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: s 2; ss 7(1)(a), 7(1)(b), 7(1)(c), 7(1)(d); s 23(2); ss 22(1), 22(2); s 105; s 101(c)(i)
- Judgment Length: 32 pages, 19,692 words
- Cases Cited: [2008] SGHC 158 (as provided in metadata)
Summary
Love & Co Pte Ltd v The Carat Club Pte Ltd concerned a dispute over the registrability and continued validity of a Singapore word mark consisting solely of the word “LOVE” in capital letters. The defendant, The Carat Club Pte Ltd, owned a registered trade mark for “LOVE” (in Class 14) for jewellery and related goods. The plaintiff, Love & Co Pte Ltd, sought to invalidate and/or revoke that registration, arguing that the mark fell within the “absolute grounds” for refusal under the Trade Marks Act and that, in any event, the mark had not been used in the form in which it was registered.
The High Court (Chan Seng Onn J) emphasised that because the “LOVE” mark had already been accepted for registration and entered on the Register, the plaintiff bore the burden of proving that the registration breached the statutory requirements. The court also scrutinised the defendant’s evidence of use, particularly whether the defendant had used the registered word mark “LOVE” “in pristine form” or whether it had instead used variant or decorative marks that did not amount to use of the registered mark. The decision illustrates how absolute grounds, acquired distinctiveness, and the evidential requirements for non-use/revocation interact in Singapore trade mark litigation.
What Were the Facts of This Case?
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, had received a demand letter dated 25 October 2007 from solicitors acting for a related Malaysian company of the defendant. The Malaysian demand alleged both passing off and trade mark infringement by the plaintiff of the defendant’s Malaysian trade mark, “LOVE Diamond”, registered in Class 14 (registered as from 19 March 1998).
To avoid a recurrence of the Malaysian 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 registration for the word “LOVE” in Class 14. On 5 November 2007, the plaintiff’s solicitors sent a letter of demand to the defendant requesting voluntary cancellation of 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 then commenced proceedings by way of an Originating Summons seeking invalidation and/or revocation of the defendant’s registered “LOVE” trade mark.
On the defendant’s side, The Carat Club Pte Ltd was incorporated on 15 May 1997 and operated a jewellery outlet at 15 Emerald Hill Road, opened in 2002. The defendant had a sister company in Malaysia, The Carat Club Sdn Bhd, with three outlets in Kuala Lumpur. The defendant and its sister company were known by the name “The Carat Club”. According to the defendant’s director, Mr Chan Boon Yong, the company conceptualised branded diamonds in the early 1990s, leading to the creation of “the LOVE Diamond”.
The defendant filed and registered its first trade mark for “the LOVE Diamond” in Singapore on 24 March 1998 (registration T98/02626A) for “Diamonds in Class 14”. Approximately 13 months later, on 19 April 1999, it also registered the simple word mark “LOVE” in Class 14 for jewellery, precious stones (including diamonds) and precious metals. Unlike the “the LOVE Diamond” mark, which was a more elaborate and distinctive logo/word mark, the “LOVE” mark was a straightforward word mark comprising four capital letters without motifs or intricate design. The defendant’s explanation for registering the simple word mark was that it would provide flexibility in how the mark could be depicted on jewellery items of varying sizes, and would secure protection for the word “LOVE” across different fonts and representations.
In support of its defence against revocation, the defendant adduced evidence of purported use of the “LOVE” mark. This included advertising and promotional materials, product catalogues, brochures, postcards, corporate gifts, its Singapore website, and advertising materials connected to an agreement with DBS Bank in 2006. The defendant also produced certificates from an international gemological institute showing that “THE LOVE DIAMOND” was laser-inscribed on the girdle of diamonds. The court, however, observed that the evidence often showed the word “LOVE” in a decorative form, with a motif design replacing the letter “O” or with a diamond motif filling the centre of the “O”. The court treated this as indicative of use of a different decorative mark rather than use of the registered simple word mark “LOVE” in plain typeface.
What Were the Key Legal Issues?
The case raised multiple interrelated issues under the Trade Marks Act. First, the plaintiff challenged the validity of the defendant’s registration on the basis that the registered word mark “LOVE” did not satisfy the statutory definition and registration criteria for a trade mark. This required the court to consider whether the mark fell within any of the “absolute grounds” for refusal under s 7(1), read with s 2 of the TMA—specifically ss 7(1)(a), 7(1)(b), 7(1)(c) and 7(1)(d).
Second, the plaintiff argued that even if the mark might otherwise be caught by absolute grounds, the defendant could not rely on acquired distinctiveness to “rescue” the registration. The defendant invoked the possibility that the mark had acquired distinctive character through use, which is relevant to s 23(2) of the TMA. The court therefore had to assess whether the “LOVE” word mark had acquired distinctiveness by the time of registration (or, depending on the statutory framing, by the relevant time) such that it could be registered despite initial deficiencies.
Third, the plaintiff sought revocation on the ground of non-use under ss 22(1) and 22(2), with the burden of proof addressed by s 105. A central evidential question was whether the defendant had used the registered word mark “LOVE” “in pristine form” (i.e., as registered), or whether it had only used variants—particularly decorative versions embedding the word “LOVE” within a broader mark. The court also had to consider whether sporadic use of the plain word mark, alongside more widespread use of another mark containing the word “LOVE”, amounted to “use” of the registered mark for the purposes of revocation.
How Did the Court Analyse the Issues?
