Case Details
- Citation: [2018] SGIPOS 19
- Court: Intellectual Property Office of Singapore
- Date: 2018-11-16
- Judges: Cheng Pei Feng
- Plaintiff/Applicant: IPOS: United U-LI Projects Pte Ltd
- Defendant/Respondent: Tan Buck Hai
- Legal Areas: Trade marks and trade names – Declaration of Invalidity
- Statutes Referenced: Oaths and Declarations Act, The Applicants pleaded four main grounds of invalidation in the Trade Marks Act, Trade Marks Act, UK Trade Marks Act
- Cases Cited: [2016] SGCA 33, [2017] SGIPOS 14, [2018] SGIPOS 19
- Judgment Length: 17 pages, 7,918 words
Summary
This case involves a dispute over a trade mark registration for the sign "U-LI" between two parties - IPOS: United U-LI Projects Pte Ltd (the Applicant) and Tan Buck Hai (the Respondent). The Applicant applied for a declaration of invalidity of the Respondent's registered trade mark, arguing that it was confusingly similar to the Applicant's earlier trade marks. The Intellectual Property Office of Singapore (IPOS) ultimately dismissed the Applicant's grounds for invalidation, finding that the Respondent's trade mark registration was valid.
What Were the Facts of This Case?
The "U-LI" mark originated from a Malaysian company, United U-LI (M) Sdn Bhd, which is the registered proprietor of the "U-LI" trade mark in Malaysia. United U-LI (M) Sdn Bhd is a wholly owned subsidiary of United U-LI Corporation Bhd, a public-listed company in Malaysia and the holding company of the U-LI group of companies.
The Respondent, Tan Buck Hai, first approached the Malaysian manufacturer in 1993 to introduce, promote and distribute the U-LI products in Singapore. At the time, the Respondent was an employee of a company called Choo Chiang Marketing Pte Ltd, which was later replaced by Chastan Pte Ltd in 1994. The Respondent later set up U-LI Marketing in October 2003, which then took over the sale and distribution of the U-LI products in Singapore.
In March 2009, Ng Chay Hoe, who was previously a director and shareholder of U-LI Marketing, resigned from U-LI Marketing after incorporating the Applicant company, United U-LI Projects Pte Ltd. According to the evidence, as part of the U-LI Group's organizational restructuring in around 2009, it was decided that the Applicant would focus on developer's projects while U-LI Marketing would focus on the dealer market in Singapore.
The Respondent registered the trade mark "U-LI" in Singapore in 2013 under the name "U-LI Impex Pte Ltd", which was later corrected to "United U-LI Impex Pte Ltd". The Respondent subsequently registered a full transfer of the ownership of the trade mark to himself on 16 December 2014.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Respondent's registered trade mark should be declared invalid under Section 8(2)(a) and (b) of the Trade Marks Act, on the basis that it is identical or similar to the Applicant's earlier registered trade marks, and there exists a likelihood of confusion on the part of the public.
2. Whether the Respondent's trade mark registration should be declared invalid under Section 7(6) of the Trade Marks Act, on the ground of bad faith.
3. Whether the Respondent's trade mark registration should be declared invalid under Section 23(4) of the Trade Marks Act, on the ground of fraud or misrepresentation.
How Did the Court Analyse the Issues?
On the ground of invalidation under Section 8(2)(a) and (b), the Hearing Officer examined the similarity between the Respondent's registered trade mark and the Applicant's earlier registered trade marks. The Hearing Officer found that while the marks were visually and aurally similar, the goods covered by the respective registrations were not identical or similar. Therefore, the Hearing Officer concluded that there was no likelihood of confusion on the part of the public.
On the ground of bad faith under Section 7(6), the Hearing Officer examined the Respondent's conduct and intentions in registering the trade mark. The Hearing Officer found that the Respondent had been involved in the distribution of the U-LI products in Singapore since the 1990s, and had a legitimate interest in protecting the brand. The Hearing Officer did not find any evidence of bad faith on the Respondent's part.
On the ground of fraud or misrepresentation under Section 23(4), the Hearing Officer found that the initial registration of the trade mark under the name "U-LI Impex Pte Ltd" was a typographical error, which the Respondent subsequently corrected. The Hearing Officer did not find any evidence of fraud or misrepresentation.
What Was the Outcome?
The Hearing Officer dismissed all of the Applicant's grounds for invalidation and upheld the validity of the Respondent's registered trade mark. The Applicant's application for a declaration of invalidity was therefore rejected.
Why Does This Case Matter?
This case provides guidance on the application of the relative and absolute grounds for trade mark invalidation under the Singapore Trade Marks Act. It highlights the importance of establishing a likelihood of confusion between the marks, as well as the high threshold for proving bad faith or fraud in trade mark registration.
The case also illustrates the complex relationships and history between parties involved in the distribution and promotion of a trade mark. The Hearing Officer's analysis of the parties' conduct and intentions in using the "U-LI" mark provides insights into how such factors are considered in assessing the validity of a trade mark registration.
Overall, this decision reinforces the principle that the burden of proof in trade mark invalidation proceedings rests squarely on the applicant, who must present clear and convincing evidence to support their grounds for invalidation.
Legislation Referenced
- Oaths and Declarations Act
- Trade Marks Act (Cap 332, 2005 Rev Ed)
- UK Trade Marks Act
Cases Cited
- [2016] SGCA 33
- [2017] SGIPOS 14
- [2018] SGIPOS 19
Source Documents
This article analyses [2018] SGIPOS 19 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.