Chan Sek Keong JC

On July 15, 1980, the well-known golfer, Arnold D. Palmer ("the applicant"), made an application ("the application") to the Registrar of Trade Marks, Singapore ("the Registrar") to rectify the Register of Trade Marks by removing therefrom Trade Mark No. 63249 ("TM 63249") registered in the name of Lim Mok Hui, Ang Lee Kim and Lim Ley trading as Hui Ching Dress Makers of 246A Geylang Square, Block 5, Singapore 14. The mark consists solely of a device of an umbrella and is registered in Class 25 in respect of shirts, dresses, pyjamas, shorts and T-shirts for ladies and children and pyjamas for gents. The application was made under section 40 of the Trade Marks Act (Cap. 206) ("the Act") in response to the Registrar's refusal, because of the existence on the register of TM 63249, to proceed with the applicant's earlier application (No. 79133) to register a trade mark consisting of an umbrella device in respect of all goods included in Class 25, including shirts, sweaters, slacks, jeans, jackets, articles of rainproof clothing, headgear (for wear), stockings and socks (for wear).

In the application, the applicant says that he is an aggrieved person, and that the respondents registered TM 63249 without any bona fide intention to use it and there had been in fact no bona fide use of it in the manner as required by section 40(1)(a) or (b) of the Trade Marks Act (Cap. 206). In the Statement of Case, the applicant, inter alia, says that he has a bona fide intention to use the trade mark consisting of an umbrella device in respect of goods in Class 25 in Singapore and that by reason of the existence on the Trade Marks Register of TM 63249 he is an aggrieved person.

The applicant filed two statutory declarations in support of the application. In his declaration, sworn on November 6, 1981, Jules Rosenthal ("JR") says the following:

"1. I am the Senior Vice-President of Arnold Palmer Enterprises (hereinafter called 'My Company') of One Erieview Plaza, Cleveland, Ohio 44144, United States of America and have been with My Company for the past 15 years.

2. My Company has been formed to manufacture, distribute and sell goods bearing the trade mark ARNOLD PALMER and UMBRELLA device belonging to Mr Arnold D Palmer, an American Citizen of Suit 1300, One Erieview Plaza, Cleveland, Ohio, United States of America, the Applicant for rectification of the trade mark registration No. 63249. I have been authorised by My Company and Mr. Arnold D Palmer to make this Declaration.

3. The information contained in this Declaration is from my personal knowledge and where necessary obtained by reference to the records of My Company.

4. The Applicant has applied for registration of the trade mark consisting of an Umbrella Device as shown below under application No. 79133 in respect of all goods included in Class 25 including shirts, sweaters, slacks, jeans, jackets, articles of rainproof clothing, headgear (for wear), stockings and socks (for wear).

5. The Applicant is the owner of the trade mark consisting of the umbrella device and started using the said mark on articles of clothing from 1960 in United States of America. The umbrella device has by long user and extensive promotions become identified with goods originating from the Applicant.

6. The Applicant has a United Kingdom registration for the aforesaid mark under No. 899127 dated September 7th, 1966 in Class 25 in respect of 'shirts, sweaters, slacks, shorts, jackets, articles of rainproof clothing, headgear (for wear), stockings and socks (for wear).' I attach hereto and marked 'A', a photocopy of the United Kingdom Certificate of Registration and the renewal certificate.

7. The Registrar of Trade Marks has cited trade mark No. 63249 against the Applicants' application to register his umbrella device under application No. 79133.

8. I have been informed by the applicant's licensees in Singapore, Messrs Yangtzekiang Garment Manufacturing Co Pte Ltd of No. 8, New Industrial Road, Singapo