Van Cleef & Arpels can use 'Mystery Set' only for jewellery

Brand cannot keep trademark for watches as Ipos decides in favour of Franck Muller

For 84 years, famed luxury goods supplier Van Cleef & Arpels has been producing fine jewellery with the trademark "Mystery Set" to describe its own unique gemstone setting, which appears to be invisible.

But in 2015, rival luxury brand owner FMTM Distribution turned to the Intellectual Property Office of Singapore (Ipos) in an attempt to revoke Van Cleef & Arpels' use of that trademark for jewellery and watches.

In the case of jewellery, Ms Sandy Widjaja, Ipos principal assistant registrar of trademarks, has found in favour of Van Cleef & Arpels, which will get to keep using "Mystery Set".

But FMTM, which owns the trademark for Franck Muller watches, succeeded in revoking the same "Mystery Set" trademark belonging to Van Cleef for use in relation to watches.

Ms Widjaja, in judgment grounds released last week, found Van Cleef had used the mark here within five years of registration for "jewellery only" but not for watches.

According to its website, "Mystery Set" refers to a unique technique by Van Cleef & Arpels that was patented in 1933.

The technique sets stones in such a way that no prongs are seen and is done by a small number of master jewellers and when completed, " the gems appear to be entirely free-standing".

Because of the complex process involved, only a few pieces are produced each year.

FMTM had applied in October 2015 to revoke the "Mystery Set" trademark, arguing that Van Cleef did not use the mark in Singapore in relation to watches and jewellery, for which it was registered, within five years from its 2008 registration.

Under the relevant laws here, trademarks are open to non-use challenge and liable to be revoked if not used for five years after registration or any continuous period of five years post-registration.

To shore up its case, Van Cleef & Arpels, defended by lawyer K. Sukumar, produced invoicesdated between April 2008 and June 2015 totalling some $8 million in sales of the "Mystery Set" jewellery.

FMTM, represented by lawyer Francine Tan, argued that the mark had been used by third parties and the owners themselves to describe a particular jewellery-setting technique. Hence, there was no genuine use of the trademark as required under the law.

Ms Widjaja found that the technical name of the specific technique described by FMTM is the "invisible setting", where gemstones appear to be set with no prongs visible. She added that the trademark was "coined" by Van Cleef to patent a variant of the technique.

She said "it describes the aura which is exuded" by the gemstones in such a setting where "it looks as though there is nothing holding the gemstones such that there is a mysterious element as to the mounting technique/jewellery".

Ms Widjaja accepted that "Mystery Set" was used in the trademark sense based on the evidence tendered, including three invoices between 2012 and 2015 for the purchase of three sets of the jewellery costing $1.82 million in total.

A version of this article appeared in the print edition of The Straits Times on June 28, 2017, with the headline 'Van Cleef & Arpels can use 'Mystery Set' only for jewellery'. Print Edition | Subscribe