw Ean	Judge	Yes

4. Counsels

Counsel Name	Organization
Low Chai Chong	Rodyk & Davidson
Ian Fok	Rodyk & Davidson
Catherine Lee	Rodyk & Davidson
Paul Teo	Drew & Napier LLC
Dedar Singh Gill	Drew & Napier LLC

4. Facts

Reemtsma sought to remove Hugo Boss's trade marks for non-use.
The trade marks in question were "BOSS" and "HUGO BOSS" for cigarettes and related products.
Commercial Investigations was appointed to investigate the use of the marks.
Investigators found no evidence of the marks being used on relevant goods in Singapore.
Hugo Boss contended that the marks had been used on lighters and cigars.
Hugo Boss relied on product catalogues and a cigar sampling function as evidence of use.
The court found Hugo Boss's evidence of use to be scanty and unsatisfactory.

5. Formal Citations

Reemtsma Cigarttenfabriken GMBH v Hugo Boss AG (No 2), OM 600007/2002, 600008/2002, [2003] SGHC 205

6. Timeline

Date	Event
1974-01-01	BOSS mark registered
1987-01-01	HUGO BOSS mark registered
1998-11-01	Hugo Boss Asian Buyers’ Conference held in Singapore
1999-07-01	Commercial Investigations appointed by the Applicant
2001-11-06	Date three months prior to the date of the applications
2001-11-01	Commercial Investigations appointed by the Applicant
2002-02-05	Originating Motions filed
2003-09-10	Judgment delivered

7. Legal Issues

Revocation of registration for non-use
- Outcome: The court found that there was no genuine use of the marks and no proper reasons for non-use.
- Category: Substantive
- Sub-Issues:
  - Whether there was genuine use of the marks within the statutory period
  - Whether there were proper reasons for non-use
Discretion of court to maintain mark on register
- Outcome: The court held that it does not have discretion to maintain a mark on the register when grounds for revocation have been established.
- Category: Procedural

8. Remedies Sought

Revocation of Trade Mark Registration

9. Cause of Actions

Revocation of Trade Mark Registration

10. Practice Areas

Trade Marks
Revocation of Registration

11. Industries

Tobacco
Fashion

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Invermont Trade Mark	N/A	Yes	[1997] RPC 125	England and Wales	Cited regarding discretion in section 46 of the Trade Mark Act 1994.
Zippo TM	N/A	Yes	[1999] RPC 173	England and Wales	Cited regarding discretion in section 46 of the Trade Mark Act 1994.
Premier Brands UK v Typhoon Europe Ltd	N/A	Yes	[2000] FSR 767	England and Wales	Cited regarding discretion in section 46 of the Trade Mark Act 1994.
Scandecor Development AB v Scandecor Marketing AB & others	House of Lords	Yes	[2001] ETMR 74	United Kingdom	Cited regarding discretion in section 46 of the Trade Mark Act 1994.
Philosophy Inc v Ferretti Studio SRL	England and Wales Court of Appeal (Civil Division)	Yes	[2002] EWCA Civ 921	England and Wales	Cited for the principle that there should be no discretion to retain a trade mark if the grounds for revocation are established.
Imperial Group Limited v Phillip Morris and Co Ltd	N/A	Yes	[1982] FSR 72	N/A	Cited for the principle that there should be no discretion to retain a trade mark if the grounds for revocation are established.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 1999 Rev Ed) s 22	Singapore
Evidence Act (Cap.97)	Singapore
Smoking (Control of Advertisements and Sale of Tobacco) Act (Cap. 309)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark
Revocation
Non-use
Genuine use
Statutory period
Discretion
Registration
Cigarettes
Cigars
Lighters

15.2 Keywords

Trade mark revocation
Non-use
Singapore
Hugo Boss
Reemtsma

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Trademark Law	80
Trademark Infringement	70

16. Subjects

Trade Marks
Intellectual Property