Court of Appeal · Decided 2 March 2009

Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal

Feedback & support

[2009] SGCA 9Case no. CA 58/2008, 65/2008

What happened, in plain English

There is no plain-English summary of this judgment yet.

Ask about this judgment

Laws this judgment relies on

Evidence Act 1893

Grounds of decision

Official text from eLitigation

Introduction
[1] This judgment relates to an appeal (viz, Civil Appeal No 58 of 2008 (“the Appeal”)) and a cross-appeal (viz, Civil Appeal No 65 of 2008 (“the Cross-Appeal”)) against the decision of the High Court judge (“the Judge”) in Originating Summons No 2038 of 2006 (“the Originating Summons”) (see Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2008] 3 SLR 296 (“the Judgment”)).
[2] The appellant in the Appeal was the plaintiff in the Originating Summons (“the Plaintiff”). The first respondent in the Appeal was the first defendant in that action (“the First Defendant”); it is also the proprietor of two trade marks bearing the “rooster flower” (ie, a picture of a rooster within a stylised flower border). Both trade marks are registered in respect of, inter alia, cordyceps. One of the trade marks is registered in the Registry of Trade Marks, Singapore (“the Opposed Mark”). The other trade mark is registered in the Trade Marks Office of the People’s Republic of China (“the China Mark”). The second respondent in the Appeal was the second defendant in the Originating Summons (“the Second Defendant”); it is also the exclusive licensee of the Opposed Mark in Singapore. As will be seen (at, inter alia, [16] below), marks bearing the “rooster flower” have been used in the cordyceps trade even before the registration of the China Mark and the Opposed Mark. To avoid confusion, we shall in this judgment use the term “the Rooster Sign” to refer generically to any sign or mark featuring the “rooster flower” (whether or not registered as a trade mark) other than the China Mark and the Opposed Mark.
[3] On 29 November 2005, search warrants premised on the First Defendant’s registration of the Opposed Mark were executed against the Plaintiff. As a result of the raid, cordyceps in the Plaintiff’s possession bearing marks identical and/or similar to the Opposed Mark were seized. On 5 May 2006 and 11 May 2006, under the authority of fiats granted by the Attorney-General’s Chambers, charges under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the current TMA”) and the Copyright Act (Cap 63, 2006 Rev Ed) were filed against the Plaintiff and some of its directors (“the Plaintiff’s directors”) via private summonses (“the Private Summonses”).
[4] Approximately six months later, on 1 November 2006, the Plaintiff applied by way of the Originating Summons for the registration of the Opposed Mark to be revoked and/or invalidated. The Plaintiff also sought a declaration that any copyright in various labels relating to the Opposed Mark (“the Labels”) did not subsist in favour of either the First Defendant or the Second Defendant and that the Plaintiff had not infringed any such copyright (“the Declaration”).
[5] The Judge dismissed the prayers for revocation and invalidation of the registration of the Opposed Mark, but granted the Declaration (albeit limited to the First Defendant). The Plaintiff has appealed to this court (via the Appeal) against the Judge’s dismissal of the prayers for revocation and invalidation, while the First Defendant has appealed to this court (via the Cross-Appeal) against the Judge’s grant of the Declaration. To facilitate the reading of this judgment, we set out below the schematic arrangement of its contents:
INTRODUCTION.....................................................................................
1
THE FACTUAL MATRIX.........................................................................
5
THE PLAINTIFF’S SUBMISSIONS IN THE HIGH COURT..................
9
THE DECISION OF THE JUDGE.............................................................
15
THE ISSUES BEFORE THIS COURT......................................................
20
The issues raised in the Appeal...........................................................
20
The issues raised in the Cross-Appeal.................................................
21
Our approach to the issues raised by the parties.................................
22
REVOCATION AND INVALIDATION OF THE REGISTRATION OF THE OPPOSED MARK.....................................................................
24
The burden of proof...........................................................................
24
Revocation of the registration of the Opposed Mark...........................
24
Sections 22(1)(a) and 22(1)(b): Lack of genuine use and non-use of the impugned trade mark..................................
25
(1) The requirement of “genuine use”...............................
26
(2) Whether there was genuine use of the Opposed Mark during the Relevant Period.....................................
31
Section 22(1)(c): The impugned trade mark has become a common name in the trade due to the registered proprietor’s acts or inactivity....................................................
35
(1) The requirement that the impugned trade mark has become a “common name in the trade”......................
35
(2) Whether the Opposed Mark has become a common name in the cordyceps trade.............................
40
Our decision on revocation.......................................................
47
Invalidation of the registration of the Opposed Mark...........................
48
Section 7(1)(d): The impugned trade mark is a sign which has become customary in the trade...........................................
49
(1) The requirement of customariness..............................
49
(2) Whether the Rooster Sign has become customary in the cordyceps trade....................................................
52
Section 7(1)(a): The impugned trade mark does not satisfy the definition of a trade mark....................................................
57
(1) The requirement that a trade mark must have the requisite capacity to distinguish..................................
59
(2) Whether the Rooster Sign has the requisite capacity to distinguish..................................................................
70
Section 7(6): The application to register the impugned trade mark was made in bad faith.............................................
72
(1) What constitutes “bad faith” for the purposes of section 7(6).................................................................
72
(2) Whether there was bad faith in Qinghai Meheco’s application for registration...............................................
75
Section 23(4): The registration of the impugned trade mark was procured by fraud and/or misrepresentation.......................
84
(1) The requirement of fraud or misrepresentation............
84
(2) Whether section 23(4) of the current TMA is applicable in the present case........................................
86
(3) The Plaintiff’s case on fraud and/or misrepresentation..
92
Our decision on invalidation......................................................
95
Whether the court has a residual discretion not to grant relief where the grounds for revocation and/or invalidation have been made out.......
96
The position under the 1992 TMA...........................................
96
The position under the current TMA.........................................
97
(1) Parliament’s intention................................................
98
(2) Case law..................................................................
106
(3) Academic works......................................................
110
(4) Our preliminary opinion on whether there is a residual discretion not to revoke or invalidate the registration of a trade mark.....................................................................
112
Our decision on revocation and invalidation of the registration of the Opposed Mark............................................................................
113
THE DECLARATORY ORDER SOUGHT BY THE PLAINTIFF............
113
The Plaintiff’s preliminary point: Res judicata.......................................
114
Whether the Judge was right to grant the Declaration..........................
121
The court’s power to grant declaratory orders...........................
121
(1) The discretionary nature of the power........................
122
(2) The exercise of the power.........................................
123
The grant of the Declaration in the present case.........................
132
Our conclusion on the grant of the Declaration....................................
133
THE COSTS ORDER MADE BY THE JUDGE.........................................
133
SUMMARY OF THE DECISION OF THIS COURT...............................
135
CODA........................................................................................................
135
The factual matrix
[6] The dramatis personae in the Originating Summons are companies involved in the business of traditional Chinese medicines in general and cordyceps in particular. The Plaintiff and the Second Defendant are companies registered in Singapore. The First Defendant is a company registered in the People’s Republic of China (“the PRC”), and it has described itself as the PRC’s largest producer and exporter of cordyceps, accounting for 80% of the exports of the product.
[7] The First Defendant is the owner of the Opposed Mark and the China Mark, which, as mentioned earlier (see [2] above), are registered in Singapore and the PRC respectively for cordyceps (amongst other products). According to the First Defendant, this was how it derived proprietorship of the Opposed Mark and the China Mark:
