Case Details
- Citation: [2019] SGIPOS 8
- Court: Intellectual Property Office of Singapore
- Date: 2019-04-10
- Judges: Tan Mei Lin
- Plaintiff/Applicant: N.V. Sumatra Tobacco Trading Company
- Defendant/Opponent: CTBAT International Co. Limited
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2014] SGCA 27, [2019] SGIPOS 8
- Judgment Length: 18 pages, 6,077 words
Summary
This case involves a trade mark opposition between CTBAT International Co. Limited (the "Opponent") and N.V. Sumatra Tobacco Trading Company (the "Applicant"). The Opponent successfully opposed the Applicant's application to register a new trade mark, arguing that the application was made in bad faith. The Intellectual Property Office of Singapore agreed with the Opponent and refused the Applicant's trade mark application.
What Were the Facts of This Case?
The Opponent, CTBAT International Co. Limited, is a joint venture between British American Tobacco (BAT) and the China National Tobacco Corporation (CNTC), two major global tobacco companies. The Applicant, N.V. Sumatra Tobacco Trading Company, is an Indonesian company that manufactures and sells cigarettes and tobacco products.
Prior to the current dispute, the Applicant had registered a trade mark in Singapore known as the "Old Tri-Happiness Mark". However, the Opponent successfully applied to have this mark revoked in 2016. Just nine days after the revocation application was filed, the Applicant filed an application to register a new trade mark, which is the subject of the current opposition.
The new trade mark application, referred to as the "Application Mark", consists of a stylized Chinese character and the words "Prosperity", "Wisdom" and "Longevity" in English. The Applicant described this as an "upgrade" of its previous "Old Tri-Happiness Mark".
What Were the Key Legal Issues?
The sole ground of the Opponent's opposition was that the Applicant's application to register the Application Mark was made in bad faith, contrary to Section 7(6) of the Singapore Trade Marks Act.
The key legal issue was whether the Applicant's actions in applying to register the new trade mark shortly after the Opponent had successfully revoked the Applicant's previous mark amounted to "bad faith" under the law.
How Did the Court Analyse the Issues?
The Hearing Officer, Tan Mei Lin, began by outlining the relevant legal principles on bad faith under Section 7(6) of the Trade Marks Act, based on the Court of Appeal's decision in Valentino Globe BV v Pacific Rim Industries Inc.
The Hearing Officer noted that bad faith encompasses not only actual dishonesty, but also dealings that would be considered commercially unacceptable by reasonable and experienced persons in the trade. The legal burden of proving bad faith lies with the party making the opposition.
In analyzing the facts, the Hearing Officer found that the Applicant's actions in quickly filing the new Application Mark after the Opponent had successfully revoked the Applicant's previous mark were "commercially unacceptable" and demonstrated bad faith.
The Hearing Officer pointed to several factors supporting a finding of bad faith: - The Applicant had not used the previous "Old Tri-Happiness Mark" in Singapore, leading to its revocation. - The Applicant filed the new Application Mark just 9 days after the revocation application was filed, suggesting an intent to circumvent the revocation. - The Applicant described the new mark as an "upgrade" of the previous one, further indicating an attempt to maintain a similar mark after the revocation. - The Applicant's registrations for the previous mark had also been revoked in other jurisdictions at the Opponent's initiative.
Based on these factors, the Hearing Officer concluded that the Applicant's application for the new mark was made in bad faith and should be refused under Section 7(6) of the Act.
What Was the Outcome?
The Hearing Officer ruled in favor of the Opponent, finding that the Applicant's application to register the Application Mark was made in bad faith and should be refused under Section 7(6) of the Trade Marks Act.
Why Does This Case Matter?
This case provides helpful guidance on the application of the bad faith ground for opposing a trade mark registration under Section 7(6) of the Singapore Trade Marks Act. It demonstrates that bad faith can be found not only in cases of actual dishonesty, but also in commercially unacceptable conduct by the applicant.
The decision highlights that a trade mark applicant cannot simply file a new mark as an "upgrade" or replacement for a previously revoked mark, especially where the prior mark was not genuinely used. Such actions are likely to be viewed as an attempt to circumvent the earlier revocation and may be found to constitute bad faith.
This case is a useful precedent for trade mark owners seeking to oppose applications that appear to be made in bad faith, particularly where the applicant has a history of non-use or revocation of prior marks. It reinforces that the bad faith ground can be a powerful tool to prevent the registration of trade marks that are applied for in an abusive or commercially unacceptable manner.
Legislation Referenced
Cases Cited
- [2014] SGCA 27, Valentino Globe BV v Pacific Rim Industries Inc
- [2019] SGIPOS 8, CTBAT International Co. Limited v N.V. Sumatra Tobacco Trading Company
Source Documents
This article analyses [2019] SGIPOS 8 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.