Case Details
- Citation: [2021] SGHC 165
- Title: Digi International Inc. v Teraoka Seiko Co., Ltd
- Court: High Court of the Republic of Singapore (General Division)
- Tribunal Appeal No.: Tribunal Appeal No 7 of 2020
- Date of Decision: 2 July 2021
- Hearing Dates: 18 January 2021 and 15 March 2021
- Judges: Dedar Singh Gill J
- Procedural Posture: Cross-appeal from the Intellectual Property Adjudicator’s decision dated 2 August 2019 in Digi International Inc. v Teraoka Seiko Co., Ltd [2020] SGIPOS 1
- Plaintiff/Applicant (Appellant): Digi International Inc.
- Defendant/Respondent (Respondent): Teraoka Seiko Co., Ltd
- Legal Area: Intellectual Property — Trade marks and trade names
- Core Statutory Framework: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), including ss 8(2)(b), 8(4)(b)(i) read with 8(4)(a), 8(7)(a), 8(9), and 7(6)
- Trade Mark at Issue: Trade Mark No. (“SGTM No.”) 40201700142X1 (“the Application Mark”) sought for registration under International Registration No. (“IR No.”) 1326111
- Classes / Specification: Classes 9, 38 and 42 (specification set out in Annex 1; full wording not reproduced in the extract)
- Decision Below: Adjudicator refused registration based on successful opposition under ss 8(2)(b), 8(4)(b)(i) read with 8(4)(a), and 8(7)(a); dismissed opposition under s 7(6)
- Appeal Focus: Appellant appealed the refusal under s 8; Respondent cross-appealed the dismissal of its s 7(6) ground
- Judgment Length: 121 pages; 32,079 words
- Cases Cited: [2020] SGIPOS 1; [2021] SGHC 165
Summary
This High Court decision concerns a trade mark registration dispute in Singapore involving the word “DIGI”. Digi International Inc. (“Digi”) appealed against the Intellectual Property Adjudicator’s refusal to register Digi’s Application Mark under International Registration No. 1326111. The Adjudicator had allowed the respondent, Teraoka Seiko Co., Ltd (“Teraoka”), to oppose registration on multiple grounds under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), including sections addressing (i) marks that are likely to cause confusion, (ii) marks that are likely to be refused due to earlier rights and/or goodwill-based protection, and (iii) marks applied for in circumstances that engage the “bad faith”/unfairness concept captured by s 8(7)(a). The High Court also dealt with a cross-appeal by Teraoka relating to the Adjudicator’s dismissal of a ground under s 7(6).
The High Court’s analysis turned on the interaction between (a) the parties’ long-running “DIGI” branding conflict, (b) the existence of a 2002 settlement agreement that demarcated the scope of goods and services each party could pursue, and (c) the statutory tests for refusal and opposition under the TMA. Central to the appeal was whether the 2002 co-existence agreement could amount to “consent” under s 8(9) of the TMA, and whether the Application Mark should be refused under s 8(2)(b) for lack of distinctiveness and/or likelihood of confusion.
Ultimately, the High Court upheld the Adjudicator’s refusal (subject to the precise disposition of the cross-appeal), confirming that co-existence arrangements do not automatically neutralise statutory refusal grounds. The court emphasised that the statutory inquiry remains anchored in the legal tests for confusion, similarity of marks and goods, and the protection of goodwill, rather than being resolved solely by contractual understandings between parties.
What Were the Facts of This Case?
Digi International Inc. is a US-headquartered company established in 1985 (originally as “Digiboard Inc.”) and renamed in 1994 to reflect its expanding business. Digi’s business focus is on connecting devices and enabling machine-to-machine (“M2M”) communications and remote monitoring. Its products include computer hardware such as cellular routers, gateways, wireless communication adapters, serial servers, intelligent console servers, and electronic sensors and cameras that collect and transmit data to host or remote systems. Digi also sells products to original equipment manufacturers (“OEMs”) who incorporate Digi components into products sold under other brands. While Digi does not claim to manufacture scales, weighing devices or printers, it has a substantial footprint internationally, including offices and distributors across many jurisdictions.
In Singapore, Digi owns a portfolio of trade mark registrations featuring “DIGI” or variations. These include multiple Class 9 registrations and international registrations designating Singapore, with validity periods spanning from the late 1990s through the 2010s and beyond. Collectively, these are referred to in the judgment as the Appellant’s “DIGI-related Marks (Singapore)”. The record also indicates that Digi’s branding has been used in Singapore in connection with its technology and hardware offerings, although the extract does not reproduce the full evidence of use.
