Case Details
- Citation: [2008] SGHC 158
- Case Title: Love & Co Pte Ltd v The Carat Club Pte Ltd
- Court: High Court of the Republic of Singapore
- Case Number: OS 225/2008
- Decision Date: 22 September 2008
- Judge: Chan Seng Onn J
- Coram: Chan Seng Onn J
- Plaintiff/Applicant: Love & Co Pte Ltd
- Defendant/Respondent: The Carat Club Pte Ltd
- Counsel for Plaintiff: Gill Dedar Singh and Paul Teo (Drew & Napier LLC)
- Counsel for Defendant: Yew Woon Chooi and Alvin Lim (Rodyk & Davidson LLP)
- Legal Areas: Trade Marks and Trade Names — Grounds for refusal of registration; Trade Marks and Trade Names — Invalidity; Trade Marks and Trade Names — Registration criteria; Revocation for non-use
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Key Provisions Referenced (as stated in metadata/extract): ss 2, 7(1)(a), 7(1)(b), 7(1)(c), 7(1)(d), 22(1), 22(2), 23(2), 7(2), 101(c)(i), 105
- Judgment Length: 32 pages, 19,692 words
- Reported/Unreported: Reported (SGHC)
- Trade Mark at Issue: “LOVE” (simple word mark) registered by defendant in Class 14 (Singapore registration T99/03815H)
- Related Marks Mentioned: “the LOVE Diamond” (fanciful mark) and “LOVE Diamond” (Malaysia and other jurisdictions)
Summary
This High Court decision concerns a challenge by a jewellery retailer, Love & Co Pte Ltd, to invalidate and/or revoke the defendant’s Singapore trade mark consisting of the word “LOVE” in plain capital letters. The defendant, The Carat Club Pte Ltd, owned the registered mark “LOVE” (registration T99/03815H) for jewellery and related goods in Class 14. The plaintiff sought to attack the registration on multiple grounds under the Trade Marks Act, including that the mark fell within the “absolute grounds for refusal” and that it was not capable of distinguishing the defendant’s goods, or that it was descriptive/customary or otherwise excluded from registration.
The court emphasised that because the mark was already registered, the plaintiff bore the burden of proving that the registration was in breach of s 7 of the Trade Marks Act. The court also addressed the plaintiff’s alternative revocation case for non-use, focusing on whether the defendant had used the registered “LOVE” word mark “as registered” and whether any variations in use could count as genuine use of the registered mark. Ultimately, the court’s reasoning turned on the nature of the defendant’s actual commercial use and whether that use satisfied the statutory requirements for maintaining a registration.
What Were the Facts of This Case?
The defendant, The Carat Club Pte Ltd, was incorporated in 1997 and operates a jewellery outlet in Singapore at 15 Emerald Hill Road, opened in 2002. It also has a sister company in Malaysia, The Carat Club Sdn Bhd, with jewellery outlets in Kuala Lumpur. The group is known by the name “The Carat Club”. The defendant’s branding strategy included the creation of a branded diamond concept, leading to the development of “the LOVE Diamond”.
In March 1998, the defendant filed and registered its first trade mark in Singapore for “the LOVE Diamond” (registration T98/02626A) for diamonds in Class 14. Approximately 13 months later, on 19 April 1999, it registered the simpler word mark “LOVE” in Class 14 for jewellery, precious stones (including diamonds) and precious metals. Unlike the earlier “the LOVE Diamond” mark, the “LOVE” registration was a straightforward word mark in four capital letters, without motifs or intricate design elements. The defendant later relied on this registration as providing protection for use of the word “LOVE” across different fonts and representations.
The plaintiff, Love & Co Pte Ltd, was incorporated on 4 June 2007 for the purpose of launching upmarket jewellery stores specialising in rings and wedding bands. Its director, Mr Lim Yong Sheng, explained that the plaintiff’s related Malaysian company, Love & Co Sdn Bhd, received a demand letter dated 25 October 2007 from solicitors acting for the defendant’s related Malaysian company. The demand alleged passing off and trade mark infringement by the plaintiff’s Malaysian business of a Malaysian trade mark “LOVE Diamond” (registered since 19 March 1998) in Class 14.
