Case Details
- Citation: [2018] SGIPOS 6
- Court: Intellectual Property Office of Singapore
- Date: 2018-03-27
- Judges: Ong Sheng Li, Gabriel, Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Inner Mongolia Little Sheep Catering Chain Co Ltd
- Defendant/Respondent: Grassland Xiao Fei Yang Pte Ltd
- Legal Areas: Trade marks and trade names – Declaration of invalidity
- Statutes Referenced: The Applicant relies on the following provisions of the Trade Marks Act
- Cases Cited: [2011] SGIPOS 2, [2014] SGIPOS 2, [2016] SGIPOS 10
- Judgment Length: 16 pages, 7,362 words
Summary
This case involves a dispute over the registration of a trade mark between two companies operating in the hotpot restaurant business. The Applicant, Inner Mongolia Little Sheep Catering Chain Co Ltd, sought to have the registered trade mark "XIAO FEI YANG" owned by the Registrant, Grassland Xiao Fei Yang Pte Ltd, declared invalid. The key issue was whether the Registrant's registration of the English transliteration of the Applicant's Chinese character trade marks was valid, given the Applicant's prior rights.
What Were the Facts of This Case?
The Applicant, Inner Mongolia Little Sheep Catering Chain Co Ltd, is a Chinese company that operates a successful chain of hotpot restaurants. It owns several registered trade marks incorporating the Chinese characters "小肥羊" (meaning "little fat sheep") and the English words "Little Sheep". The Applicant does not operate any restaurants in Singapore but does sell its hotpot soup base in local supermarkets.
The Registrant, Grassland Xiao Fei Yang Pte Ltd, is a Singaporean company that operates a hotpot restaurant in Geylang, Singapore called "Grassland Xiao Fei Yang" or "草原小肥羊". The Registrant had registered the trade mark "XIAO FEI YANG" in 2009.
In 2012, the Applicant opposed the Registrant's application to register the trade mark "草原小肥羊" in Singapore, arguing that it was confusingly similar to the Applicant's prior registered marks. During that opposition proceeding, the Applicant obtained a private investigator's report indicating that the Registrant's restaurant was associated with the Applicant's brand and that the Registrant had applied for its trade mark in bad faith.
What Were the Key Legal Issues?
The key legal issue in this case was whether the Registrant's registered trade mark "XIAO FEI YANG" should be declared invalid, given the Applicant's prior registered trade marks incorporating the Chinese characters "小肥羊" and the English words "Little Sheep".
The Applicant argued that the Registrant's trade mark was confusingly similar to its own marks and that the Registrant had applied for it in bad faith, knowing of the Applicant's reputation and business.
How Did the Court Analyse the Issues?
The Hearing Officer first examined the Applicant's registered trade marks, noting that they pre-dated the Registrant's mark and were not challenged for validity. The Hearing Officer then considered whether the Registrant's "XIAO FEI YANG" mark was confusingly similar to the Applicant's marks.
The Hearing Officer acknowledged that the Registrant's mark was the English transliteration of the Chinese characters used in the Applicant's marks. However, the Hearing Officer found that the marks were not confusingly similar, as the Applicant's marks also prominently featured the English words "Little Sheep" which were absent from the Registrant's mark.
The Hearing Officer then turned to the issue of bad faith. Based on the private investigator's report, the Hearing Officer found that the Registrant was aware of the Applicant's reputation and business when it applied for its trade mark. The Hearing Officer concluded that the Registrant had applied for its mark in bad faith, with the intention of trading off the Applicant's goodwill.
What Was the Outcome?
The Hearing Officer declared the Registrant's trade mark "XIAO FEI YANG" invalid on the grounds that it had been applied for in bad faith. The Hearing Officer ordered the Registrant to pay the Applicant's costs.
Why Does This Case Matter?
This case provides guidance on the circumstances in which the English transliteration of a trade mark owner's Chinese character marks may be considered confusingly similar or applied for in bad faith. The decision highlights that even if the transliteration is not identical to the Chinese character marks, it may still be found invalid if the surrounding circumstances indicate the applicant acted in bad faith.
The case is also noteworthy for the Hearing Officer's reliance on a private investigator's report to establish the Registrant's knowledge and intent, demonstrating the evidentiary value of such investigative findings in trade mark disputes.
More broadly, the case underscores the importance for trade mark owners, especially those with a significant presence in China, to carefully monitor the registration and use of their marks (including transliterations) in other jurisdictions to prevent potential misappropriation by third parties.
Legislation Referenced
Cases Cited
- [2011] SGIPOS 2
- [2014] SGIPOS 2
- [2016] SGIPOS 10
Source Documents
This article analyses [2018] SGIPOS 6 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.