Case Details
- Case Title: Guy Neale and others (suing as a partnership) v Ku De Ta SG Pte Ltd
- Citation: [2011] SGHC 136
- Court: High Court of the Republic of Singapore
- Date of Decision: 26 May 2011
- Case Number: Suit No 955 of 2010 (Summons No 608 of 2011)
- Tribunal/Court: High Court
- Coram: Chew Yi-Ling Elaine AR
- Procedural Context: Application to strike out portions of the Statement of Claim
- Decision Type: Application dismissed
- Plaintiffs/Applicants: Guy Neale and others (suing as a partnership)
- Defendant/Respondent: Ku De Ta SG Pte Ltd
- Counsel for Plaintiffs: Kristy Tan and Sylvia Tee (Allen & Gledhill LLP)
- Counsel for Defendant: Foo Maw Jiun (Rodyk & Davidson LLP)
- Legal Area: Intellectual Property (Trade Marks); Civil Procedure (Striking out pleadings)
- Statutes Referenced: Trade Marks Act (Cap 322, 2005 Rev Ed) (“TMA”); Rules of Court (Cap 322, R 5, 2006 Rev Ed)
- Key Statutory Provisions: s 55 (Protection of well known trade marks); s 55A (Permitted use of well known trade marks); O 18 r 19(1)(a) (striking out); O 18 r 19(1)(a) invoked
- Other Statutory Provision Discussed: s 28 (Acts not amounting to infringement)
- Cases Cited: [2011] SGHC 136 (self-citation in metadata); Davey v Bentinck [1893] 1 QB 185 (as quoted in the judgment extract)
- Judgment Length: 7 pages; 3,515 words
Summary
This High Court decision concerns a procedural application to strike out parts of a trade mark claim. The plaintiffs, a partnership operating the “Ku De Ta” restaurant and bar in Bali, alleged that the defendant, a Singapore company, infringed their rights in the “KU DE TA” mark as a “well known trade mark” protected under s 55 of the Trade Marks Act (Cap 322). The defendant sought to strike out the pleaded cause of action on the basis that s 55A(2) provided a complete defence because the defendant used registered trade marks licensed to it in Singapore.
The court dismissed the striking out application. While the defendant argued that the existence of registered marks and the defendant’s status as a licensed user meant that the plaintiffs could not obtain injunctive relief under s 55, the court held that the defence was not necessarily “unassailable” at the pleading stage. In particular, the court reasoned that the statutory scheme for well known marks must be interpreted consistently with Singapore’s international obligations and the Joint Recommendation Concerning Provisions on the Protection of Well Known Marks (1999). The court also emphasised the high threshold for striking out: only plain and obvious cases should be dealt with summarily where the pleading discloses no cause of action or no question fit for decision.
What Were the Facts of This Case?
The plaintiffs are a partnership that operates a restaurant and bar in Bali known as “Ku De Ta”. The third plaintiff registered the trade mark “KU DE TA” in Indonesia in 2000 and holds proprietorship of that mark on behalf of the partnership. The plaintiffs’ pleaded case was that “Ku de Ta” had become a well known trade mark entitled to protection in Singapore under s 55 of the Trade Marks Act, even if the mark was not registered in Singapore.
The defendant, Ku De Ta SG Pte Ltd, is incorporated in Singapore. In 2010, it opened a restaurant and bar at Marina Bay Sands, also styled “Ku De Ta”. In the course of its business, the defendant used two trade marks incorporating the words “Ku de Ta” (the “Nine Square Registered Marks”). These marks were registered in Singapore in 2004 and 2009 by an Australian company, Nine Squares Pty Ltd (“Nine Squares”).
In 2009, Nine Squares licensed the Nine Square Registered Marks to Chris Au, who was the chief executive officer of the defendant. Chris Au subsequently assigned his rights under the licence to the defendant. Thus, the defendant’s use of the “Ku de Ta” branding in Singapore was supported by licences granted in relation to registered trade marks.
When the plaintiffs became aware of the defendant’s Singapore premises and branding, they commenced an action against the defendant seeking, among other relief, an order that the defendant immediately cease and be restrained from using the name/mark “Ku De Ta” or any similar name/mark. One pleaded cause of action was founded on s 55 of the TMA, alleging that the defendant infringed the plaintiffs’ rights as owners of a well known mark protected under that provision.
What Were the Key Legal Issues?
The primary issue in the striking out application was whether the defendant’s reliance on s 55A(2) could defeat the plaintiffs’ s 55 claim at the pleadings stage. Section 55A(2) provides that, notwithstanding s 55, the proprietor of a well known trade mark shall not be entitled to restrain by injunction the use in Singapore of any registered trade mark in relation to goods or services for which the latter is registered. The defendant’s argument was that because the Nine Square Registered Marks were registered in Singapore and the defendant was a licensed user, the plaintiffs had no reasonable cause of action for injunctive relief under s 55.
Related to this was the question of whether s 55A(2) operates as an absolute bar regardless of the validity of the registered marks. The plaintiffs contended that the defence would not apply where the registered trade marks were liable to be invalidated. They were, in parallel proceedings, seeking invalidation of the Nine Square Registered Marks against Nine Squares. The plaintiffs argued that the availability of the s 55A(2) defence was therefore contingent on the outcome of the invalidation application, which had not yet been determined.
Finally, the court had to consider the procedural threshold for striking out under O 18 r 19(1)(a). Even if the defendant’s substantive arguments appeared strong, the court needed to decide whether this was the kind of “plain and obvious” case that justified summary disposal without a full trial of the relevant legal and factual issues.
