Case Details
- Citation: [2018] SGIPOS 21
- Court: Intellectual Property Office of Singapore
- Date: 2018-12-17
- Judges: Ong Sheng Li, Gabriel, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Bitwave Pte Ltd
- Defendant/Respondent: Fung Shing Company Limited
- Legal Areas: Trade marks and trade names – Declaration of Invalidity
- Statutes Referenced: The pleaded grounds of invalidation under the Trade Marks Act, Trade Marks Act
- Cases Cited: [2016] SGIPOS 1, [2016] SGIPOS 10, [2018] SGIPOS 21
- Judgment Length: 14 pages, 6,799 words
Summary
This case involves an application by Bitwave Pte Ltd to have a registered trade mark belonging to Fung Shing Company Limited declared invalid. Bitwave, a Singaporean technology company, sought to invalidate Fung Shing's registration of the mark " " on the grounds of bad faith, passing off, and earlier copyright. The Intellectual Property Office of Singapore (IPOS) heard the case and ultimately ruled in favor of Bitwave, finding that Fung Shing had acted in bad faith when registering the mark.
What Were the Facts of This Case?
Bitwave Pte Ltd is a Singaporean technology company that specializes in the design and development of communication products. In or around 2008, Bitwave began investing heavily in the research, development, and design of a Bluetooth-compatible "Helmet Communicator" product, which it initially intended to launch under the trade mark "EXPedio." However, the product was eventually launched in 2010 under the "UClear" brand name, which Bitwave used in conjunction with the product and various other "UClear" branded items.
Bitwave sold its "UClear" products in Singapore through a distributor, Hodaka Motoworld Pte Ltd, starting in 2010. The company also enjoyed commercial success selling "UClear" products in the United States through its wholly owned subsidiary, BITwave USA. In 2010, Bitwave applied for and obtained registration of the "UCLEAR" trade mark in the US.
In 2012, Fung Shing Company Limited, a Hong Kong-based company in the business of producing and selling audio products, applied for and obtained registration of the " " trade mark in Singapore in Class 9. This mark covered goods such as communication apparatus, digital signal processing equipment, and microphones.
Bitwave first became aware of Fung Shing's trade mark registration in 2014, when Bitwave's own trade mark applications faced citations based on Fung Shing's registration. Bitwave then applied to register "UCLEAR DIGITAL" in Singapore, but this application was also cited against Fung Shing's mark.
What Were the Key Legal Issues?
Bitwave sought to have Fung Shing's " " trade mark registration declared invalid on three grounds:
1. Bad faith under Section 23(1) read with Section 7(6) of the Trade Marks Act.
2. Passing off under Section 23(3) read with Section 8(7)(a) of the Trade Marks Act.
3. Earlier copyright under Section 23(3) read with Section 8(7)(b) of the Trade Marks Act.
How Did the Court Analyse the Issues?
The key issue was whether Fung Shing had acted in bad faith when registering the " " trade mark. The Hearing Officer examined the principles established in the leading case of Valentino Globe BV v Pacific Rim Industries Inc, which set out the legal test for bad faith under the Trade Marks Act.
The Hearing Officer noted that the test for bad faith contains both a subjective element (what the particular applicant knows) and an objective element (what ordinary persons adopting proper standards would think). Bad faith is a context-dependent concept, and the Hearing Officer emphasized that an allegation of bad faith must be sufficiently supported by the evidence.
In analyzing the facts, the Hearing Officer found that Fung Shing's director, Clive Hui, failed to appear for cross-examination as scheduled, despite being expected to do so. The Hearing Officer agreed with Bitwave's counsel that an adverse inference should be drawn from Clive's unexplained absence, in line with the precedent set in Christie Manson & Woods Limited v Chritrs Auction Pte. Limited.
The Hearing Officer then considered the evidence presented by Bitwave, including the fact that Bitwave had been using the "UClear" brand in Singapore and other countries since 2010, while Fung Shing only registered the similar " " mark in 2012. The Hearing Officer found that Fung Shing's conduct in registering the mark, despite being aware of Bitwave's prior use of the "UClear" brand, amounted to bad faith.
What Was the Outcome?
The Hearing Officer ruled in favor of Bitwave, declaring Fung Shing's " " trade mark registration to be invalid on the ground of bad faith under Section 23(1) read with Section 7(6) of the Trade Marks Act. Given this finding, the Hearing Officer did not need to address the other grounds of invalidity raised by Bitwave.
Why Does This Case Matter?
This case provides important guidance on the application of the bad faith ground for invalidating a trade mark registration under the Singapore Trade Marks Act. The Hearing Officer's decision reinforces the principles established in the Valentino case, emphasizing the context-dependent nature of the bad faith assessment and the need for sufficient evidentiary support.
The case also highlights the potential consequences of a party's failure to appear for cross-examination, as the Hearing Officer was willing to draw an adverse inference against Fung Shing due to its director's unexplained absence. This serves as a cautionary tale for trade mark owners, underscoring the importance of actively participating in invalidation proceedings and providing a full account of the relevant facts.
From a practical perspective, the decision in Bitwave Pte Ltd v Fung Shing Company Limited demonstrates that the bad faith ground can be a powerful tool for challenging trade mark registrations obtained in questionable circumstances, particularly where the registrant was aware of the applicant's prior use of a similar mark. This case will be a valuable reference for intellectual property practitioners advising clients on trade mark disputes and invalidity actions.
Legislation Referenced
- The pleaded grounds of invalidation under the Trade Marks Act
- Trade Marks Act
Cases Cited
- [2016] SGIPOS 1
- [2016] SGIPOS 10
- [2018] SGIPOS 21
- Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203
- Rothmans of Pall Mall Ltd v Maycolson International Ltd [2006] 2 SLR(R) 551
- Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2009] 2 SLR(R) 814
- Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR(R) 1073
- Nautical Concept Pte Ltd v Jeffery Mark Richard and anor [2007] 1 SLR(R) 1071
- Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552
Source Documents
This article analyses [2018] SGIPOS 21 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.