To prevent a similar dispute in Singapore, the plaintiff conducted a search of the Singapore trade mark register after launching its Singapore store under the name “Love & Co” on 2 November 2007 at Raffles City. The search revealed that the defendant owned a Singapore registration for the word “LOVE” in Class 14. In response, on 5 November 2007 the plaintiff’s solicitors sent a letter of demand asking the defendant to voluntarily cancel the “LOVE” mark on the basis that it was vulnerable to revocation and invalidation under ss 22 and 23 of the Trade Marks Act. The defendant refused, and the plaintiff commenced OS 225/2008 to invalidate and/or revoke the registration.
What Were the Key Legal Issues?
The case raised several interrelated issues under the Trade Marks Act. First, because the “LOVE” mark was already registered, the plaintiff had to establish that the registration was invalid for breach of the statutory “absolute grounds for refusal” in s 7(1) read with s 2 of the TMA. The metadata and extract indicate that the plaintiff’s invalidity case relied on ss 7(1)(a), 7(1)(b), 7(1)(c) and 7(1)(d), which concern, in broad terms, whether the sign is capable of distinguishing, whether it is descriptive or otherwise excluded, and whether it is customary in the current language or established practices of the trade.
Second, the court had to consider whether, even if the mark fell within an absolute ground, the defendant could “rescue” the registration by showing that the mark had acquired distinctive character through use, invoking s 23(2) of the TMA. This required an assessment of the extent and nature of usage in Singapore and whether the relevant public had come to perceive “LOVE” as indicating origin rather than merely describing or being a customary term in the jewellery trade.
Third, the plaintiff also pursued revocation. The key revocation issue was whether the defendant had used the registered trade mark “LOVE” in a manner that satisfied the statutory concept of “use” for maintaining registration. The court examined the burden of proving use and whether the defendant’s evidence of use—particularly the prominence of “LOVE” in advertising and on jewellery—showed genuine use of the registered word mark “in pristine form” or whether it was instead sporadic use of a different decorative mark bearing the same word.
How Did the Court Analyse the Issues?
Chan Seng Onn J began by setting out the procedural and evidential framework. Since the “LOVE” mark had been accepted for registration and entered on the Register of Trade Marks, the plaintiff challenging validity had the burden of proving that the registration breached s 7 of the TMA. The judge relied on s 101(c)(i) of the TMA, which provides that registration of a person as proprietor is prima facie evidence of validity of the original registration in legal proceedings relating to the mark. This meant that the plaintiff could not succeed merely by pointing to potential weaknesses; it had to establish the statutory breach on the balance of probabilities.
On the invalidity grounds, the court scrutinised the nature of the mark “LOVE” and the context of the jewellery market. The defendant argued that the registration of the simple word mark was intended to provide flexibility in depicting the mark on jewellery, including where the “the LOVE Diamond” mark might be too large to fit on small items. The defendant also asserted that it used the “LOVE” mark continuously and promoted it through various channels, including magazines, brochures, product catalogues, corporate gifts, its website, and advertising arrangements with DBS Bank in 2006.
However, the court’s analysis of the evidence of use and the character of the mark was critical. The judge observed that the word “LOVE” appeared on jewellery pieces and in promotional materials, but often with decorative elements—such as a motif design replacing the letter “O” or a diamond-like representation filling the centre of the “O”. The court treated this as evidence of use of a different “decorative LOVE” mark rather than use of the registered “LOVE” word mark in plain capital letters. The distinction mattered because the defendant’s registration was for a specific sign: “LOVE” in a simple, unadorned typographic form. The court therefore questioned whether the defendant had actually used the registered mark “as registered”.
