Case Details
- Citation: [2019] SGIPOS 2
- Court: Intellectual Property Office of Singapore
- Date: 2019-02-08
- Judges: Ong Sheng Li, Gabriel, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Mahendra Naidu A/L R. Manogaran trading as Sri Sai Traders
- Defendant/Respondent: Navin Trading Pte Ltd
- Legal Areas: Trade marks and trade names – Declaration of Invalidity
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2002] SGIPOS 11, [2011] SGIPOS 10, [2013] SGIPOS 3, [2015] SGIPOS 16, [2016] SGIPOS 10, [2018] SGIPOS 6, [2018] SGIPOS 3, [2019] SGIPOS 2
- Judgment Length: 15 pages, 6,789 words
Summary
This case involves a trade mark invalidation action brought by Mahendra Naidu A/L R. Manogaran trading as Sri Sai Traders ("the Applicant") against two registered trade marks owned by Navin Trading Pte Ltd ("the Registrant"). The Applicant sought to have the Registrant's trade marks declared invalid on the grounds of bad faith, passing off, and fraud or misrepresentation. The Intellectual Property Office of Singapore ("IPOS") ultimately found in favor of the Applicant, declaring the Registrant's trade marks invalid.
What Were the Facts of This Case?
The Applicant is a sole proprietorship based in Johor, Malaysia that manufactures, packs, and sells goods under the "SHREE" and "SHREE GOLD" trade marks in Malaysia and Singapore. The Registrant is a Singapore company that was incorporated on 31 March 2016 and applied to register the two trade marks at issue, "SHREE" and "SREE", just four days later on 4 April 2016.
The Applicant filed for a declaration of invalidity against the Registrant's trade marks on 12 May 2017, alleging bad faith, passing off, and fraud or misrepresentation. The Applicant provided evidence in the form of statutory declarations from its sole proprietor, Mahendra Naidu A/L R. Manogaran, as well as from directors of companies that had purchased the Applicant's "SHREE" and "SHREE GOLD" branded goods.
The Registrant, however, failed to file any evidence in support of its trade marks. Under the Trade Marks Rules, the Registrant was then treated as having admitted to the facts alleged by the Applicant. The Registrant later applied for an extension of time to file evidence, but this request was ultimately denied by the Hearing Officer.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the Registrant's trade marks should be declared invalid on the ground of bad faith under Section 23(1) read with Section 7(6) of the Trade Marks Act.
2. Whether the Registrant's trade marks should be declared invalid on the ground of passing off under Section 23(3)(b) read with Section 8(7)(a) of the Trade Marks Act.
3. Whether the Registrant's trade marks should be declared invalid on the ground of fraud or misrepresentation under Section 23(4) of the Trade Marks Act.
How Did the Court Analyse the Issues?
On the issue of bad faith, the Hearing Officer examined the Applicant's evidence, which showed that the Applicant had been using the "SHREE" and "SHREE GOLD" marks in Malaysia and Singapore prior to the Registrant's applications. The evidence also indicated that the Registrant was aware of the Applicant's use of these marks. Given that the Registrant failed to file any evidence to rebut the Applicant's case, the Hearing Officer found that the Registrant had acted in bad faith in applying for the trade marks.
Regarding passing off, the Hearing Officer considered the Applicant's evidence demonstrating its goodwill and reputation in the "SHREE" and "SHREE GOLD" marks, as well as the likelihood of confusion caused by the Registrant's highly similar marks. Again, the Registrant's failure to file evidence meant that the Applicant's case on passing off was uncontested.
On the issue of fraud or misrepresentation, the Hearing Officer found that the Registrant's conduct in applying for the trade marks, despite being aware of the Applicant's prior use, amounted to a misrepresentation that was likely to deceive or cause confusion in the marketplace.
What Was the Outcome?
Based on the Applicant's unchallenged evidence and the Registrant's failure to file any evidence in support of its trade marks, the Hearing Officer declared both of the Registrant's trade marks, "SHREE" and "SREE", to be invalid. The Registrant's trade mark registrations were thus cancelled.
Why Does This Case Matter?
This case is significant for several reasons:
1. It demonstrates the importance of filing evidence to support one's trade mark rights, particularly when facing a challenge. The Registrant's failure to file any evidence in this case proved fatal to its case.
2. The decision highlights the principle that bad faith in the registration of a trade mark can be a ground for invalidity, even if the mark is otherwise distinctive and capable of registration. The Hearing Officer's finding of bad faith on the part of the Registrant was a key factor in the outcome.
3. The case reinforces the concept of passing off as a ground for trade mark invalidity, where a later-registered mark is found to be confusingly similar to an earlier unregistered mark with established goodwill and reputation.
4. More broadly, the decision sends a clear message that the Intellectual Property Office of Singapore will not tolerate attempts to register trade marks in bad faith, particularly where there is evidence of prior use by another party. This helps to maintain the integrity of the trade mark registration system.
Legislation Referenced
Cases Cited
- [2002] SGIPOS 11
- [2011] SGIPOS 10
- [2013] SGIPOS 3
- [2015] SGIPOS 16
- [2016] SGIPOS 10
- [2018] SGIPOS 6
- [2018] SGIPOS 3
- [2019] SGIPOS 2
Source Documents
This article analyses [2019] SGIPOS 2 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.