Case Details
- Citation: [2020] SGIPOS 14
- Court: Intellectual Property Office of Singapore
- Date: 2020-12-30
- Judges: Cheng Pei Feng
- Plaintiff/Applicant: Charlotte Pipe and Foundry Company
- Defendant/Respondent: YITAI (SHANGHAI) PLASTIC CO., LTD.
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2015] SGCA 56, [2015] SGHC 263, [2017] SGCA 30, [2017] SGIPOS 11, [2018] SGIPOS 15, [2018] SGIPOS 12, [2019] SGIPOS 16, [2020] SGCA 103, [2020] SGIPOS 14
- Judgment Length: 23 pages, 10,903 words
Summary
This case involved a trade mark opposition between an American pipe manufacturing company, Charlotte Pipe and Foundry Company, and a Chinese company, YITAI (SHANGHAI) PLASTIC CO., LTD. The American company opposed the Chinese company's application to register a similar trade mark in Singapore, arguing that it would cause confusion with the American company's existing trade marks. The key issues were whether the Chinese company's mark was confusingly similar to the American company's registered and unregistered marks, and whether the American company had sufficient rights in its unregistered marks to rely on them in the opposition.
What Were the Facts of This Case?
Charlotte Pipe and Foundry Company ("the Opponent") is an American company that was founded in 1901 and manufactures pipes and fittings for plumbing and industrial systems. It claims to be one of the world's leading manufacturers in this field, with a global presence including sales and distribution in Singapore. The Opponent is the registered proprietor of a trade mark in Singapore consisting of the word "CHARLOTTE PIPE" with a device element.
YITAI (SHANGHAI) PLASTIC CO., LTD. ("the Applicant") is a Chinese company established in 2001 that manufactures and supplies plastic valves, fittings, and industrial piping systems. The Applicant filed an application to register the trade mark " " in Singapore, covering goods in Classes 17, 19, and 20 related to pipes and fittings.
The Opponent opposed the Applicant's trade mark application, relying on its registered trade mark as well as various unregistered "CHARLOTTE PIPE" marks that it claimed to own. The key dispute was whether the Applicant's mark was confusingly similar to the Opponent's marks.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Applicant's trade mark " " was identical or similar to the Opponent's registered trade mark and unregistered "CHARLOTTE PIPE" marks, such that its registration would be contrary to Section 8(2)(b) of the Trade Marks Act.
- Whether the Applicant's trade mark would be prevented from registration under Section 8(4)(b)(i) read with Section 8(4)(a) of the Trade Marks Act, on the basis that it is identical or similar to the Opponent's earlier unregistered "CHARLOTTE PIPE" marks in which the Opponent has goodwill.
- Whether the Applicant's trade mark application should be refused under Section 8(7)(a) of the Trade Marks Act, on the basis that its use would be liable to be prevented by the law of passing off.
- Whether the Opponent was entitled to rely on its unregistered "CHARLOTTE PIPE" marks in this opposition, given that they were not explicitly mentioned in the Grounds of Opposition.
How Did the Court Analyse the Issues?
On the preliminary issue of whether the Opponent could rely on its unregistered "CHARLOTTE PIPE" marks, the Hearing Officer found that the Opponent's Grounds of Opposition did refer generally to its common law rights in the "CHARLOTTE PIPE" trade mark, without confining it only to the registered mark. While the pleadings could have been more specific, the Hearing Officer held that the Opponent was not limited to relying only on its registered mark, and that the unregistered marks were sufficiently covered by the pleadings.
On the substantive issues, the Hearing Officer conducted a detailed comparison of the Applicant's mark " " and the Opponent's registered and unregistered "CHARLOTTE PIPE" marks. The Hearing Officer found that the marks were visually, aurally, and conceptually similar, with the dominant and distinctive element being the words "CHARLOTTE PIPE".
The Hearing Officer also found that the Opponent had established goodwill in its unregistered "CHARLOTTE PIPE" marks through its long history, global presence, and sales in Singapore. As such, the use of the Applicant's similar mark would be liable to be prevented by the law of passing off under Section 8(7)(a).
In considering the issue under Section 8(4), the Hearing Officer found that the Opponent's unregistered "CHARLOTTE PIPE" marks were well-known to the relevant sector of the public in Singapore, and that the use of the Applicant's similar mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Opponent's marks.
What Was the Outcome?
The Hearing Officer ultimately allowed the Opponent's opposition and refused the registration of the Applicant's trade mark " ". The Applicant's trade mark application was found to be contrary to Sections 8(2)(b), 8(4)(b)(i) read with 8(4)(a), and 8(7)(a) of the Trade Marks Act.
Why Does This Case Matter?
This case is significant for a few reasons:
Firstly, it demonstrates the importance of well-pleaded grounds of opposition. While the Hearing Officer was willing to allow the Opponent to rely on its unregistered "CHARLOTTE PIPE" marks, the Opponent could have strengthened its case by more explicitly referencing these marks in its initial Grounds of Opposition.
Secondly, the case highlights the ability of a party to rely on unregistered trade marks in opposition proceedings, provided that sufficient evidence is adduced to establish goodwill and reputation in those marks. This can be a useful tool for brand owners who have not registered all of their trade marks.
Finally, the case provides guidance on the assessment of similarity between marks, and the factors that can lead to a finding of likelihood of confusion or passing off, even where the marks are not identical. This is particularly relevant for trade mark practitioners advising clients on the registrability of new marks.
Legislation Referenced
Cases Cited
- [2015] SGCA 56
- [2015] SGHC 263
- [2017] SGCA 30
- [2017] SGIPOS 11
- [2018] SGIPOS 15
- [2018] SGIPOS 12
- [2019] SGIPOS 16
- [2020] SGCA 103
- [2020] SGIPOS 14
Source Documents
This article analyses [2020] SGIPOS 14 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.