How Did the Court Analyse the Issues?
The court began by restating the well-established principle that striking out is an exceptional remedy. It is only in plain and obvious cases that the summary process under O 18 r 19 should be used. The court referred to the general approach that, so long as the statement of claim or particulars disclose some cause of action or raise a question fit to be decided by a judge, the fact that the case is weak or unlikely to succeed is not enough to justify striking out. This framing is significant because it shifts the focus from the merits of the claim to whether the claim is legally and factually arguable.
Against that procedural background, the court addressed the defendant’s substantive interpretation of ss 55 and 55A. The defendant relied on parliamentary materials and the text of s 55A(2) to argue that the plaintiffs could not obtain an injunction against the use of registered marks. The defendant’s position was essentially that the existence of registered marks in Singapore, coupled with the defendant’s licence-based entitlement to use them, provided a complete answer to the plaintiffs’ s 55 claim.
However, the court did not accept that the defence was necessarily complete at the pleading stage. The court examined the legislative purpose behind ss 55 and 55A by looking at parliamentary debates and the explanatory statement to the Trade Mark (Amendment) Bill (No. 18/2004). It found that the provisions were enacted to (i) give protection for well known marks, (ii) implement the United-States Singapore Free Trade Agreement, and (iii) implement the Joint Recommendation Concerning Provisions on the Protection of Well Known Marks (1999). The court treated these materials as illuminating for interpreting the scope and operation of the statutory defences.
In particular, the court reasoned that the Joint Recommendation requires member states to provide certain remedies for conflicts involving well known marks. Article 3 requires protection against conflicting marks, business and domain names at least from the time the mark becomes well known in the member state. Article 4(2) and (3) provide for opposition and invalidation procedures, while Article 4(4) provides a “Prohibition of Use” remedy: the owner of a well known mark is entitled to request prohibition of the use of a conflicting mark by a decision of the competent authority, admissible for at least five years from the time the owner had knowledge of the use of the conflicting mark.
The court found that if the defendant’s literal interpretation were adopted—namely that s 55A(2) prevents the well known mark owner from requesting prohibition by injunction so long as the conflicting mark is registered—then Article 4(4) would be rendered otiose. The court considered that this would be inconsistent with the legislative intent to give effect to the Joint Recommendation. Accordingly, the court held that s 55A(2) could not be said to provide an unassailable defence that automatically defeats a s 55 claim in all circumstances.
The court’s reasoning also connected s 55A to the broader structure of the TMA. It noted that s 55A was meant to render permitted uses of well known trade marks consistent with permitted uses of registered trade marks under s 28. Although the extract provided does not include the full discussion of s 28(3) (the text is truncated), the court’s point was that the statutory scheme should be read harmoniously rather than as creating a rigid and absolute bar that undermines the international protection framework for well known marks.
In practical terms, the court’s analysis supported the plaintiffs’ position that the availability of the s 55A(2) defence could depend on whether the registered marks were vulnerable to invalidation. That is, the plaintiffs’ pleaded case raised triable issues of law and fact, including the proper interpretation of s 55A(2) and the effect of any invalidation proceedings on the defendant’s reliance on the registered marks. Given the high threshold for striking out, the court was not prepared to determine these issues summarily in the defendant’s favour.
What Was the Outcome?
The High Court dismissed the defendant’s application to strike out paragraphs 32 to 35 of the plaintiffs’ Statement of Claim. The court held that the pleadings disclosed questions fit for decision and that the defendant’s reliance on s 55A(2) did not justify summary dismissal as a plain and obvious case.
As a result, the plaintiffs’ s 55 claim—at least as pleaded in the struck paragraphs—remained live for determination at trial or further interlocutory steps. The decision therefore preserved the plaintiffs’ ability to pursue injunctive relief claims under s 55, subject to the court’s ultimate findings on the substantive issues, including the interpretation and application of s 55A(2) in light of the validity of the registered marks.
Why Does This Case Matter?
This case is important for practitioners because it clarifies that s 55A(2) is not necessarily a complete and automatic defence to a s 55 claim at the pleading stage. While s 55A(2) limits injunctive relief against the use of registered trade marks, the court’s interpretive approach indicates that the provision must be understood within the legislative purpose of protecting well known marks and within Singapore’s international commitments under the Joint Recommendation.
From a litigation strategy perspective, the decision underscores the procedural caution required when seeking striking out. Even where a defendant has a seemingly strong statutory defence, the court will resist summary disposal if the claim raises arguable legal questions and triable issues. This is particularly relevant in intellectual property disputes where the validity of registered rights and the scope of statutory exceptions often depend on nuanced factual and legal determinations.
Substantively, the court’s reliance on parliamentary debates and international instruments provides a useful interpretive framework for future cases involving well known marks. Lawyers advising clients on well known mark enforcement should note that the existence of registered marks may not be the end of the inquiry. Where invalidation proceedings are pending or where the statutory scheme’s purpose would be undermined by a rigid reading, courts may be willing to allow the claim to proceed.
Legislation Referenced
- Trade Marks Act (Cap 322, 2005 Rev Ed), s 55 (Protection of well known trade marks)
- Trade Marks Act (Cap 322, 2005 Rev Ed), s 55A (Permitted use of well known trade marks), including s 55A(2)
- Trade Marks Act (Cap 322, 2005 Rev Ed), s 28 (Acts not amounting to infringement)
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), O 18 r 19(1)(a) (striking out pleadings)
Cases Cited
- Davey v Bentinck [1893] 1 Q.B. 185
Source Documents
This article analyses [2011] SGHC 136 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.