(a) After trade mark registration was introduced in the PRC on 1 March 1983, the Qinghai branch of China National Cereals, Oils & Foodstuffs Corp (“Qinghai Cofco”) applied on 29 October 1984 to register the Rooster Sign as a trade mark. There was no opposition to the application and the Rooster Sign was registered in the PRC on 15 June 1985 as Trade Mark No 227740 (ie, the China Mark). In 1989, the rights in the China Mark were assigned by Qinghai Cofco to Qinghai Medicines & Health Products Import & Export Corp (“Qinghai Meheco”); the assignment was subsequently approved and recorded in the Trade Marks Office of the PRC on 28 September 1995. The rights in the China Mark were later assigned by Qinghai Meheco to the First Defendant by way of two agreements dated 10 February 1999 and 14 August 2000 respectively, and the assignment was approved and recorded by the Trade Marks Office of the PRC on 28 October 2000. On the legitimacy of the registration of the China Mark and the subsequent assignments of the rights in that trade mark, the First Defendant has in these proceedings declared that:[note: 1]
(b) On 6 September 1995, Qinghai Meheco applied to register the Rooster Sign at the Registry of Trade Marks, Singapore. The registration was opposed by a partnership, Wing Thye Loong, but the opposition was successfully resisted (see Qinghai Medicines & Health Products Import and Export Corp v Wing Thye Loong [2001] SGIPOS 2 (“Wing Thye Loong”)) and a certificate recording the registration of the Rooster Sign in Singapore as Trade Mark No T9508502Z (ie, the Opposed Mark) was issued on 27 August 2001, with the registration backdated to take effect from 6 September 1995.
(c) Subsequently, the Opposed Mark went through two assignments. It was first assigned on 30 March 2001 by Qinghai Meheco to the First Defendant and another entity, Qinghai Yixin Medicines Ltd (“Qinghai Yixin”), under a joint acquisition agreement (“the Joint Acquisition Agreement”). Subsequently, on 28 May 2003, Qinghai Yixin assigned its rights in the Opposed Mark to the First Defendant. On 12 August 2005, the First Defendant, notwithstanding that it had become the sole owner of the Opposed Mark by then, and Qinghai Yixin applied to the Registry of Trade Marks, Singapore, to be registered as the joint proprietors of the Opposed Mark. Subsequently, on 13 March 2006, the First Defendant applied to transfer the Opposed Mark to its sole name. A “Certificate of Subsequent Proprietor” recording the First Defendant’s sole proprietorship of the Opposed Mark, backdated to 30 May 2003, was issued by the Registrar of Trade Marks on 8 June 2006.
[8] On or about 25 July 2005, the First Defendant granted Yu Ceng Trading Pte Ltd (“Yu Ceng”) an exclusive licence to use the Opposed Mark. On or around 20 August 2006, Yu Ceng’s licence was novated in favour of a related company, viz, the Second Defendant. Prior to the novation, the First Defendant decided in 2005 to take enforcement action against the sale of cordyceps which were not permitted to bear the Opposed Mark (“unauthorised cordyceps”). On 16 November 2005, the First Defendant issued a letter of authorisation to Yu Ceng permitting the latter to take “such steps as [might] be necessary to protect and enforce the [Opposed] Mark”.[note: 2] Before taking any enforcement action, the First Defendant, through its representatives in Singapore, cautioned the public at large against buying unauthorised cordyceps by sending out more than 600 letters dated 6 September 2005 (one of which was received by the Plaintiff) and placing half-page advertisements in Shin Min Daily News and Lianhe Wanbao on 8 September 2005.
[9] On 29 November 2005, Yu Ceng applied for and obtained search warrants to search the Plaintiff’s premises for unauthorised cordyceps. The search warrants were executed against the Plaintiff on the same day and, as mentioned earlier (at [3] above), cordyceps in the Plaintiff’s possession bearing marks identical and/or similar to the Opposed Mark were seized. The cordyceps which were seized had an approximate value of $4.8m. Some of the seized cordyceps were later returned to the Plaintiff; the cordyceps which were returned had an approximate value of about $1.8m.
[10] On 5 May 2006 and 11 May 2006, under the authority of fiats granted by the Attorney-General’s Chambers, charges under the current TMA and the Copyright Act were filed against the Plaintiff and the Plaintiff’s directors via the Private Summonses. The charges under the Copyright Act concerned the copyright in the Labels.
[11] On 1 November 2006, the Plaintiff applied by way of the Originating Summons to, inter alia, revoke and/or invalidate the registration of the Opposed Mark. It also sought a declaration (ie, the Declaration) that the copyright in the Labels, which was the subject matter of the charges under the Copyright Act, was not owned by either the First Defendant or the Second Defendant and that the Plaintiff had not infringed the said copyright. Specifically, the Plaintiff asked for:[note: 3]
For ease of reference, we shall hereafter use (where appropriate) the terms “Prayer 1”, “Prayer 2” and “Prayer 3” to denote, respectively, the first, the second and the third of the prayers reproduced above.
[12] One day after filing the Originating Summons, the Plaintiff also filed Criminal Revision No 17 of 2006 (“the Criminal Revision”) for, inter alia, the dismissal of the Private Summonses. One of the grounds given by the Plaintiff was that the charges in the Private Summonses did not disclose the commission of any offence.
[13] On 27 June 2007, a few days before the hearing of the Originating Summons (which was scheduled to start on 2 July 2007), the First Defendant filed Summons No 2766 of 2007 (“the Summons”) for, inter alia, Prayer 3 of the Originating Summons (ie, the prayer for the Declaration) to be struck out. The Judge, however, refused to grant the application.
The Plaintiff’s submissions in the High Court
[14] In its submissions before the Judge, the Plaintiff explained that in the past, when the PRC operated a centrally-controlled economy, cordyceps came from or were supplied by only a single state-owned company, namely, China National Native Produce and Animal By-Products Import & Export Corporation (“China Tuhsu”). This company was the PRC’s first comprehensive state-owned foreign trade company engaged in the trade of, inter alia, native produce, animal by-products, tea and processed goods. In the 1950s, China Tuhsu established various provincial branch companies. The main provincial branch companies dealing in cordyceps included Guangdong Tuhsu, Sichuan Tuhsu and Qinghai Tuhsu. Of these companies, only Guangdong Tuhsu was authorised by China Tuhsu to obtain purchase orders from overseas buyers.
[15] Sometime in the 1980s, with the liberalisation of the PRC’s economy, China Tuhsu’s other provincial branch companies, such as Sichuan Tuhsu and Qinghai Tuhsu, were also allowed to directly sell and export cordyceps to overseas buyers. Subsequently, other state-owned foreign trade companies, such as the Foreign Trade Import & Export Corporation of Tibet Autonomous Region, China National Cereals, Oils and Foodstuffs Corp (“China Cofco”) and China Medicines and Health Products Import & Export Corporation (“China Meheco”), as well as the provincial branch companies of China Cofco and China Meheco (such as Qinghai Cofco and Qinghai Meheco respectively) were likewise permitted to deal directly with overseas buyers.
[16] According to the Plaintiff, the Rooster Sign had been the mark used in the PRC since the 1950s (when there was as yet no system for the registration of trade marks) by all the Chinese cordyceps-exporting companies for their cordyceps. The cordyceps which were imported from the PRC and sold in Singapore had labels bearing the Rooster Sign, except for cordyceps sold unpackaged, which did not have any labels affixed on them. As all the Chinese cordyceps-exporting companies used the Rooster Sign for their products, they would compete with each other:[note: 4]
[17] The Plaintiff stated that the registration of the Rooster Sign in the PRC as a trade mark (ie, as the China Mark) came as a surprise to the Chinese cordyceps-exporting companies (other than Qinghai Cofco and Qinghai Meheco) as it had been obtained without their prior knowledge or consent. The registration of the China Mark was announced for the first time in June 1995 in Xining at a meeting of the main Chinese cordyceps-exporting companies (“the Xining Meeting”). This meeting was organised by the Chamber of Commerce for Import/Export of Medicine & Health Products (“the China Chamber of Commerce”), a body set up by the Ministry of Foreign Trade and Economic Cooperation to regulate the export of cordyceps and address the emergence of disorderly competition amongst Chinese cordyceps-exporting companies following market liberalisation.
[18] The Plaintiff’s case vis-à-vis revocation of the registration of the Opposed Mark was, firstly, that the registration should be revoked pursuant to ss 22(1)(a) and 22(1)(b) of the current TMA due to lack of use of the Opposed Mark. Section 22(1) provides that:
The Plaintiff argued that these provisions entailed that “a registered trade mark must be used as a trade mark (that is, to indicate the origin or source of the goods or services in question)”[note: 5] [emphasis in original]. As for whether the Opposed Mark had been put to such use, the Plaintiff stated:[note: 6]
[19] The Plaintiff also asserted that the registration of the Opposed Mark should be revoked under s 22(1)(c) of the current TMA, which provides that the registration of a trade mark may be revoked if “in consequence of [the] acts or [the] inactivity of the proprietor, [the trade mark] has become the common name in the trade for the product or service for which it is registered”. The Plaintiff elaborated:[note: 7]
