Case Details
- Citation: [2019] SGIPOS 7
- Court: Intellectual Property Office of Singapore
- Date: 2019-04-09
- Judges: See Tho Sok Yee
- Plaintiff/Applicant: Aalst Chocolate Pte Ltd
- Defendant/Respondent: The Patissier LLP
- Legal Areas: Trade marks and trade names – Declaration of Invalidity
- Statutes Referenced: The Applicant relies on two grounds in the Trade Marks Act, Trade Marks Act
- Cases Cited: [2010] SGIPOS 7, [2012] SGIPOS 1, [2017] SGIPOS 3, [2018] SGIPOS 11, [2018] SGIPOS 20, [2019] SGIPOS 6, [2019] SGIPOS 7
- Judgment Length: 21 pages, 9,429 words
Summary
This case involves a dispute over the validity of a trade mark registration held by The Patissier LLP. Aalst Chocolate Pte Ltd, the applicant, sought a declaration of invalidity for the trade mark on the grounds that it was registered in breach of Sections 7(1)(b) and 7(1)(c) of the Singapore Trade Marks Act. The Intellectual Property Office of Singapore (IPOS) had to determine whether the trade mark lacked distinctive character or was descriptive of the goods and services covered by the registration.
What Were the Facts of This Case?
The Patissier LLP is the registered proprietor of the trade mark "The Patissier" in Singapore, registered under Trade Mark Nos. T0518520H and T0518521F. The trade mark was registered on 27 September 2005 and covers a range of bakery, confectionery, and pastry products in Class 30, as well as retail services related to those goods in Class 35.
Aalst Chocolate Pte Ltd, the applicant, is a Singapore company in the business of manufacturing and selling chocolate and chocolate-related products. On 2 January 2018, Aalst Chocolate applied for declarations of invalidity of The Patissier's trade mark registrations, arguing that the mark lacked distinctive character and was descriptive under Sections 7(1)(b) and 7(1)(c) of the Trade Marks Act.
The parties have been involved in several other trade mark disputes before the Registrar of Trade Marks. Most notably, The Patissier recently succeeded in its application to revoke one of Aalst Chocolate's trade mark registrations on grounds of non-use.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the trade mark "The Patissier" lacked distinctive character under Section 7(1)(b) of the Trade Marks Act.
- Whether the trade mark "The Patissier" was descriptive of the goods and services covered by the registration under Section 7(1)(c) of the Trade Marks Act.
How Did the Court Analyse the Issues?
The Hearing Officer, See Tho Sok Yee, began by setting out the applicable law and burden of proof. She noted that under Section 101(c)(i) of the Trade Marks Act, the registration of a trade mark is prima facie evidence of its validity, placing the burden of proof on the applicant, Aalst Chocolate.
The Hearing Officer then discussed the general principles of distinctiveness established in prior case law, citing the High Court decision in Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd. She explained that the assessment of distinctiveness is a matter of degree, with some marks being clearly descriptive or lacking in distinctiveness, while others may have a more subtle or nuanced relationship to the goods and services.
In considering the "average consumer" for the purposes of the distinctiveness analysis, the Hearing Officer focused on the relevant goods in Class 30 (bakery, confectionery, and pastry products) and the relevant services in Class 35 (retail services for those products). She described the average consumer as "reasonably well informed, observant and circumspect".
The Hearing Officer then proceeded to analyze the two grounds of invalidity raised by Aalst Chocolate in detail:
- Lack of Distinctive Character (Section 7(1)(b)): The Hearing Officer examined the meaning of the term "patissier" and concluded that it was a French loanword commonly used in English to refer to a baker or pastry chef. She found that the average consumer would perceive "The Patissier" as directly describing the nature of the goods and services covered by the registration, and therefore lacking in distinctive character.
- Descriptiveness (Section 7(1)(c)): Building on the analysis under Section 7(1)(b), the Hearing Officer determined that "The Patissier" would be perceived by the average consumer as directly describing the goods and services, and therefore fell foul of the prohibition on registering descriptive trade marks under Section 7(1)(c).
What Was the Outcome?
Based on the analysis of the two grounds of invalidity, the Hearing Officer concluded that the trade mark "The Patissier" was registered in breach of Sections 7(1)(b) and 7(1)(c) of the Trade Marks Act. Accordingly, the Hearing Officer granted the declarations of invalidity sought by Aalst Chocolate, invalidating the registrations of Trade Mark Nos. T0518520H and T0518521F.
Why Does This Case Matter?
This case is significant for several reasons:
- Distinctiveness of Foreign Loanwords: The decision provides guidance on the assessment of distinctiveness for trade marks that incorporate foreign loanwords. The Hearing Officer's finding that "patissier" is a commonly understood term in English, and therefore lacks distinctive character, highlights the challenges faced by businesses seeking to adopt foreign language elements in their trade marks.
- Burden of Proof in Invalidity Proceedings: The case reaffirms the principle that the burden of proof in invalidity proceedings falls on the applicant challenging the registration. However, it also acknowledges that the burden may shift to the registered proprietor if the applicant can establish a prima facie case of invalidity.
- Ongoing Disputes Between the Parties: The long-standing rivalry between Aalst Chocolate and The Patissier, as evidenced by their involvement in multiple trade mark disputes, underscores the importance of carefully selecting and protecting trade marks in a competitive market.
Overall, this decision provides valuable guidance for trade mark owners and practitioners on the assessment of distinctiveness and descriptiveness under the Singapore Trade Marks Act, particularly in the context of foreign language elements in trade marks.
Legislation Referenced
Cases Cited
- [2010] SGIPOS 7
- [2012] SGIPOS 1
- [2017] SGIPOS 3
- [2018] SGIPOS 11
- [2018] SGIPOS 20
- [2019] SGIPOS 6
- [2019] SGIPOS 7
- Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd [2018] 5 SLR 312
- Love & Co Pte Ltd v The Carat Club Pte Ltd [2009] 1 SLR(R) 561
- Société des Produits Nestlé SA and another v Petra Foods Ltd and another [2017] 1 SLR 35
Source Documents
This article analyses [2019] SGIPOS 7 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.