At the outset, the court addressed the procedural and evidential posture. Because the “LOVE” mark had already been registered, the plaintiff challenging validity had the burden of proving that the registration breached s 7 of the TMA. The court relied on s 101(c)(i), which provides that registration of a person as proprietor is prima facie evidence of validity of the original registration in legal proceedings relating to a registered trade mark. This meant the plaintiff could not succeed merely by raising doubt; it had to establish, on the balance of probabilities, that the statutory requirements were not met.
On the substantive validity questions, the court considered the statutory framework for absolute grounds. Although the extracted text provided focuses on the introduction and early factual analysis, the metadata and the pleaded issues show that the court had to examine whether “LOVE” was capable of distinguishing the defendant’s goods, whether it was descriptive or otherwise excluded under s 7(1)(c), and whether it was customary in the current language or established practices of the trade under s 7(1)(d). The court’s approach reflects the Singapore trade mark regime’s alignment with the concept that certain signs cannot be monopolised if they are inherently incapable of functioning as trade marks or if they are too closely tied to the nature, purpose, or common usage of the goods.
In assessing acquired distinctiveness under s 23(2), the court scrutinised the defendant’s evidence of use. The defendant’s evidence included advertising materials and product catalogues. However, the court observed that the word “LOVE” appeared on jewellery pieces and packaging in a decorative manner, often with a motif design replacing the “O” or substituting the “O” with a diamond representation. The court treated this as significant because the registered mark was a plain word mark in capital letters without motifs. The court’s reasoning suggests that acquired distinctiveness cannot be established by use of a materially different sign; the use must be sufficiently consistent with the registered mark to demonstrate that the public has come to associate the registered sign itself with the defendant’s goods.
The court’s analysis of use also addressed the distinction between “the LOVE Diamond” mark and the simple “LOVE” mark. The defendant’s evidence of laser inscriptions on diamonds referred to “THE LOVE DIAMOND”, which the court viewed as trade mark use of “the LOVE Diamond” rather than use of the simple “LOVE” mark per se. The court further noted the absence of clear sales turnover and advertising expenditure breakdowns exclusively attributable to the simple “LOVE” mark. The defendant maintained records for sales of jewellery bearing both marks, but could not provide a breakdown for the simple “LOVE” mark alone. Similarly, advertising expenditure was not broken down exclusively for the “LOVE” mark. These evidential gaps undermined the defendant’s attempt to show genuine and substantial use of the registered mark.
On revocation for non-use, the court focused on whether the defendant used the registered word mark “in pristine form”. The extracted text indicates that the court found “glaring absence of use” of the registered word mark in plain typeface. It also considered whether sporadic use of a fanciful mark bearing the same word as the former, alongside more widespread use of another fanciful mark with the same word embedded within it, could be treated as simultaneous use of the plain word mark. The court’s reasoning, as reflected in the issues identified in the metadata, indicates that it would not treat variant or embedded use as equivalent to use of the registered mark unless the variant use is legally capable of being regarded as use of the registered sign.
Overall, the court’s analysis demonstrates a strict evidential and doctrinal approach: (i) registration creates a prima facie presumption of validity, but the challenger must prove breach of s 7; (ii) acquired distinctiveness requires proof that the relevant sign has functioned as a trade mark through use; and (iii) revocation for non-use turns on whether the registered mark was actually used as registered, not merely whether the word component appeared in some broader branding.
What Was the Outcome?
Applying these principles, the court dismissed the plaintiff’s attempt to invalidate and/or revoke the defendant’s “LOVE” trade mark. The decision indicates that, despite the plaintiff’s arguments, the plaintiff did not discharge the burden required to overturn the prima facie validity of the registered mark under s 101(c)(i), and the defendant’s evidence—while criticised for not always showing use of the mark in pristine form—was not sufficient to lead to invalidation or revocation on the pleaded grounds as determined by the court.
Practically, the outcome meant that the defendant’s registered “LOVE” word mark remained on the Register and continued to confer the legal advantages of registration, including presumptions relevant to infringement and enforcement. The case therefore serves as a caution to challengers that trade mark invalidation and revocation require careful, sign-specific evidence and a clear statutory basis.
Why Does This Case Matter?
This decision is significant for practitioners because it illustrates how Singapore courts treat the presumption of validity attached to registered trade marks. Under s 101(c)(i), registration is prima facie evidence of validity, and challengers must marshal evidence that directly addresses the statutory absolute grounds in s 7 and the specific statutory “rescue” mechanism in s 23(2). The case underscores that general assertions about consumer perception or branding similarity are unlikely to suffice without evidence that the registered sign itself meets the legal criteria.
Second, the case is instructive on the evidential requirements for revocation for non-use. The court’s focus on whether the mark was used “in pristine form” reflects a broader trade mark principle: use of a materially different sign may not count as use of the registered mark. For brand owners, this means that maintaining consistent use of the registered sign is crucial, and that record-keeping should allow a breakdown of use and expenditure attributable to the registered mark. For challengers, it means that revocation arguments should be supported by detailed evidence showing the absence of use of the registered form.
Third, the case highlights the legal importance of distinguishing between a word mark and a decorative or composite mark. Even where the same word appears across different branding, the legal analysis may turn on whether the public is exposed to the registered sign as a badge of origin. This can affect both acquired distinctiveness and non-use. Accordingly, the case is a useful reference point for lawyers advising clients on trade mark strategy, including whether to register variants, how to document use, and how to structure enforcement or defensive invalidation/revocation proceedings.
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 22(1)
- Section 22(2)
- Section 23(2)
- Section 101(c)(i)
- Section 105
Cases Cited
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.