[20] As regards invalidation of the registration of the Opposed Mark, the Plaintiff’s case was presented under four heads. The first was that at the time of Qinghai Meheco’s application to register the Rooster Sign as a trade mark in Singapore, it was customary to use that sign to denote cordyceps imported from the PRC. As such, the registration of the Opposed Mark should be invalidated under s 23(1) of the current TMA, which allows for the invalidation of (inter alia) “trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade” (see s 7(1)(d) of the current TMA).
[21] The second ground relied on by the Plaintiff was that as a result of the extensive use of the Rooster Sign since the 1950s, the Opposed Mark (which featured the Rooster Sign) was not capable of distinguishing the cordyceps of one supplier from those of another supplier and therefore could not be considered to be a “trade mark”, which is defined in s 2(1) of the current TMA as:
For this reason, the Plaintiff submitted, the registration of the Opposed Mark should be invalidated under s 23(1), which allows the registration of (inter alia) “signs which do not satisfy the definition of a trade mark in section 2(1)” (per s 7(1)(a)) to be invalidated.
[22] The third limb of the Plaintiff’s case vis-à-vis invalidation of the registration of the Opposed Mark was that the registration should be invalidated pursuant to s 23(1) of the current TMA because the application to register that mark had been “made in bad faith” (see s 7(6) of the current TMA). In this regard, the Plaintiff contended that Qinghai Meheco’s application in September 1995 to register the Rooster Sign in Singapore (ie, the application which led to the Rooster Sign being registered in Singapore as the Opposed Mark) had been made in bad faith because Qinghai Meheco did not have the exclusive right to use the Rooster Sign then in so far as other Chinese cordyceps-exporting companies, including Sichuan Meheco, Chongqing Meheco and Guangdong Meheco, were also supplying cordyceps bearing the Rooster Sign to Singapore.
[23] The fourth head which the Plaintiff relied on was that there had been fraud and/or misrepresentation in the registration of the Opposed Mark. Pursuant to s 23(4) of the current TMA:
The Plaintiff averred that there had been fraud and/or misrepresentation on the part of the First Defendant in obtaining the registration of proprietorship of the Opposed Mark in, first, the First Defendant’s and Qinghai Yixin’s joint names and, subsequently, the First Defendant’s sole name. According to the Plaintiff (see [25] of the Judgment):
[24] With regard to the Declaration, the Plaintiff submitted that there was no evidence that copyright in the Labels subsisted in Singapore in favour of the First Defendant and/or the Second Defendant.
The decision of the Judge
[25] Although the Plaintiff chose to begin the proceedings by way of an originating summons, the Judge ordered the deponents of the affidavits filed by the respective parties to be available for cross-examination. Over the course of nine days, 17 witnesses were called upon to testify.
[26] On 9 April 2008, in a reserved judgment (ie, the Judgment), the Judge dismissed the Plaintiff’s application to revoke and/or invalidate the registration of Opposed Mark, but granted the Declaration vis-à-vis the First Defendant. In the main, the Judge held as follows:
(a) The registration of the Opposed Mark could not be revoked under ss 22(1)(a) and 22(1)(b) of the current TMA. The Plaintiff’s contention, viz, that the Opposed Mark had not actually functioned as a trade mark after its registration as it was the common name in the trade, “[could not] constitute [an argument on] non-use or suspension of use, and relate[d] [instead] to the effect of the use of the mark, which should be considered under the application to invalidate the registration” [emphasis in original] (see [19] of the Judgment).
(b) The registration of the Opposed Mark could not be revoked under s 22(1)(c) of the current TMA as, inter alia (see [16] of the Judgment):
(c) The registration of the Opposed Mark could not be invalidated under s 7(1)(d) read with s 23(1) of the current TMA as the evidence did not show that the Rooster Sign had become generic or “customary in the current language or in the bona fide and established practices of the trade” (per s 7(1)(d)). This was because the evidence showed that the word “Rooster” by itself, without reference to cordyceps, was not understood to refer to cordyceps from the PRC, and “the ‘Rooster’ mark or brand [was] not synonymous [with] cordyceps in the way ‘thermos’ [was] synonymous [with] vacuum flasks” (see [33] of the Judgment).
(d) The registration of the Opposed Mark could not be invalidated under s 7(6) read with s 23(1) of the current TMA. With the registration of the Rooster Sign in the PRC (as the China Mark) in 1985 in favour of Qinghai Cofco (the predecessor in title of Qinghai Meheco), other Chinese cordyceps-exporting companies had no right to use the Rooster Sign (see [53] of the Judgment). The Judge elaborated (ibid):
(e) The registration of the Opposed Mark could not be invalidated under s 23(4) of the current TMA. While the Plaintiff’s application was to have the registration of the Opposed Mark invalidated, the complaint of fraud and/or misrepresentation in fact related to the registration of the two assignments of the Opposed Mark (see sub-para (c) of [7] above), which was a completely different matter altogether (see [26] of the Judgment). Such a complaint, the Judge held, was outside the scope of s 23(4) (ibid). In any event, on the available evidence, the Plaintiff had not proved that the applications to register those assignments were affected by fraud and/or misrepresentation (see [60] of the Judgment).
(f) The registration of the Opposed Mark could, however, be invalidated pursuant to s 23(1) read with s 7(1)(a) of the current TMA as the Opposed Mark was a mark “which [did] not satisfy the definition of a trade mark in section 2(1)” (per s 7(1)(a)). In this regard, the Judge held (at [49] of the Judgment):
(g) Although the registration of the Opposed Mark could be invalidated under s 23(1) read with s 7(1)(a) of the current TMA, this did not entail that the registration had to be invalidated. The Judge was of the view that it would be “a rather broad proposition” (see [63] of the Judgment) to say that the court had absolutely no discretion not to revoke or invalidate the registration of a trade mark which fell within ss 22(1) or 23(1) respectively of the current TMA. He held that while it was correct that the power to revoke or invalidate the registration of a trade mark should be exercised when a proper case for revocation or invalidation arose, “that [could not] exclude the converse” (see [70] of the Judgment). In other words, “in situations where the Registrar [of Trade Marks] or [the] Court [found] that there [were] good reasons for not deregistering a mark, they should not be compelled to deregister it” (ibid). These considerations, amongst others, led the Judge to conclude that ss 22(1) and 23(1) of the current TMA should be construed so as to give the court and the Registrar of Trade Marks a discretion not to revoke or invalidate the registration of a trade mark even though the requisite conditions for granting relief had been established (see [76] of the Judgment).
(h) The power to revoke or invalidate the registration of a trade mark should be exercised with care, bearing in mind that “an important function of a trade mark registration regime [was] to ensure order in the use of trade marks” (see [78] of the Judgment). This power, the Judge stated, should only be exercised “after all the relevant circumstances [were] taken into consideration” (ibid). The relevant circumstances in this regard included “(a) the triggering factor; (b) the conditions at the time of the application to revoke; and (c) the balance of the interests involved” (see [79] of the Judgment) as well as “the conduct of the [party applying for revocation or invalidation]” (see [80] of the Judgment).
(i) On the facts before him, the Judge found that the Opposed Mark was being used by only the First Defendant and the Second Defendant as the other users of the Rooster Sign (which forms the essence of the Opposed Mark) had ceased using that sign after it was registered in Singapore (as the Opposed Mark). Accordingly, there was no confusion or deception arising from the First Defendant’s and the Second Defendant’s use of the Opposed Mark (see [85] of the Judgment). The Judge noted the Plaintiff’s allegation that the Opposed Mark was being used by unauthorised parties, but took the view that the remedy for such improper use was to commence enforcement proceedings and not to remove the mark itself (ibid). The Judge elaborated (ibid):
(j) After reviewing the relevant facts and balancing the different interests, the Judge held that the status quo should be maintained and the registration of the Opposed Mark should be allowed to remain (see [86] of the Judgment).
(k) With regard to the Plaintiff’s prayer for the Declaration (ie, Prayer 3 of the Originating Summons), the Judge stated (see [98]–[99] of the Judgment):
[27] In the result, the Judge made the following order (see [100] of the Judgment):
The issues before this court
The issues raised in the Appeal
[28] The Plaintiff has appealed against:
(a) firstly, the Judge’s refusal to revoke the registration of the Opposed Mark on the grounds which it advanced (as set out at [18]–[19] above);
(b) secondly, the Judge’s refusal to invalidate the registration of the Opposed Mark on the grounds which it advanced (as set out at [20]–[23] above);
(c) thirdly, the Judge’s ruling that ss 22(1) and 23(1) of the current TMA give the court and the Registrar of Trade Marks a discretion not to revoke or invalidate the registration of a trade mark even though the grounds for revocation or the grounds for invalidation specified in the respective provisions have been made out (see sub-para (g) of [26] above); and
