Case Details
- Citation: [2003] SGHC 169
- Case Title: Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long and others (trading as Polykwan Trading Co)
- Court: High Court of the Republic of Singapore
- Decision Date: 06 August 2003
- Case Number: OM 6/2003
- Coram: Woo Bih Li J
- Judges: Woo Bih Li J
- Plaintiff/Applicant: Bluestar Exchange (Singapore) Pte Ltd
- Defendant/Respondent: Teoh Keng Long and others (trading as Polykwan Trading Co)
- Counsel for Applicant: Wong Siew Hong and Tay Sock Kheng (Infinitus Law Corporation)
- Counsel for Respondents: Dedar Singh Gill and Paul Teo (Drew & Napier LLC)
- Legal Areas: Trade Marks and Trade Names — Partial revocation; Trade Marks and Trade Names — Revocation
- Statutes Referenced: Trade Marks Act (Cap 332, 1992 Ed) s 22(7); Trade Marks Act (Cap 332, 1992 Ed) s 22(2); Trade Marks Act (Cap 332, 1992 Ed) s 22(1)(a); Trade Marks Act 1998; UK Trade Marks Act
- Procedural Posture: Originating Motion to revoke a registered trade mark; application dismissed with costs; applicant later appealed (noted in the judgment)
- Judgment Length: 13 pages, 7,253 words
- Registered Trade Mark at Issue: Registered Trade Mark No. T92/098573C (“the RTM”)
- Classes: Class 25 (men’s undergarments, briefs, socks, men’s sports clothing, knitwear, singlets, swimwear)
Summary
This High Court decision concerns an application by Bluestar Exchange (Singapore) Pte Ltd to revoke a Malaysian firm’s registered trade mark in Singapore. The respondents, trading as Polykwan Trading Co, were the registered proprietors of Registered Trade Mark No. T92/098573C, comprising a large star device and the words “BLUE STAR”. The applicant sought revocation on multiple grounds, including that the classification for which the mark was registered was unduly wide, that the mark lacked distinctive character, and that the respondents had not made genuine use of the mark (or a qualifying variant) for the requisite five-year period.
Woo Bih Li J dismissed the application with costs. The court’s reasoning turned on the evidential and legal requirements for revocation under the Trade Marks Act (Cap 332, 1992 Ed). In particular, the court scrutinised whether the respondents’ use amounted to “genuine use” for the relevant period and whether the mark’s distinctive character and registration scope could be attacked on the grounds pleaded. The court also addressed the applicant’s narrative about market searches and alleged non-use, finding the evidence insufficient and, in key respects, unreliable.
What Were the Facts of This Case?
The respondents became registered proprietors of the RTM on 11 December 1992. The RTM consisted of two elements: (a) a large star device and (b) the words “BLUE STAR” displayed below the star device. The registration covered men’s clothing and related goods in Class 25, including men’s undergarments, briefs, socks, men’s sports clothing, knitwear, singlets, and swimwear.
Although the RTM was registered in 1992, the respondents’ evidence showed that the mark (or a variant) was used only from about December 1996. The respondents used a Malaysian company, Exclusive Garments Mfg Sdn Bhd, to manufacture clothing for sale in Singapore and elsewhere. Exclusive Garments Mfg Sdn Bhd was wholly owned by another Malaysian company, Spantex Garment Corporation Sdn Bhd, whose shares were held by the same three persons who were the respondents. Distribution in Singapore was carried out by Spantex Marketing Singapore Pte Ltd.
From the outset, the respondents’ use involved changes to the star device. The initial use featured a star device with lateral stripes across it. By 1998, the respondents began phasing out that star device with lateral stripes and alleged that they stopped using it thereafter. The judgment also recorded sales figures for “BLUE STAR” products in Singapore from 1996 to 2002, showing substantial sales in the earlier years and a decline later. These figures were central to the court’s assessment of whether there had been genuine use in Singapore during the relevant statutory period.
Meanwhile, the applicant’s business history was tied to a “downline” brand strategy within the Giordano group. Giordano International Ltd, domiciled in Bermuda and listed on the Hong Kong Stock Exchange, incorporated Giordano Originals (S) Pte Ltd in Singapore in 1981. In 1999, Giordano International decided to establish a “downline” brand called “Bluestar Exchange”. The applicant was incorporated on 7 July 2000 and began retail operations in Singapore in September 2000, including a store at Jurong Point Shopping Centre.