Teraoka Seiko Co., Ltd is a Japan-based company founded in 1934. It began selling electronic scales named “DIGI” in 1971 and exported them from the same year. By the late 1980s, it had production bases in Singapore, China and the UK. Teraoka’s current product range includes point-of-sale (“POS”) equipment, scales, labellers, sorting machines and systems, vending machines, and cloud/server systems. Its Singapore subsidiary serves as a regional marketing centre for South East Asia. Teraoka is the proprietor of the Respondent’s Mark (Singapore), registered in Class 9 for “balance and scale, scale equipped with printer, printer” since 18 December 1986, and it has used the “DIGI” mark for scales and measuring equipment and related goods and services since at least April 1987.
The parties’ relationship is marked by prior disputes and a settlement. In 2002, Digi and Teraoka entered into a settlement agreement (“the 2002 Agreement”) arising from a German trade mark dispute. Digi had opposed Teraoka’s application to register a mark identical to Teraoka’s “DIGI” mark in Germany, relying on Digi’s earlier German registration. Teraoka responded by seeking cancellation of Digi’s German registration on the basis of its own earlier “DIGI” word mark. The parties ultimately settled: they withdrew their oppositions and cancellation actions, and agreed not to oppose each other’s registrations, renewals and/or use of their marks covered by the agreement, provided each party stayed within a demarcated scope of goods and services specified in the 2002 Agreement. The High Court had to consider whether this co-existence arrangement could be treated as “consent” for the purposes of s 8(9) of the TMA.
What Were the Key Legal Issues?
The High Court identified several interlocking issues. First, it had to determine whether the Application Mark should be registered under s 8(9) of the TMA. This required the court to consider whether the 2002 Agreement, described as a co-existence arrangement, constituted “consent” to registration in the statutory sense, and if so, how that consent affected the refusal grounds relied upon by Teraoka.
Second, the court had to decide whether the opposition ground under s 8(2)(b) was made out. This involved evaluating whether the Application Mark and the respondent’s earlier mark(s) were similar, whether the goods and services were similar (including as specified in the Nice classes), and whether there was a likelihood of confusion among the relevant public. The judgment’s structure indicates that the court examined visual, aural and conceptual similarity, as well as the practical context of purchase and the nature of the goods.
Third, the court addressed additional grounds beyond s 8(2)(b), including whether Teraoka could rely on s 8(7)(a) (which, in trade mark disputes, is commonly associated with applications made in bad faith or otherwise in circumstances that engage the statutory protection of honest commercial conduct). The judgment also references s 8(4)(b)(i) read with s 8(4)(a), and s 7(6), indicating that the court considered whether the statutory conditions for refusal based on earlier rights, goodwill, and/or passing off-like principles were satisfied.
How Did the Court Analyse the Issues?
The court’s analysis began with the statutory architecture of the TMA. Trade mark refusal and opposition under the TMA is not a purely contractual exercise; it is a legal inquiry governed by the specific elements of each section. Accordingly, even where parties have entered into a settlement or co-existence agreement, the court must still apply the statutory tests for similarity and confusion, and for any additional grounds such as goodwill protection or bad faith. This approach is reflected in the judgment’s focus on s 8(9) (consent) and the separate, structured analysis under s 8(2)(b) and other provisions.
On s 8(9), the court considered whether the 2002 Agreement amounted to consent to the registration of the Application Mark. The extract indicates that the issue was framed as whether a co-existence agreement constitutes consent under s 8(9). The court’s reasoning (as reflected by the judgment’s headings) suggests that it treated “consent” as a legally meaningful concept rather than a broad notion of tolerance. In other words, the court would not automatically infer that any agreement to “co-exist” in general terms negates statutory refusal grounds. Instead, it would examine the scope of the agreement, what it covered, and whether it addressed the specific registration sought and the relevant goods/services overlap.
For the s 8(2)(b) analysis, the court applied the familiar multi-step approach: (i) compare the marks, (ii) compare the goods/services, and (iii) assess likelihood of confusion. The judgment’s headings show that it analysed the marks’ similarity through visual, aural and conceptual lenses. It also considered inherent distinctiveness and acquired distinctiveness of the respondent’s mark (Singapore), including whether “DIGI” was inherently distinctive in the relevant context and whether the respondent’s use had led to acquired distinctiveness. This matters because the strength of the earlier mark influences the likelihood of confusion assessment.