(d) the Judge’s decision, pursuant to the exercise of the aforementioned discretion, not to invalidate the registration of the Opposed Mark even though the registration had been effected in breach of s 7(1)(a) of the current TMA.
We should add that the First Defendant has, in its response to the Appeal, challenged the Judge’s finding that the Opposed Mark had been registered in breach of s 7(1)(a).
The issues raised in the Cross-Appeal
[30] The First Defendant has appealed against the decision of the Judge to grant the Declaration; it contends that the Plaintiff has not discharged the requisite legal and evidential burden to justify the grant of the Declaration.
[31] In response to the Cross-Appeal, the Plaintiff has raised a preliminary issue – namely, that the First Defendant is precluded by the doctrine of res judicata from arguing the issue of whether the court should grant the Declaration as that issue had already been decided by the Judge when he refused to grant the application in the Summons (see [13] above).
Our approach to the issues raised by the parties
[32] We will now proceed to examine seriatim the issues raised by the parties. They can be summarised as follows:
(a) whether the Judge erred in holding that the registration of the Opposed Mark could not be revoked under s 22(1)(a) of the current TMA;
(b) whether the Judge erred in holding that the registration of the Opposed Mark could not be revoked under s 22(1)(b) of the current TMA;
(c) whether the Judge erred in holding that the registration of the Opposed Mark could not be revoked under s 22(1)(c) of the current TMA;
(d) whether the Judge erred in holding that the registration of the Opposed Mark could not be invalidated under s 23(1) read with s 7(1)(d) of the current TMA;
(e) whether the Judge erred in holding that the registration of the Opposed Mark could be invalidated under s 23(1) read with s 7(1)(a) of the current TMA (although he ultimately decided, in the exercise of his discretion, not to order invalidation based on this particular ground);
(f) whether the Judge erred in holding that the registration of the Opposed Mark could not be invalidated under s 23(1) read with s 7(6) of the current TMA;
(g) whether the Judge erred in holding that the registration of the Opposed Mark could not be invalidated under s 23(4) of the current TMA;
(h) whether the court has a residual discretion under ss 22(1) and 23(1) of the current TMA not to revoke or invalidate the registration of a registered trade mark even though one or more of the grounds for revocation or the grounds for invalidation set out in those provisions have been made out;
(i) whether the First Defendant is prevented by the doctrine of res judicata from raising in the Cross-Appeal arguments on whether the court should grant the Declaration;
(j) whether the Judge should have granted the Declaration given the circumstances of this case;
(k) whether the Plaintiff has discharged the requisite legal and evidential burden to justify the grant of the Declaration; and
(l) whether a separate set of costs should be paid by the Plaintiff to the Second Defendant in relation to Prayer 1 and Prayer 2 of the Originating Summons.
Revocation and invalidation of the registration of the Opposed Mark
The burden of proof
[33] It is trite law that the legal burden of proof needed to substantiate an action for revocation and/or invalidation of the registration of a trade mark lies throughout on the plaintiff. An exception to this rule, ie, a reversal of the burden, is provided in s 105 of the current TMA in relation to the use of a registered trade mark. This provision states:
[34] The commentary on s 105 in Halsbury’s Laws of Singapore vol 13(3) (LexisNexis, 2007) is germane, and is as follows (see fn 13 to para 160.620):
Revocation of the registration of the Opposed Mark
[35] The Plaintiff submits that the registration of the Opposed Mark should be revoked pursuant to ss 22(1)(a) and 22(1)(b) of the current TMA as the Opposed Mark was not put to genuine use as a trade mark during the requisite five-year period stipulated in these provisions. In addition, the Plaintiff contends that the registration of the Opposed Mark should be revoked pursuant to s 22(1)(c) of the current TMA as the Opposed Mark has become a “common name in the trade” (per s 22(1)(c)) for cordyceps from the PRC as a consequence of the acts or the inactivity of the First Defendant or its predecessor in title (viz, Qinghai Meheco).
Sections 22(1)(a) and 22(1)(b): Lack of genuine use and non-use of the impugned trade mark
[36] The Plaintiff’s first ground for revocation, which (as just mentioned) is premised on ss 22(1)(a) and 22(1)(b) of the current TMA, requires either a lack of “genuine use” (per s 22(1)(a)) for a period of “5 years following the date of completion of the registration procedure” (ibid) or “non-use” (per s 22(1)(b)) for “an uninterrupted period of 5 years … [with] no proper reasons for non-use” (ibid). At this point, we ought to state that we agree with the Judge that the Plaintiff’s contention that the Opposed Mark did not actually function as a trade mark after being registered should not be considered under these two grounds for revocation as this contention does not relate to the use or non-use of the Opposed Mark, but pertains instead to the effect of the use of that mark (see [19] of the Judgment; see also sub-para (a) of [26] above). In our view, the key question in relation to ss 22(1)(a) and 22(1)(b) would be whether there has been use of the Opposed Mark as a trade mark which can be considered to be genuine. Bearing in mind that the Originating Summons was filed approximately five years after the date of completion of the registration procedure (ie, 27 August 2001, the date on which the certificate of registration of the Opposed Mark was issued to Qinghai Meheco), if there was genuine use of the Opposed Mark anytime during the five-year period from 27 August 2001 onwards (“the Relevant Period”), it would mean that the Plaintiff’s allegation of non-use for “an uninterrupted period of 5 years” (per s 22(1)(b)) would not be made out. Thus, proof of any genuine use of the Opposed Mark during the Relevant Period would completely undermine the complaint of the Plaintiff under both ss 22(1)(a) and 22(1)(b).
(1) The requirement of “genuine use”
[37] The concept of “genuine use” in s 22(1)(a) of the current TMA was discussed extensively by V K Rajah JA in Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR 1073 (“Warman”). In that case, Rajah JA began by observing that the concept of “genuine use” was closely linked to the function of a trade mark and the purpose of registering a trade mark. He stated (at [99]):
[38] Rajah JA then proceeded to consider (id at [100]) Ansul BV v Ajax Brandbeveiliging BV [2003] ETMR 85 (“Ansul”), where the European Court of Justice (“the ECJ”) interpreted the concept of “genuine use” under Art 12(1) of the First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks (“the European Trade Marks Directive”), which is the European equivalent of s 22(1)(a) of the current TMA. It was indicated in Ansul that for use of a trade mark to be considered genuine, the use in question did not have to be significant in the quantitative sense provided it was in accordance with the essential function of a trade mark, which was described by the ECJ as being “to guarantee the identity of the origin of the goods or services for which it [was] registered … in order to create or preserve an outlet for those goods or services” (at [43]). However, “token use for the sole purpose of preserving the rights conferred by the mark” (ibid) or use which was “just internal use by the [proprietor] concerned” (see Ansul at [37]) should not be considered to be genuine use. The ECJ stated that in assessing whether use of a trade mark was genuine (id at [43]):
[39] In a case involving the “Laboratoire de La Mer” mark, viz, Laboratoire de La Mer Trade Marks [2002] FSR 51, the English High Court had the occasion to consider this point. There, it was stated in respect of s 46 of the Trade Marks Act 1994 (c 26) (UK) (“the English Trade Marks Act”), which is similar to s 22 of the current TMA, that there was no rule that de minimis use of a trade mark could not be “genuine use” for the purposes of that provision. Jacob J opined (at [28]–[32] of Laboratoire de La Mer Trade Marks):
[40] It should be noted that Jacob J emphasised that the foregoing merely represented his “own provisional views” (see Laboratoire de La Mer Trade Marks at [24]). He went on to refer to the ECJ the question of “whether a very limited amount of use definitely in [the UK could] be regarded as sufficient to be ‘genuine’” (id at [22]). The ECJ, in its decision on the matter (viz, La Mer Technology Inc v Laboratoires Goemar SA [2004] FSR 38), appeared to uphold Jacob J’s view that there was no rule barring de minimis use from being regarded as genuine use, stating that “even minimal use of the mark or use by only a single importer … [could] be sufficient to establish genuine use” (id at [27]). Subsequently, the English Court of Appeal, in further proceedings involving the “Laboratoire de La Mer” mark (viz,Laboratoires Goemar SA v La Mer Technology Inc [2005] ETMR 114), held (at [45]–[46]) that use of a trade mark did not have to be substantial or significant before it could be considered to be genuine, although “the more limited the use of the mark in terms of the person or persons to whom it [was] communicated, the more doubtful any tribunal [might] be as to whether the use [was] genuine as opposed to token” (at [48]). It is also interesting to note that under the previous trade mark legislation regime in force in England (which prescribed bona fide use rather than genuine use as the applicable criterion), there was likewise no rule barring de minimis use from constituting bona fide use. As Jacob J observed in Laboratoire de La Mer Trade Marks (at [24] and [26]–[27]):