The judge further considered the defendant’s evidence of trade mark use on physical goods. The defendant produced certificates from an institute showing that the words “THE LOVE DIAMOND” were laser inscribed on the girdle of diamonds. The court viewed this as use of “the LOVE Diamond” mark rather than use of the simple “LOVE” word mark per se. This reinforced the court’s concern that the defendant’s commercial branding and product labelling did not consistently correspond to the registered “LOVE” mark. The court also noted that a Straits Times report from 1996 referred to other jewellers presenting “Love” diamonds with laser inscriptions, suggesting that “Love” could be used by others in the trade, which undermined the defendant’s claim that “LOVE” functioned as a distinctive indicator of origin in the relevant market.
Turning to the revocation aspect, the court addressed the burden of proving use and the legal significance of the “pristine form” requirement. The judge highlighted that the defendant could not provide sales turnover data specifically for jewellery bearing the simple “LOVE” mark alone; instead, it maintained records combining sales for both the simple and the decorative marks. Similarly, advertising expenditure could not be broken down exclusively for the “LOVE” mark. These evidential gaps weakened the defendant’s ability to demonstrate genuine and consistent use of the registered mark.
Although the extract provided is truncated after the early portion of the analysis, the metadata and the judge’s observations indicate that the court treated the defendant’s evidence as showing at most sporadic use of a fanciful mark bearing the same word, while the more widespread use was of another mark with the same word embedded within a broader decorative device. The court’s approach reflects a core trade mark principle: use must be of the registered mark (or a form that does not alter its distinctive character) to preserve the registration. Where the evidence shows that the proprietor’s branding strategy centres on a different composite mark, the registered word mark may not be maintained.
What Was the Outcome?
On the basis of the court’s assessment of the statutory grounds for invalidity and the evidence relating to use, the plaintiff succeeded in its challenge to the defendant’s registration. The practical effect was that the defendant’s registered “LOVE” trade mark could not be sustained in the form and on the basis claimed, and the registration was vulnerable to removal through invalidation and/or revocation.
For practitioners, the case illustrates that a proprietor cannot rely on the general presence of the word “LOVE” in branding if the evidence shows that the proprietor used a different decorative or composite sign, and cannot avoid revocation by pointing to combined sales or undifferentiated advertising records. The court’s orders (as reflected in the judgment’s conclusion) therefore removed the proprietor’s ability to enforce the registration as a protected word mark in Singapore for the relevant goods.
Why Does This Case Matter?
This decision is significant for two main reasons. First, it demonstrates the evidential burden on a challenger when attacking an already-registered trade mark. Even though registration is prima facie evidence of validity, the court will scrutinise whether the registration genuinely satisfies the absolute grounds in s 7 and whether any claim of acquired distinctiveness under s 23(2) is supported by credible evidence of use and market perception.
Second, the case is a useful authority on the requirements for maintaining a word mark through use. It underscores that “use” is not a purely semantic exercise. A proprietor must show use of the registered sign in a manner that preserves its distinctive character. Where the proprietor’s actual branding consistently uses a different decorative device or composite mark, the court may treat the evidence as insufficient to protect the registered word mark. This has direct implications for trade mark owners who register simple word marks but market their products primarily with logos, stylised lettering, or composite branding.
For lawyers advising clients in trade mark disputes, the case highlights the importance of maintaining clear records that distinguish between different mark variants, including sales turnover and advertising spend attributable to the registered mark. It also reinforces the need to align product labelling and promotional materials with the registered form if the proprietor intends to rely on use to defend against revocation.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
- Section 2
- Section 7(1)(a)
- Section 7(1)(b)
- Section 7(1)(c)
- Section 7(1)(d)
- Section 7(2)
- Section 22(1)
- Section 22(2)
- Section 23(2)
- Section 101(c)(i)
- Section 105
Cases Cited
- [2008] SGHC 158 (this case)
Source Documents
This article analyses [2008] SGHC 158 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.