In addition, the court compared the specifications of goods and services across Nice classes. The headings indicate that it examined overlaps such as Class 9 versus Class 9, and Class 38 and Class 42 versus Class 9. The court therefore treated the specification comparison as a legal exercise based on the registered and applied-for descriptions, not merely on how the parties actually market their products. The court’s conclusion on goods and services similarity then fed into the overall confusion analysis.
The likelihood of confusion assessment also considered contextual factors. The judgment headings refer to “mode of purchase” and “nature of goods”, which are relevant because confusion is assessed from the perspective of the relevant public in the real-world buying environment. The court also addressed the relevance of an Australian Registrar’s decision, suggesting that comparative administrative reasoning from another jurisdiction was considered but not determinative. Most importantly, the court examined the relevance of co-existence of the appellant’s “DIGI” related marks in Singapore, the appellant’s other marks around the world, and the Application Mark in overlapping territories. This indicates that the court considered whether the market had already accommodated multiple “DIGI” marks, and whether that reduced confusion risk.
On the s 8(7)(a) ground, the court turned to goodwill and misrepresentation concepts. The headings show that it analysed goodwill, misrepresentation, likelihood of confusion among the relevant public, relevance of registration and use of the appellant’s “DIGI” marks in Singapore, and damage. This reflects a trade mark refusal ground that is closely aligned with passing off principles: the court would consider whether the Application Mark would misrepresent trade origin or business connection, whether the respondent had goodwill, and whether damage was likely. The court’s approach underscores that trade mark law in Singapore protects not only registered rights but also the commercial reputation and goodwill that underpin consumer expectations.
Finally, the court also addressed s 8(4)(b)(i) read with s 8(4)(a) and s 7(6). While the extract does not provide the full reasoning, the headings indicate that these grounds were treated as separate legal bases with their own requirements. The court’s overall method was to ensure that each statutory ground was satisfied on its own terms, while also recognising that evidence relevant to one ground (such as similarity and confusion, or the strength of goodwill) may overlap with evidence relevant to another.
What Was the Outcome?
The High Court dismissed Digi’s appeal against the Adjudicator’s refusal of the Application Mark under the relevant s 8 grounds. In doing so, the court affirmed that the statutory refusal framework under the TMA remains decisive even where parties have previously agreed to co-exist. The court’s treatment of the 2002 Agreement clarified that co-existence does not automatically equate to legally effective consent under s 8(9) for the purposes of registration.
As for the cross-appeal, the High Court addressed Teraoka’s challenge to the Adjudicator’s dismissal of the s 7(6) ground. The practical effect of the decision is that the Application Mark remained refused in Singapore, and the respondent’s opposition succeeded on the statutory bases found by the court to be made out.
Why Does This Case Matter?
This case is significant for practitioners because it illustrates how Singapore courts approach “consent” and co-existence agreements in trade mark disputes. Parties often settle earlier conflicts and assume that a settlement will prevent later registration problems. The decision signals that such assumptions are risky: contractual co-existence may be relevant evidence, but it does not necessarily satisfy the statutory concept of consent under s 8(9). Lawyers should therefore draft settlement agreements with careful attention to scope, goods/services demarcation, and any express references to future registrations and specific classes or territories.
More broadly, the judgment provides a structured and detailed application of the s 8(2)(b) confusion analysis. It demonstrates that courts will scrutinise (i) inherent and acquired distinctiveness, (ii) similarity of marks across visual, aural and conceptual dimensions, and (iii) similarity of goods/services based on the legal specifications. It also confirms that market context—such as mode of purchase and the nature of the goods—can influence the confusion assessment, while foreign administrative decisions (such as an Australian Registrar’s decision) may be considered but will not override Singapore’s statutory tests.
Finally, the case is useful for understanding how goodwill and misrepresentation-like reasoning can be integrated into trade mark opposition grounds. Practitioners advising brand owners should treat the “DIGI” dispute as a reminder that even where a word mark is shared or co-used, the legal question is whether the statutory conditions for refusal are met, including whether consumers are likely to be misled as to origin or business connection.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) — sections 7(6), 8(2)(b), 8(4)(a), 8(4)(b)(i), 8(7)(a), and 8(9)
Cases Cited
- Digi International Inc. v Teraoka Seiko Co., Ltd [2020] SGIPOS 1
- Digi International Inc. v Teraoka Seiko Co., Ltd [2021] SGHC 165
Source Documents
This article analyses [2021] SGHC 165 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.