[41] Other legal proceedings concerning the “Laboratoire de La Mer” mark have ensued in recent times. Of late, in La Mer Technology Inc v Office for Harmonisation in the Internal Market [2008] ETMR 9 (“La Mer Technology (2008)”), the European Court of First Instance dealt with an appeal against a decision to uphold the opposition by the proprietor of the “Laboratoire de La Mer” mark to La Mer Technology Inc’s application to register the term “La Mer” as a trade mark. One of the issues raised on appeal was whether there had been genuine use of the “Laboratoire de La Mer” mark. The court reiterated (id at [55]) what the ECJ had stated in Ansul ([38] supra) at [43], viz, that in assessing whether use of a trade mark was genuine, regard should be given to all the relevant facts and circumstances, including (but not limited to) whether such use was necessary in the economic sector concerned to maintain or create a market share in relation to the goods or services protected by the mark in question, the nature of those goods or services, the characteristics of the market and the frequency of the use of the mark. The court elaborated (at [56] of La Mer Technology (2008)):
The court then proceeded to expand on how an examination of whether a trade mark had been put to genuine use should be carried out. It stated (id at [57]):
[42] The European Court of First Instance also reiterated in La Mer Technology (2008) that there was no rule that de minimis use could not constitute genuine use, opining as follows (id at [57]–[58]):
[43] To summarise, what these authorities show is that for the purposes of determining whether use of a trade mark is genuine, while there is no rule barringde minimis use from being regarded as genuine use, no one single objective formula which applies to all situations can be laid down; much would depend on the fact situation in each individual case.
(2) Whether there was genuine use of the Opposed Mark during the Relevant Period
[44] Pursuant to s 105 of the current TMA (see [33]–[34] above), it is incumbent on the First Defendant to show that there was genuine use of the Opposed Mark during the Relevant Period. In La Mer Technology (2008) ([41] supra), the European Court of First Instance stated, based on its past decisions, that “genuine use of a trade mark [could not] be proved by means of probabilities or suppositions” (at [59]), but must instead be “demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned” [emphasis added] (ibid).
[45] In the present case, there is clear objective evidence that, during the Relevant Period, the Second Defendant’s related company, Yu Ceng, sold cordyceps bearing the Opposed Mark. Yu Ceng, it will be recalled, was the exclusive licensee of the Opposed Mark in Singapore before it novated its licence to the Second Defendant (see [8] above). Mr Leow Lay Leng (“Leow”), a director of Yu Ceng, stated in his affidavit filed on 5 April 2007:[note: 8]
[46] The invoices mentioned by Leow recorded numerous sales of “Rooster Brand Cordyceps”.[note: 9] The invoices show that the Plaintiff’s submission – viz, that “the documents relied upon by the [First Defendant and the Second Defendant] as indicating use … [did] not support their claim that there was relevant use of the [Opposed Mark]”[note: 10] and that the said documents “all mention[ed] ‘cordyceps’ only, except for one which relate[d] to an undated sale to Poo Hong who … [did] not regard the Rooster mark as a trade mark”[note: 11] – is clearly incorrect.
[47] In Warman ([37] supra), the evidence of the use of the “Warman” mark by the defendant (the registered proprietor of that trade mark) consisted of “three sales transactions, three e-mail enquiries from Singapore companies to the defendant regarding ‘Warman’ pump parts, as well as a fax sent by the defendant to a potential customer for pump parts” (at [101]). Rajah JA was of the opinion that this evidence was sufficient to establish genuine use of the “Warman” mark for the purposes of s 22(1) of the current TMA, stating (ibid):
In comparison, the evidence adduced in the present case shows numerous sales of cordyceps bearing the Opposed Mark. The evidence as to the use of the Opposed Mark is certainly much more substantial and cogent than the evidence of the use of the “Warman” mark in Warman.
[48] Further, and in this regard, we would like to refer to the following pertinent observation of this court in Nike International Ltd v Campomar SL [2006] 1 SLR 919 (“Nike International”) at [15]:
[49] In Nike International, the purported use of the trade mark consisted of a single sale under which products bearing the mark had been shipped to Singapore. This transaction was rejected as evidence of genuine use of the mark because “not a single piece of evidence from Singapore was produced” [emphasis added] (at [19]). Notably, the registered proprietor of the trade mark did not adduce any evidence of receipt of payment for the goods; nor did it adduce any documents in relation to the goods’ arrival in Singapore. In contrast, in the present case, the sales of cordyceps bearing the Opposed Mark were amply evidenced by documents, with numerous invoices adduced by the First Defendant showing, inter alia, the purchase orders as well as the shipping and documentation instructions received, the different locations in Singapore to which the cordyceps were to be delivered and different billing addresses in Singapore. These documents constitute clear proof that there were genuine sales of cordyceps bearing the Opposed Mark during the Relevant Period. Those sales were bona fide transactions, and not merely transactions concocted just to preserve the validity of the registration of the Opposed Mark. Therefore, in our view, there was overwhelming proof of genuine use of the Opposed Mark by the First Defendant and the Second Defendant.
[50] Accordingly, there is no basis whatsoever to revoke the registration of the Opposed Mark for either lack of genuine use during the Relevant Period (see s 22(1)(a) of the current TMA) or non-use for “an uninterrupted period of 5 years … [with] no proper reasons for non-use” (per s 22(1)(b)). Thus, in our view, these two grounds for revocation must fail.
Section 22(1)(c): The impugned trade mark has become a common name in the trade due to the registered proprietor’s acts or inactivity
[51] The next ground for revocation advanced by the Plaintiff, which is based on s 22(1)(c) of the current TMA, is that the Opposed Mark has become a common name in the trade for cordyceps imported from the PRC as a consequence of the acts or the inactivity of the First Defendant or its predecessor in title. In determining whether s 22(1)(c) has been made out in the present case, two main issues have to be considered, namely (and paraphrasing the test set out by Richard Arnold QC, sitting as a deputy judge of the English High Court, in Hormel Foods Corp v Antilles Landscape Investments NV [2005] RPC 28 (“Hormel”) at [163]):
(a) has the Opposed Mark become a common name in the trade for cordyceps imported from the PRC; and
(b) if (a) is answered in the affirmative, did the Opposed Mark become a common name in the trade due to the First Defendant’s acts or inactivity?
(1) The requirement that the impugned trade mark has become a “common name in the trade”
[52] David Kitchin et al, Kerly’s Law of Trade Marks and Trade Names (Sweet & Maxwell, 14th Ed, 2005) (“Kerly’s”) describes the question of whether a trade mark has become a common name in the trade for a product or service as “a question of fact to be decided in the circumstances” (at para 10-103). The actual concept of “common name in the trade” in trade mark law is, however, somewhat ambiguous. A trade mark which is considered to have become a common name in the trade is said to have become – using the term of art – “generic”. Ng-Loy Wee Loon, in Law of Intellectual Property in Singapore (Sweet & Maxwell Asia, 2008) (“Ng-Loy’s Intellectual Property”), observes (at para 25.4.1) that the ground for revocation set out in s 22(1)(c) of the current TMA “deals with what may be called ‘genericisation’ – where the trade mark becomes the generic term for the product or services [for which the mark is registered]”. Thus far, there have been few judicial pronouncements on what the concept of “common name in the trade” entails. As noted in Christopher Morcom, Ashley Roughton & Simon Malynicz, The Modern Law of Trade Marks (LexisNexis, 3rd Ed, 2008) (“Morcom et al”) at para 7.35, “there is very little guidance in decisions of the [the English trade marks] registry or the courts in the application of this provision [ie, the English equivalent of s 22(1)(c) of the current TMA]”.
[53] Some guidance is nevertheless forthcoming from academic works. David I Bainbridge, Intellectual Property (Pearson Longman, 6th Ed, 2007) (“Bainbridge’s Intellectual Property”), for example, describes a trade mark which has become a common name in the trade as one which is “so well known that [it passes] into the language as being the name by which a type of product is referred to rather than the name by which the product of a particular undertaking is sold” [emphasis added] (at p 652). Another leading work, William Cornish & David Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (Sweet & Maxwell, 6th Ed, 2007) (“Cornish & Llewelyn”), describes a trade mark which has become a common name in the trade as one which “[has come] to be used as a description of the product itself” (at para 18-74).
[54] In a similar vein, the Plaintiff’s lead counsel, Mr Tan Tee Jim SC (“Mr Tan”), in Law of Trade Marks and Passing Off in Singapore (Sweet & Maxwell Asia, 2nd Ed, 2005) (“Tan’s Law of Trade Marks”), describes a trade mark which has become a common name in the trade as one which has “lost the ability to act as a badge of origin” (at para 7.62). He adds that (ibid):
