Case Details
- Citation: [2019] SGIPOS 9
- Court: Intellectual Property Office of Singapore
- Date: 2019-04-10
- Judges: Principal Assistant Registrar Mark Lim Fung Chian
- Plaintiff/Applicant: TWG Tea Company Pte. Ltd.
- Defendant/Respondent: T2 Singapore Pte. Ltd. & Tea Too Pty Ltd
- Legal Areas: Trade marks and trade names – Interlocutory Hearing
- Statutes Referenced: Trade Marks Act, Trade Marks Act (Cap. 332)
- Cases Cited: [2016] SGIPOS 9
- Judgment Length: 14 pages, 5,664 words
Summary
This case involves an application by TWG Tea Company Pte. Ltd. (the "Applicant") for confidentiality safeguards in relation to certain sales and marketing figures it sought to adduce as evidence in trade mark opposition proceedings against T2 Singapore Pte. Ltd. and Tea Too Pty Ltd (the "Respondents"). The Respondents objected to the Applicant's proposed confidentiality measures. The Intellectual Property Office of Singapore (IPOS) had to determine whether confidentiality safeguards should be ordered, and if so, what those safeguards should be.
What Were the Facts of This Case?
The Applicant sought to register several trade marks, including "SINGAPORE BREAKFAST", "NEW YORK BREAKFAST", "LONDON BREAKFAST" and "CARAVAN", for tea and other goods in Class 30. The Respondents opposed the registration of these marks, arguing that they were "devoid of any distinctive character" and/or descriptive of the goods in question.
To counter these objections, the Applicant sought to adduce evidence showing that the marks had acquired distinctiveness through use. Specifically, the Applicant wanted to provide information on: (a) the amounts it had spent on PR and advertising for products bearing the marks from 2008 to 2015; (b) the total sales figures for tea sold under the marks from 2011 to 2017 in Singapore; and (c) the total sales figures of pots of tea sold under the marks from 2012 to 2017 at the Applicant's tea salons and franchisees' tea salons in Singapore.
The Applicant asserted that this information was confidential and sought various confidentiality safeguards before disclosing it to the Respondents. The Respondents, however, refused to provide the requested confidentiality undertaking.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Applicant's sales and marketing figures should be considered confidential information that requires protection.
2. If so, under what circumstances should confidentiality safeguards be ordered.
3. What would be the appropriate confidentiality safeguards in this case.
How Did the Court Analyse the Issues?
The IPOS noted that questions of confidentiality commonly arise in intellectual property proceedings, where there is a tension between the public interest in open justice and the need to protect trade secrets or other confidential information.
The IPOS observed that in typical cases involving claims for patent infringement or breach of confidence, it is the party resisting discovery that seeks confidentiality safeguards before disclosing its trade secrets to the opposing party, which is often a competitor. In contrast, in trade mark proceedings, the allegedly confidential sales and marketing information is normally voluntarily put forward by a party to support its position, such as to demonstrate that a mark has acquired distinctiveness or is well-known.
The IPOS noted that there was limited guidance from other common law jurisdictions on how to approach this issue in the trade mark context. It therefore had to consider the competing public interests at play and determine the appropriate approach.
What Was the Outcome?
The IPOS ultimately ordered that the Applicant's sales and marketing figures be disclosed to the Respondents, subject to the following confidentiality safeguards:
1. The Respondents and their legal representatives must use the confidential information only for the purposes of the IPOS proceedings in respect of the subject trade marks.
2. The Respondents and their legal representatives must not disclose the confidential information to any third parties, except for employees of the Respondents as approved by the Applicant.
3. The Respondents must provide an undertaking to the Applicant to indemnify it against any loss, damage, or expenses arising from a breach of the confidentiality obligations.
4. The Respondents must consent to injunctive relief in the event of any threatened or actual breach of the confidentiality undertaking.
Why Does This Case Matter?
This case is significant as it appears to be the first time a Singapore court or tribunal has had to adjudicate on the issue of confidentiality safeguards in trade mark proceedings. The decision provides useful guidance on the approach to be taken when a party seeks to adduce confidential sales and marketing information as evidence to support its position.
The case highlights the need to balance the competing public interests of open justice and the protection of trade secrets or other confidential information. While the IPOS acknowledged the Applicant's legitimate concerns about disclosing sensitive commercial data to its competitors, it ultimately determined that the information should be disclosed, subject to appropriate confidentiality measures.
This decision is likely to be of practical importance to trade mark practitioners in Singapore, as it sets a precedent for how similar issues may be handled in future trade mark opposition or other proceedings. It provides a framework for parties to follow when seeking or resisting confidentiality safeguards in relation to the disclosure of sensitive commercial information.
Legislation Referenced
Cases Cited
- [2016] SGIPOS 9
- B2C2 Ltd v Quoine Pte Ltd [2018] SGHC(I) 04
- Diagcor Bioscience Incorporated Ltd v Chan Wai Hon Billy [2015] HKCU 1853
- Warner-Lambert v Glaxo Laboratories Ltd [1975] RPC 354
Source Documents
This article analyses [2019] SGIPOS 9 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.