Case Details
- Citation: [2020] SGIPOS 10
- Court: Intellectual Property Office of Singapore
- Date: 2020-09-09
- Judges: Mr Mark Lim, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Keep Waddling International Pte. Ltd.
- Defendant/Opponent: (1) Comité Interprofessionnel du Vin de Champagne, and (2) Institut National de l'Origine et de la Qualité
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Geographical Indications Act, Trade Marks Act
- Cases Cited: [2015] SGIPOS 14, [2016] SGCA 25, [2017] SGIPOS 1625, [2017] SGIPOS 18, [2020] SGIPOS 10
- Judgment Length: 20 pages, 9,007 words
Summary
This case involves a trade mark opposition filed by the Comité Interprofessionnel du Vin de Champagne and the Institut National de l'Origine et de la Qualité (the "Opponents") against the registration of the trade mark "CHAMPENG" by Keep Waddling International Pte. Ltd. (the "Applicant"). The Opponents argued that the use of the "CHAMPENG" mark would be deceptive, violate the Geographical Indications Act, constitute passing off, and be made in bad faith. The Intellectual Property Office of Singapore (IPOS) ultimately found that the Opponents succeeded on the ground of bad faith, but failed on the other three grounds of opposition.
What Were the Facts of This Case?
The Applicant, Keep Waddling International Pte. Ltd., applied to register the trade mark "CHAMPENG" in Class 33 for "Sparkling wines, all originating from Chile." The Opponents, the Comité Interprofessionnel du Vin de Champagne and the Institut National de l'Origine et de la Qualité, filed an opposition against the registration of this mark.
The Applicant and its related companies have been using the trade mark "PENGWINE" as their house mark for their wines originating from Chile since April 2004. The "PENGWINE" house mark was named after the Chilean penguins, and each of the PENGWINE-branded wines is named after a different penguin native to South America.
The Opponents are French organizations responsible for representing the interests of operators in the Champagne region and protecting the "CHAMPAGNE" geographical indication worldwide. The "CHAMPAGNE" geographical indication refers to wine produced in accordance with detailed production requirements in the Champagne region of France. Champagne has been exported globally since 1814 and has achieved significant sales and marketing success worldwide, including in Singapore.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the "CHAMPENG" mark is deceptive under Section 7(4)(b) of the Trade Marks Act.
- Whether the use of the "CHAMPENG" mark would violate the Geographical Indications Act.
- Whether the use of the "CHAMPENG" mark would constitute the tort of passing off.
- Whether the "CHAMPENG" mark was applied for in bad faith.
How Did the Court Analyse the Issues?
The IPOS hearing officer, Mr. Mark Lim, first set out the applicable legal principles for assessing deceptiveness under Section 7(4)(b) of the Trade Marks Act. He noted that deceptiveness must be inherent in the mark itself, and the relevant "public" is the public in the general context of the relevant trade, not the general public. Factors to consider include the nature of the mark, the nature of the goods, the connection between the geographic reference and the goods, the knowledge and characteristics of the relevant public, and trade/industry practice.
Applying these principles, the hearing officer found that the "CHAMPENG" mark was not inherently deceptive. While there was a similarity between "CHAMPENG" and the protected "CHAMPAGNE" geographical indication, the hearing officer held that this did not necessarily lead to a real, tangible danger of deception. He noted that the Applicant's wines were clearly labeled as originating from Chile, and the public would be reasonably observant and circumspect in this context.
On the issue of violation of the Geographical Indications Act, the hearing officer found that the Act was not applicable, as the relevant law was the Trade Marks Act. He held that the use of "CHAMPENG" would not violate the Geographical Indications Act.
Regarding passing off, the hearing officer applied the classic three-part test and found that the Opponents had failed to establish the necessary goodwill, misrepresentation, and damage.
However, the hearing officer did find that the Applicant had applied for the "CHAMPENG" mark in bad faith. He noted that the Applicant was clearly aware of the reputation and protection of the "CHAMPAGNE" geographical indication, and that the adoption of a highly similar mark was an attempt to ride on the coat-tails of this reputation. This was sufficient to prevent the registration of the "CHAMPENG" mark.
What Was the Outcome?
The IPOS hearing officer found that the Opponents succeeded on the ground of bad faith, but failed on the other three grounds of opposition (deceptiveness, violation of the Geographical Indications Act, and passing off). As the finding of bad faith was sufficient to prevent the registration of the "CHAMPENG" mark, the application was ultimately rejected.
Why Does This Case Matter?
This case provides important guidance on the application of the deceptiveness ground for opposing trade mark registrations under Section 7(4)(b) of the Trade Marks Act. It clarifies that the relevant "public" is the public in the general context of the relevant trade, and that the deceptiveness must be inherent in the mark itself, rather than arising from similarity to another mark or geographical indication.
The case also highlights the significance of the bad faith ground for opposing trade mark registrations. Even where other grounds of opposition may fail, a finding of bad faith in the application of a mark can be sufficient to prevent its registration. This underscores the importance for trade mark applicants to act in good faith and avoid attempts to unfairly capitalize on the reputation of existing marks or geographical indications.
Overall, this decision provides valuable insights for trade mark practitioners on the nuances of trade mark opposition proceedings and the factors that can lead to the successful or unsuccessful opposition of a trade mark application.
Legislation Referenced
Cases Cited
- [2015] SGIPOS 14
- [2016] SGCA 25
- [2017] SGIPOS 1625
- [2017] SGIPOS 18
- [2020] SGIPOS 10
- Scotch Whisky Association v Isetan Mitsukoshi Ltd [2020] 3 SLR 725
- Starbucks Corporation v Morinaga Nyugyo Kabushiki Kaisha [2017] SGIPOS 18
Source Documents
This article analyses [2020] SGIPOS 10 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.