An example of a mark which has become a common name in the trade would be the mark “gramophone”. In In re Gramophone Company’s Application [1910] 2 Ch 423, the English High Court stated (at 431):
[55] Tan’s Law of Trade Marks further emphasises that “it is the name that must have become common … [and] [i]t must have become common for the goods or services for which it is registered” [emphasis in original] (at para 7.63). The name must also have become common due to the acts or the inactivity of the proprietor. Thus (ibid):
[56] Section 22(1)(c) of the current TMA specifies that the trade mark in question must have become common “in the trade”, which expression includes consumers and end-users of the product or service for which the trade mark is registered. In Björnekulla Fruktindustrier AB v Procordia Food AB [2004] RPC 45 (“Procordia Food”), which involved a provision similar to s 22(1)(c) of the current TMA (viz, Art 12(2)(a) of the European Trade Marks Directive), the party applying for revocation (“the claimant”) contended that the word “Bostongurka” had become the common name for chopped pickled gherkins. In support of its application, the claimant relied primarily on “two market research surveys of consumers” (id at [7]). The proprietor of the “Bostongurka” trade mark (“the defendant”) resisted the application for revocation, citing in particular “a market research survey of leading operators in the grocery, mass catering and food stall sectors” (id at [8]). The Swedish court was uncertain as to the class of persons to be considered for the purposes of the expression “in the trade” and submitted to the ECJ for a preliminary ruling the question of “the relevant circle or circles for determining whether a trade mark has become the common name in the trade for a product in respect of which it is registered” (id at [11]). The ECJ found that while the English and the Finnish versions of the term “in the trade” referred to “trade circles alone” (id at [17]), the corresponding terms in the languages of other countries (such as Spain, Denmark, France and Italy) were not restricted in such a manner, but instead referred “both to consumers and end users as well as to the operators who distribute[d] the product” (ibid). Emphasising the essential function of a trade mark (viz, “to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or service from others which have another origin” (see Procordia Food at [20])), the ECJ opined that, in general, the more significant circles would be “consumers or end users” (id at [24]). The court added that, depending on the features of the product market concerned, consideration should also be given to the perception of intermediaries who could influence decisions to purchase the product concerned (id at [25]).
[57] For the condition in s 22(1)(c) of the current TMA to be satisfied, it suffices (notwithstanding the literal wording of the provision) if the trade mark in question has become a common name in the trade; it does not have to be the only common name in the trade. This very issue arose in Hormel ([51] supra), where one important question was whether s 46(1)(c) of the English Trade Marks Act (which is in pari materia with s 22(1)(c) of the current TMA) required the impugned trade mark to have become the only common name in the trade or whether it was sufficient that the trade mark had become merely a common name in the trade. The English High Court held (at [167]):
Hormel thus indicates, vis-à-vis s 22(1)(c) of the current TMA, that it is sufficient if the trade mark in question has become a common name in the trade. The court in Hormel added that it would not make any difference if the trade mark concerned “[was] not the word [which had been registered as a trade mark] … per se but a stylised presentation of it” (at [168]).
(2) Whether the Opposed Mark has become a common name in the cordyceps trade
[58] The Plaintiff has the onus of showing that the Opposed Mark has become a “common name in the trade” (per s 22(1)(c) of the current TMA). Specifically, the Plaintiff has to show that the word “Rooster” has become common in the cordyceps trade (viz, it has become common to, inter alia, consumers and end-users of cordyceps (see [56] above)) in the following manner:[note: 12]
[59] The burden of proof which the Plaintiff must satisfy in this regard can be described as a heavy burden. As Warren J stated in Rousselon Freres ET CIE v Horwood Homewares Limited [2008] RPC 30 at [85], “[i]nsofar as it is suggested that [the impugned trade mark] has become a common name in the trade, that must be established by cogent evidence” [emphasis added]. It has likewise been observed in Kerly’s ([52] supra) that “[a] tribunal would expect to see substantial independent evidence relating to the relevant product or service market” (at para 10-103).
[60] Indeed, in general, it would appear that, as far as possible, objective evidence should be adduced to establish that s 22(1)(c) of the current TMA has been satisfied. That this is the correct principle to apply can be perceived from the following cases which deal with the issue of whether the registration of a trade mark should be invalidated on the ground that the trade mark has become customary in the current language or in the bona fide and established practices of the trade (see s 23(1) read with s 7(1)(d) of the current TMA; see also the European equivalent of these provisions, ie, Art 51(1)(a) read with Art 7(1)(d) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark (“EC Council Regulation 40/94”)). Some general guidance can be drawn from these cases as there is some conceptual overlap between, on the one hand, revoking the registration of a trade mark on the ground that the trade mark has become a common name in the trade for the product or service for which it is registered and, on the other hand, invalidating the registration of a trade mark on the basis that the trade mark has become customary in the current language or in the bona fide and established practices of the trade. This is in some ways reflected by the fact that, as will be discussed later (at [71]–[76] below), a trade mark which has become “customary” within the meaning of s 7(1)(d) of the current TMA can, like a trade mark which has become a “common name in the trade” (per s 22(1)(c)), be described as a “generic” mark.
[61] In Sunonwealth Electric Machine Industry Co Ltd v Siemens Aktiengesellschaft [2007] SGIPOS 3 (“Sunonwealth”), an application was made to register a mark comprising the word “Maglev” for, among other products, motors for electric machines and motors for cooling fans. The application was opposed on, inter alia, the ground that the mark had become customary in the manner delineated in s 7(1)(d) of the current TMA. The Assistant Registrar of Trade Marks upheld the opposition and refused the application for registration, holding that the word “Maglev” had become customary within the meaning of s 7(1)(d) for the following reasons (at [4]):
For similar reasons, it was held in Alcon Inc v Office for Harmonisation in the Internal Market [2004] ETMR 6 (“Alcon”) that the acronym “BSS”, which had been registered as a trade mark for ophthalmic pharmaceutical preparations and sterile solutions for ophthalmic surgery, was not a valid trade mark as it had become customary within the meaning of Art 7(1)(d) of EC Council Regulation 40/94 (ie, the European equivalent of s 7(1)(d) of the current TMA). The European Court of First Instance explained (at [43]):
[62] In our opinion, on the available evidence, the Plaintiff has not discharged its burden of showing that the Opposed Mark has become a common name in the cordyceps trade. The Plaintiff has not shown that the word “Rooster” has become commonly used for denoting cordyceps from the PRC, whether or not such cordyceps bear the Rooster Sign. Indeed, there was hardly any cogent evidence to support such a finding. Here, we would quote the testimony of Mr Tan Peng Seng, a managing director of a Chinese medicinal business and a witness for the Plaintiff, who, during cross-examination by counsel for the First Defendant (“Mr Ravindran”), indicated that it would not be possible to refer to other brands of cordyceps from the PRC as “Rooster” cordyceps:[note: 13]
[63] Similar sentiments were expressed by another witness for the Plaintiff, Mr Ng Sui Teck, who is likewise a managing director of a Chinese medicinal business, when he was cross-examined by Mr Ravindran as follows:[note: 14]
[64] Indeed, there was no clear evidence to show that the word “Rooster” was even linked to cordyceps in general (as opposed to cordyceps from the PRC specifically), as can be seen from the following exchange between the Judge and Mr Tan Hee Nam (“Tan”), the managing director of the Plaintiff:[note: 15]
[65] From the above, it can be seen that the word “Rooster” would at most refer to cordyceps bearing the Rooster Sign and not to cordyceps from the PRC generically. But, in order to show that the word “Rooster” has become a “common name in the trade” within the meaning of s 22(1)(c) of the current TMA, the Plaintiff must show that the word “Rooster” would also refer to cordyceps from the PRC which do not bear the Rooster Sign (cf the word “gramophone”, which was considered to be generic in In re Gramophone Company’s Application ([54] supra), and the word “linoleum”, which was considered to be generic in Linoleum Manufacturing Company v Nairn (1877–78) 7 Ch D 834). As the First Defendant rightly argued in its submissions before this court, the practice of describing cordyceps from the PRC which are marked with the Rooster Sign as “Rooster cordyceps” does not make the word “Rooster” a common name of the product. Yet, this is precisely the requirement which the Plaintiff must satisfy for the purposes of s 22(1)(c) of the current TMA – ie, the Plaintiff must show that the word “Rooster” has become a common name for cordyceps from the PRC. That this is the requirement which must be satisfied appears to have been admitted by Tan, who stated in his affidavit filed on 1 November 2006:[note: 16]
