Trademark fight over use of the word 'Sentosa'
Is the name "Sentosa" a trademark that can be used only by the Sentosa Development Corporation (SDC), the statutory board that manages and promotes tourism activities on the island? That is the question before the High Court in a trademark infringement trial that started yesterday.
SDC has sued a group of companies that make and sell medical diagnostic instruments for using the word "Sentosa" to brand one of its product lines used in the testing of a range of diseases.
The statutory board is seeking a court order for the group - Vela Holding, Vela Operations Singapore, Vela Research Singapore and Vela Diagnostics - to stop using its "iconic" trademark. The group of companies is registered in Singapore.
The group argues that "Sentosa" is used as a place name and does not qualify as a trademark. It has counter-sued, asking the court to invalidate all the "Sentosa" trademarks registered by SDC since 2005.
Vela argues that SDC is abusing the trademark registration system by "obtaining an illegitimate monopoly over all trade use of the name".
But SDC counters that it has given consent to a host of third parties with legitimate reasons, such as tenants and event partners, to use the name.
The name of the island, which means peace and tranquillity in Malay, came from a public naming competition in 1972. That same year, SDC was set up under the Ministry of Trade and Industry to oversee the development and promotion of the island.
SDC contends that for the past 45 years, it has invested millions in promoting its business under the "Sentosa" mark.
SDC contends that Vela, which was set up in 2011, "deliberately chose to free-ride on the plaintiff's long-standing brand" to promote its relatively new business.
Vela's application to register Sentosa as a trademark was rejected in November 2012.
Its chief executive, Mr Michael Tillmann, then persistently asked SDC to be allowed to use the Sentosa name but was turned down. Despite that, Vela continued using "Sentosa" to brand its products.
SDC argues that continued use of the name will create the confusion that Vela's products are connected to the statutory board. It will also dilute or even tarnish the "distinctive character" of the mark.
Vela argues that "Sentosa" is seen as a destination, and there is no evidence that the public regards it as a source of goods or services. The trial continues.