Crucially, the applicant’s mark was not identical to the respondents’ RTM. The applicant’s original mark was “BLUESTAR” as a single word, with “BLUE” in dark letters and “STAR” in white letters, and with the “A” in “STAR” replaced by a star device. The word “EXCHANGE” appeared in smaller letters below “BLUESTAR”. The applicant later modified its mark slightly, including repositioning the star device to the right of the words and changing letter styling (for example, replacing the white “STAR” lettering with dark letters and adjusting spacing between “BLUE” and “STAR”).
Before commencing business and applying to register its mark in Singapore, Hawthorne Enterprises Ltd (a Bermuda company set up as a holding company for Giordano International’s intellectual property) instructed a search of the Singapore Trade Marks Registry. The applicant relied on the search results to suggest that the RTM was not being used in Singapore. However, the court found the evidence on this point problematic: the search printouts were dated 19 March 2003 and were not the product of the earlier search allegedly conducted before 2001. The court also observed that the applicant’s affidavit evidence gave an impression that there were numerous third-party marks with the combination of “BLUE” and “STAR” and a star device, when the record indicated that most other marks did not share that combination.
After the applicant began selling in Singapore, disputes arose. A customer complaint about a 20% discount voucher for “Blue Star” products led the respondents to discover that the applicant’s Jurong Point outlet was selling clothing bearing “BLUESTAR” or “BLUESTAR EXCHANGE”, mostly with a star device. The respondents then sent a letter of infringement allegations in January 2001. There were subsequent raids and criminal charges under the Trade Marks Act 1998, including charges against a director for consent or connivance. The applicant filed the present originating motion in March 2003 and sought an adjournment of the criminal proceedings pending the outcome. The High Court dismissed the application with costs.
What Were the Key Legal Issues?
The case raised several interrelated revocation issues under the Trade Marks Act (Cap 332, 1992 Ed). First, the applicant argued that the classification for which the RTM was registered was unduly wide. This invoked the statutory power to revoke where the classification is broader than is justified by the manner in which the mark was used or by the goods for which it should properly be protected.
Second, the applicant contended that the RTM should be revoked for lack of distinctive character. Under s 22(2) of the Trade Marks Act (Cap 332, 1992 Ed), revocation could be sought where the mark did not possess the requisite distinctive character at the relevant time or in the relevant sense required by the statute.
Third, the applicant pleaded that the respondents had not made genuine use of the RTM (or a variant that qualifies as use of the registered mark) for a continuous period of five years. This issue engaged s 22(1)(a) of the Trade Marks Act (Cap 332, 1992 Ed), which requires an assessment of whether use was genuine and whether variants used in the market could be treated as use of the registered mark for the statutory purpose.
How Did the Court Analyse the Issues?
Woo Bih Li J approached the revocation application by focusing on the statutory requirements and the quality of the evidence. The court’s analysis was not limited to whether the respondents had used a mark resembling “BLUE STAR”; it required the applicant to show, on the pleaded grounds, that the respondents failed to satisfy the legal thresholds for maintaining the registration. This meant that the applicant had to establish revocation grounds with sufficient factual and legal support, particularly where the respondents’ use was evidenced by sales figures and market activity.
On the applicant’s “unduly wide classification” argument, the court examined the scope of the registration and the relationship between the registered goods and the actual use. While the judgment extract provided does not reproduce the full classification analysis, the court’s overall approach indicates that it required a concrete basis to conclude that the registration was broader than what the respondents’ use justified. In trade mark revocation disputes, classification arguments typically fail where the registered goods are aligned with the goods actually sold under the mark, or where the applicant cannot show that the registration is disproportionate to the use.
The distinctive character issue required the court to consider whether the RTM was capable of distinguishing the respondents’ goods from those of others. The applicant’s position was that the RTM lacked the necessary distinctiveness. However, the court’s reasoning, as reflected in the judgment’s treatment of the parties’ marks and market presence, suggests that the court was not persuaded that the RTM was devoid of distinctive character. The RTM’s combination of a prominent star device and the “BLUE STAR” wording, together with evidence of market use, supported the view that the mark functioned as a badge of origin for the respondents’ goods.