This, the Plaintiff could not do (see [62]–[63] above). We would add that, unlike Sunonwealth ([61] supra) and Alcon ([61] supra), there is a lack of objective evidence in the present case to show that the word “Rooster” has indeed become a common name in the trade for cordyceps from the PRC. The only evidence before the court that indicates thus would be the bare assertions of Tan (see the passage reproduced in the preceding paragraph) and a number of other witnesses. This is hardly sufficient to discharge the Plaintiff’s burden of proof. Indeed, there is undisputed evidence that cordyceps from the PRC are sold (and are also known) in Singapore under numerous marks or brands, eg, “Turkey”, “Rabbit”, “Golden Deer”, “Long Ma”, “Twin Chicken”, “Royal King”, “G-Lion”, “Xin Sheng”, etc. Thus, we hold that the Plaintiff has failed to establish that the Rooster Sign (ie, the word “Rooster”) has become a common name in the trade for denoting cordyceps from the PRC and there is accordingly no basis to revoke the registration of the Opposed Mark on this ground.
[66] For completeness, we would add that it would be insufficient for the Plaintiff to simply show that the Rooster Mark is a popular mark used to denote cordyceps from the PRC. The mere fact that a mark is popular or even the only brand used to market a particular product or service does not ipso facto render that mark a generic name and thus undeserving of protection. In Hormel ([51] supra), it was held that a mark which had become a household name was not necessarily a mark which had become generic. In response to the argument that the registration of the trade mark “Spam” should be revoked as that word had become the common name in the trade for the purposes of s 46(1)(c) of the English Trade Marks Act (viz, the English equivalent of s 22(1)(c) of the current TMA), the English High Court stated (at [176]):
Other examples of trade marks which have become household names would include marks such as “Xerox”, “Kleenex” and “Kiwi”, all of which remain registered as trade marks despite the fact that they are commonly used in the generic sense to refer to photocopiers, tissue paper and shoe polish respectively.
[67] In view of our conclusion at [62]–[65] above on the issue of whether the word “Rooster” has become a “common name in the trade” within the meaning of s 22(1)(c) of the current TMA, it is wholly unnecessary for us to consider the second issue relating to this provision, namely, whether, if the word “Rooster” has indeed become a common name for cordyceps from the PRC, this development was brought about by the “acts or inactivity” (per s 22(1)(c)) of the First Defendant (see [51] above).
Our decision on revocation
[68] For the foregoing reasons, we hold that the registration of the Opposed Mark should not be revoked. None of the grounds for revocation set out in ss 22(1)(a), 22(1)(b) and 22(1)(c) of the current TMA have been made out. As we earlier held, the available evidence indicates that the Opposed Mark was put to genuine use in the course of trade during the Relevant Period (see [45]–[49] above) and the word “Rooster” has not become a common name in the cordyceps trade for referring to cordyceps from the PRC (see [62]–[65] above).
Invalidation of the registration of the Opposed Mark
[69] The Plaintiff’s case for invalidating the registration of the Opposed Mark was, as mentioned earlier (see [20]–[23] above), presented under four heads in the court below, namely:
(a) it had become customary to use the Rooster Sign (which forms the essence of the Opposed Mark) to denote cordyceps from the PRC (see s 7(1)(d) of the current TMA);
(b) at the time of Qinghai Meheco’s application to register the Rooster Sign as a trade mark in Singapore, that sign was not capable of distinguishing Qinghai Meheco’s cordyceps from the cordyceps of other suppliers and thus did not satisfy the definition of a trade mark (see s 7(1)(a) of the current TMA);
(c) Qinghai Meheco’s application to register the Rooster Sign as a trade mark in Singapore had been made in bad faith (see s 7(6) of the current TMA); and
(d) the First Defendant had obtained the registration of the Opposed Mark in its name in 2005 (jointly with Qinghai Yixin) and 2006 (in its sole name) through fraud and/or misrepresentation to the Registrar of Trade Marks (see s 23(4) of the current TMA).
Before the Judge, the Plaintiff succeeded in establishing the second head (viz, that the Rooster Sign had been registered as a trade mark in Singapore in breach of s 7(1)(a) of the current TMA (see sub-para (f) of [26] above)). Nevertheless, the Judge ultimately decided that the registration should not be invalidated despite the breach of s 7(1)(a) (see sub-paras (g)–(j) of [26] above).
Section 7(1)(d): The impugned trade mark is a sign which has become customary in the trade
[70] With regard to s 7(1)(d) of the current TMA, the Plaintiff’s argument is that, at the date of the application by Qinghai Meheco (the First Defendant’s predecessor in title and the original registrant of the Opposed Mark) to register the Rooster Sign as a trade mark in Singapore, it was customary in the cordyceps trade to use the Rooster Sign to denote cordyceps from the PRC. Accordingly, the registration of the Opposed Mark should be invalidated under s 23(1), which provides for invalidation of the registration of (inter alia) trade marks “which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade” (per s 7(1)(d)).
(1) The requirement of customariness
[71] There is little authority on what the phrase “customary in the current language or in the bona fide and established practices of the trade” in s 7(1)(d) of the current TMA means. Indeed, as the Judge observed, there are no binding authorities, although there are good persuasive authorities (see [27] of the Judgment).
[72] In Hormel ([51] supra), the English High Court, in construing s 3(1)(d) of the English Trade Marks Act (which is similar to s 7(1)(d) of the current TMA), held that the essence of the objection embodied in the provision was as follows (at [155]):
[73] Similarly, in Alcon Inc v Office for Harmonisation in the Internal Market [2005] ETMR 69, the ECJ stated (at [29]) that the principle underlying Art 7(1)(d) of EC Council Regulation 40/94 (which is in pari materia with s 7(1)(d) of the current TMA) was that:
[74] Likewise, Lionel Bently & Brad Sherman, Intellectual Property Law (Oxford University Press, 2nd Ed, 2004) (“Bently & Sherman”) comments on s 3(1)(d) of the English Trade Marks Act as follows (at p 833):
[75] In Merz & Krell GmbH & Co [2002] ETMR 21 (“Merz & Krell”), the applicant’s application to register the word “Bravo” in respect of writing implements was rejected by the German Patent and Trade Mark Office on the ground that “the word BRAVO [was], for the class of persons to whom it [was] addressed … no more than a word of praise and an advertising slogan devoid of any distinctive character” (at [10]). The issue before the ECJ was whether Art 3(1)(d) of the European Trade Marks Directive (which is similar to s 7(1)(d) of the current TMA) was to be interpreted restrictively such that “only signs or indications which directly describe[d] the specific goods or services in respect of which registration [was] sought, or the essential characteristics or features thereof, [were] affected by the bar to registration” (see Merz & Krell at [16]). The court opined that Art 3(1)(d) was concerned with prohibiting registration on the sole condition that the mark had become customary and it was immaterial whether the mark was descriptive of the characteristics of the goods or services in question, stating (at [26] and [28]–[29]):
[76] Applying a similar approach to the interpretation of s 7(1)(d) of the current TMA in the present case, the Rooster Sign, although not descriptive of any characteristic of the subject goods (ie, cordyceps), would have become customary if it has become incapable of distinguishing the cordyceps of one undertaking from those of other undertakings. We should at this juncture emphasise that the concept of the capacity of a trade mark to distinguish the goods or services which it covers (referred to hereafter as a trade mark’s “capacity to distinguish”) as dealt with under this ground of invalidation (viz, s 7(1)(d)) should not be conflated with the concept of a trade mark’s capacity to distinguish as dealt with under s 7(1)(a), which is discussed later (see [84]–[99] below). As will be seen, the latter concept of a trade mark’s capacity to distinguish (ie, the concept embodied in s 7(1)(a)) does not take into consideration the use made of the trade mark in question when determining whether that trade mark possesses the requisite capacity to distinguish (see [97] below). In contrast, the former concept of a trade mark’s capacity to distinguish (ie, the concept embodied in s 7(1)(d)) allows the use made of the trade mark in question to be taken into account for the purposes of determining whether that trade mark has become customary (see, eg, the decision of the English High Court in West v Fuller Smith & Turner Plc [2002] FSR 55). As stated in Morcom et al ([52] supra), s 3(1)(d) of the English Trade Marks Act (which is in pari materia with s 7(1)(d) of the current TMA) “is intended to enable applications … for signs which have become generic or [which] have come into general use in the trade … to be refused” [emphasis added] (at para 5.81).
(2) Whether the Rooster Sign has become customary in the cordyceps trade

