Case Details
- Citation: [2025] SGIPOS 2
- Court: Intellectual Property Office of Singapore
- Date: 2025-04-04
- Judges: Principal Assistant Registrar Ong Sheng Li, Gabriel
- Plaintiff/Applicant: Chua Beng Hock
- Defendant/Respondent: FM Skincare Pte Ltd
- Legal Areas: Trade marks and trade names – Opposition to Registration and Invalidation
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2018] SGHC 52, [2020] SGHC 77, [2025] SGIPOS 2
- Judgment Length: 51 pages, 14,141 words
Summary
This case involves a dispute between two brothers, Chua Beng Hock ("Adam") and Chua Beng Hwa ("Chris"), over the right to register two trade marks containing the term "faceofman". Adam, the plaintiff, claimed that he had built up goodwill in the "Face of Man" business and therefore had the right to prevent the registration of the marks by FM Skincare Pte Ltd, a company in which Chris is a director and shareholder. The Intellectual Property Office of Singapore had to determine whether Adam could succeed on grounds of passing off, bad faith, or well-known trade mark protection to block the registration of the marks.
What Were the Facts of This Case?
In the 1990s, Adam and Chris became partners in a business operating a men's skincare salon in Singapore known as "Face of Man". Over the years, the "Face of Man" business evolved in different ways. Adam claimed that he was primarily responsible for building up the goodwill in the business, while the defendant company, FM Skincare Pte Ltd, argued that it (either directly or through its predecessors) had been actively using and controlling the various "Face of Man" trade marks.
In 2021, FM Skincare Pte Ltd filed applications to register two trade marks containing the term "faceofman" - a composite mark and a word mark. Adam opposed the registration of the composite mark and later applied for a declaration of invalidity in respect of the registered word mark. The key issues were whether Adam could succeed on grounds of passing off, bad faith, or well-known trade mark protection to prevent the registration of the marks.
What Were the Key Legal Issues?
The main legal issues in this case were:
- Whether Adam could establish that he had the requisite goodwill in the "Face of Man" business to succeed in a passing off claim against FM Skincare Pte Ltd's registration of the trade marks.
- Whether FM Skincare Pte Ltd had applied for the trade marks in bad faith.
- Whether the "Face of Man" trade marks were well-known to the relevant sector of the public in Singapore, such that Adam could rely on the well-known trade marks provision to invalidate the registration of the word mark.
- Whether Adam could rely on copyright in an artistic work to oppose the registration of the composite mark.
How Did the Court Analyse the Issues?
On the passing off claim, the court examined the evidence to determine who owned the goodwill in the "Face of Man" business. The court noted that while Adam was a co-founder and had been involved in the business for many years, the evidence suggested that the goodwill was owned by the various entities that had operated the "Face of Man" business over time, rather than by Adam personally. The court also observed that Adam could not rely on the goodwill of his former company, Face of Man Pte Ltd, as he was no longer associated with that entity.
Regarding the bad faith claim, the court found that there was no evidence that FM Skincare Pte Ltd had applied for the trade marks in bad faith. The court noted that the company had a legitimate interest in protecting its use of the "Face of Man" branding, which it had acquired through its predecessors.
On the well-known trade marks issue, the court examined the evidence provided by Adam and FM Skincare Pte Ltd. While Adam provided some evidence of the "Face of Man" brand's recognition, the court found that this was not sufficient to establish that the marks were well-known to the relevant sector of the public in Singapore.
Finally, on the copyright claim, the court found that Adam had not proven ownership of the copyright in the artistic work that he claimed was infringed by the composite mark. The evidence showed that the work was designed by an external design studio, not by Adam.
What Was the Outcome?
The court dismissed Adam's opposition to the registration of the composite mark and his application for a declaration of invalidity in respect of the registered word mark. The court found that Adam had failed to establish the necessary grounds to prevent the registration of the trade marks by FM Skincare Pte Ltd.
Why Does This Case Matter?
This case provides valuable guidance on the requirements for establishing passing off, bad faith, and well-known trade mark protection in the context of trade mark disputes. It highlights the importance of carefully documenting and preserving evidence of goodwill and brand recognition, especially when there are disputes between parties with a history of joint business ventures.
The case also underscores the challenges that can arise when individuals who were previously involved in a business attempt to assert rights over trade marks or other intellectual property that they claim to have developed, even after they have left the business. The court's analysis of the ownership of goodwill and the need for clear evidence of well-known status will be relevant to practitioners advising clients in similar situations.
Legislation Referenced
- Trade Marks Act
- Trade Marks Act 1998
Cases Cited
- [2018] SGHC 52
- [2020] SGHC 77
- [2025] SGIPOS 2
Source Documents
This article analyses [2025] SGIPOS 2 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.