Case Details
- Citation: [2019] SGIPOS 15
- Court: Intellectual Property Office of Singapore
- Date: 2019-11-01
- Judges: Anne Loo, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Guangzhou Pharmaceutical Holdings Limited
- Defendant/Opponent: Multi Access Limited
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2013] SGIPOS 2, [2014] SGIPOS 11, [2018] SGHC 238, [2018] SGIPOS 16, [2019] SGIPOS 15
- Judgment Length: 28 pages, 9,541 words
Summary
This case involves a trade mark opposition between Guangzhou Pharmaceutical Holdings Limited ("the Applicant") and Multi Access Limited ("the Opponent"). The Applicant applied to register the trade mark " " in Singapore, which the Opponent opposed on the grounds of likelihood of confusion with its earlier registered "Wang Lao Ji" marks. The Intellectual Property Office of Singapore ("IPOS") ultimately found in favor of the Applicant, dismissing the opposition.
What Were the Facts of This Case?
The Opponent, Multi Access Limited, is a company incorporated in the British Virgin Islands that claims to be the producer and seller of the famous "Wang Lao Ji" (or "Wong Lo Kat") herbal tea, which it says traces its lineage back to the Qing Dynasty in China. The Opponent has registered numerous trade marks containing the "Wang Lao Ji" name and device in Singapore dating back to the 1950s.
The Applicant, Guangzhou Pharmaceutical Holdings Limited, applied to register the trade mark " " in Singapore in 2015, covering goods in Classes 5, 30, and 32 including medicines, beverages, and food products. The Opponent opposed the registration, arguing that the Applicant's mark was confusingly similar to its earlier "Wang Lao Ji" marks.
The Opponent submitted evidence tracing the history and ownership of the "Wang Lao Ji" brand back to the original founder, Mr. Wong Chak Bong, in the 19th century Qing dynasty. The Applicant submitted evidence about its own use and promotion of the "Wang Lao Ji" brand in more recent decades.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the Applicant's mark was confusingly similar to the Opponent's earlier registered "Wang Lao Ji" marks under Section 8(2)(b) of the Trade Marks Act.
- Whether the Applicant's mark was an unauthorized use of the Opponent's well-known "Wang Lao Ji" mark under Sections 8(4)(a) and 8(4)(b)(i) of the Act.
- Whether the Applicant's mark constituted passing off under Section 8(7)(a) of the Act.
How Did the Court Analyse the Issues?
On the issue of likelihood of confusion under Section 8(2)(b), the Hearing Officer considered the similarity of the marks, the similarity of the goods, and the relevant consumers. She found that while the marks were visually and aurally similar, the goods were not identical or closely related, and the relevant consumers were the general public who would exercise a reasonable degree of care. Overall, the Hearing Officer concluded that there was no likelihood of confusion.
On the issue of well-known mark under Sections 8(4)(a) and 8(4)(b)(i), the Hearing Officer found that while the Opponent's "Wang Lao Ji" marks were well-known in China, the evidence did not show they were well-known in Singapore at the relevant time. The Hearing Officer also found that the Applicant's use of the mark was not an unauthorized use that would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Opponent's marks.
Finally, on the issue of passing off under Section 8(7)(a), the Hearing Officer found that the Opponent had failed to establish the necessary goodwill in Singapore, and that there was no misrepresentation or damage caused by the Applicant's use of its mark.
What Was the Outcome?
The Hearing Officer dismissed the Opponent's opposition in its entirety, allowing the Applicant's trade mark to proceed to registration. The Opponent was ordered to pay the Applicant's costs.
Why Does This Case Matter?
This case provides useful guidance on the application of the key trade mark opposition grounds under the Singapore Trade Marks Act. It demonstrates the high evidentiary bar that an opponent must meet to succeed on grounds of likelihood of confusion, well-known mark, and passing off.
The case also highlights the importance of establishing sufficient goodwill and reputation in Singapore, even for a long-established brand like "Wang Lao Ji" that may be well-known in its country of origin. Trade mark owners seeking to protect their marks in Singapore must ensure they can demonstrate the requisite level of local recognition and reputation.
Overall, this judgment reinforces the principle that trade mark registration is not automatic, even for famous brands, and that the Registrar will carefully weigh the evidence and legal arguments on both sides before reaching a decision.
Legislation Referenced
Cases Cited
- [2013] SGIPOS 2
- [2014] SGIPOS 11
- [2018] SGHC 238
- [2018] SGIPOS 16
- [2019] SGIPOS 15
Source Documents
This article analyses [2019] SGIPOS 15 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.