The judgment continues past this page. Read the rest at eLitigation.

Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal

Laws this judgment relies on

Grounds of decision

Introduction

1

5

9

15

20

20

21

22

24

24

24

25

26

31

35

35

40

47

48

49

49

52

57

59

70

72

72

75

84

84

86

92

95

96

96

97

98

106

110

112

113

113

114

121

121

122

123

132

133

133

135

135

The factual matrix

The Plaintiff’s submissions in the High Court

The decision of the Judge

The issues before this court

The issues raised in the Appeal

The issues raised in the Cross-Appeal

Our approach to the issues raised by the parties

Revocation and invalidation of the registration of the Opposed Mark

The burden of proof

Revocation of the registration of the Opposed Mark

Sections 22(1)(a) and 22(1)(b): Lack of genuine use and non-use of the impugned trade mark

(1) The requirement of “genuine use”

(2) Whether there was genuine use of the Opposed Mark during the Relevant Period

(1) The requirement that the impugned trade mark has become a “common name in the trade”

(2) Whether the Opposed Mark has become a common name in the cordyceps trade

Our decision on revocation

Invalidation of the registration of the Opposed Mark

Section 7(1)(d): The impugned trade mark is a sign which has become customary in the trade

(1) The requirement of customariness

(2) Whether the Rooster Sign has become customary in the cordyceps trade