The most significant part of the court’s reasoning concerned genuine use and the effect of variants. The applicant argued that the respondents’ use was insufficient and that changes to the star device meant that the respondents were not using the RTM as registered. The court, however, treated the question as one of whether the respondents used the mark in a manner that could be regarded as use of the registered mark (or a variant that preserves the essential features). The respondents’ evidence showed use from about December 1996, with sales in Singapore across multiple years, and with a star device that changed in styling (notably the lateral stripes) but retained the core “star device” concept associated with “BLUE STAR”.
In assessing genuine use, the court also considered the applicant’s own conduct and evidence. The applicant claimed that it had conducted searches and that inquiries indicated the RTM was not being used in Singapore. The court found the affidavit evidence on those points inadequate and, in some respects, inaccurate. The search printouts were dated 19 March 2003, undermining the claim that they were the results of a pre-2001 search. The court also criticised the impression created by the affidavit that there were numerous third-party marks with the combination of “BLUE” and “STAR” and a star device, when the evidence suggested otherwise. This credibility assessment mattered because revocation applications are fact-intensive and the court expects reliable evidence, particularly when the applicant seeks to displace a registered right.
The court further noted that the applicant’s mark was visually and conceptually related to the respondents’ mark, even if the applicant asserted that the distinctive feature was the large star and that its own mark was sufficiently different. While the court’s extract does not detail the full confusion analysis (that may have been relevant to infringement proceedings rather than revocation per se), the factual overlap reinforced the importance of the respondents’ continued market presence. The respondents’ discovery of the applicant’s discount voucher and the subsequent infringement correspondence and raids demonstrated that the respondents believed their rights were being affected and that the applicant was actively selling goods bearing closely related branding elements.
Finally, the court’s dismissal of the application with costs indicates that the applicant did not meet the burden of proof on the statutory grounds. In revocation proceedings, the court will not revoke a registration merely because the applicant can point to differences between the registered mark and the mark used in the market; it will ask whether the differences are such that the statutory concept of use is not satisfied. Here, the court accepted that the respondents had used the RTM or a qualifying variant during the relevant period and that the other pleaded grounds were not established to the court’s satisfaction.
What Was the Outcome?
The High Court dismissed Bluestar Exchange (Singapore) Pte Ltd’s originating motion to revoke the respondents’ registered trade mark (Registered Trade Mark No. T92/098573C). The court ordered that the application be dismissed with costs.
Practically, the dismissal meant that the respondents’ trade mark registration remained in force. This would have preserved the respondents’ ability to rely on the RTM in any related infringement or enforcement context, including the criminal proceedings that the applicant had sought to adjourn pending the outcome of the revocation application.
Why Does This Case Matter?
This decision is a useful authority for practitioners dealing with revocation applications in Singapore, particularly where the applicant challenges a registration on grounds of unduly wide classification, lack of distinctive character, and failure to show genuine use for the statutory five-year period. The case illustrates that revocation is not a “technical” exercise; it is grounded in statutory thresholds and requires reliable evidence, especially where the respondents can show actual sales and market activity.
From a trade mark strategy perspective, the case highlights the evidential importance of demonstrating genuine use and the treatment of variants. Where a mark is used with stylistic changes, the key question is whether those changes amount to use of the registered mark in substance (or a qualifying variant) rather than a completely different sign. The court’s approach underscores that minor or evolutionary changes to a device or lettering may not defeat a genuine use claim if the essential features remain recognisable.
For law students and litigators, the judgment also demonstrates how credibility and documentary accuracy can influence outcomes. The court’s criticism of the applicant’s search evidence and affidavit statements shows that courts will scrutinise whether the factual basis for revocation is sound. Where the applicant’s evidence is inconsistent or misleading, the court may be less willing to accept the applicant’s narrative about non-use or the absence of distinctive character.
Legislation Referenced
- Trade Marks Act (Cap 332, 1992 Ed) s 22(7)
- Trade Marks Act (Cap 332, 1992 Ed) s 22(2)
- Trade Marks Act (Cap 332, 1992 Ed) s 22(1)(a)
- Trade Marks Act 1998
- UK Trade Marks Act (referenced in the judgment)
Cases Cited
- [2003] SGHC 169 (the present case)
Source Documents
This article analyses [2003] SGHC 169 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.