SINGAPORE - 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 trade mark infringement trial that started on Tuesday (Jan 30).
SDC has sued a group of companies that make and sell medical diagnostic instruments for using the word "Sentosa" to brand one of their product lines used in the testing of a range of diseases, including HIV and the Zika virus.
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 and headquartered in Singapore.
The Vela group argues that "Sentosa" is used as a place name and does not qualify as a trademark. They have 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".
However, 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 naming competition organised by the Singapore Tourist Promotion Board in 1972. It was previously known as Pulau Blakang Mati ("island of death from behind" in Malay).
That same year, SDC was set up under the Ministry of Trade and Industry (MTI) to oversee the development and promotion of the island as a leisure destination.
SDC, represented by Mr Tony Yeo and Ms Meryl Koh of Drew & Napier, contends that for the past 45 years, it has invested millions in promoting its business under the "Sentosa" mark, growing the name into a household brand that is recognised by the general public.
Besides protecting the "Sentosa" name in Singapore, SDC has also registered the mark in Malaysia, Indonesia and China.
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.
In November 2012, Vela's application to register Sentosa as a trademark was rejected.
Its chief executive, Mr Michael Tillmann, then persistently wrote to SDC, asking to be allowed to use the Sentosa name, but was turned down.
In the correspondence, Mr Tillmann, who lives at Ocean Drive Berthside on Sentosa island, said he "liked the name" for his company's products.
He then wrote to the MTI to apply pressure on SDC, but before the ministry responded, he took a series of legal actions to revoke or invalidate SDC's trademarks.
Despite SDC's refusal to give consent, Vela continued using "Sentosa" to brand its products.
SDC argues that continued use of the name will create 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, represented by Mr Jason Chan and Ms Elaine Tan of Amica Law, 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.
Apart from being a geographical name, "Sentosa", as a Malay word, remains a laudatory term associated with attributes such as tranquillity, rather than a distinctive badge of origin, Vela contends.
The trial continues.
