Case Details
- Citation: Shenzhen Meixixi Catering Management Co., Ltd. v Heetea Pte. Ltd. [2021] SGIPOS 12
- Court: Intellectual Property Office of Singapore
- Date: 2021-11-01
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Shenzhen Meixixi Catering Management Co., Ltd.
- Defendant/Respondent: Heetea Pte. Ltd.
- Legal Areas: Trade marks and trade names – Invalidation
- Statutes Referenced: Copyright Act, Trade Marks Act
- Cases Cited: [2010] SGIPOS 11, [2015] SGHC 216, [2015] SGIPOS 10, [2016] SGIPOS 1, [2017] SGIPOS 17, [2018] SGIPOS 18, [2021] SGIPOS 12
- Judgment Length: 22 pages, 7,816 words
Summary
This case involves a dispute over the registration of a trade mark for tea-based beverages. The applicant, Shenzhen Meixixi Catering Management Co., Ltd., filed an application to invalidate the registered trade mark of Heetea Pte. Ltd. on several grounds, including that the registered mark is identical or similar to the applicant's earlier registered mark. The Intellectual Property Office of Singapore (IPOS) had to determine whether the applicant had established the grounds for invalidation under the Trade Marks Act.
What Were the Facts of This Case?
The applicant, Shenzhen Meixixi Catering Management Co., Ltd., is the owner and distributor of the tea chain and tea brand "HEYTEA 喜茶". The applicant has been in operation since 2012 when it opened its first tea shop in China, and was then known as "皇茶 ROYALTEA". In 2016, the applicant rebranded to "HEYTEA 喜茶" to distinguish itself from competitors and imitator brands.
The applicant is known for being the first to introduce "cheese tea", a beverage that combines a salty layer of cheese foam on top of fresh tea. Since its establishment, the applicant has expanded its operations and internationalized the "HEYTEA 喜茶" brand in various countries, including Singapore. Presently, the applicant has 500 stores in mainland China, Hong Kong and Singapore, employing more than 10,000 employees.
The registered proprietor, Heetea Pte. Ltd., deposed that it has operated kiosks or stalls selling tea-based beverages in Singapore since November 2017. The registered proprietor explained that the idea for this business came about in early 2017, when it chanced upon a Japanese entertainment programme which featured tea-based beverages.
What Were the Key Legal Issues?
The key legal issues in this case were whether the registered trade mark should be declared invalid on the grounds that:
- It is identical or similar to the applicant's earlier registered trade mark, and there exists a likelihood of confusion on the part of the public (under sections 23 and 8(2) of the Trade Marks Act);
How Did the Court Analyse the Issues?
The Hearing Officer, Ms Sandy Widjaja, applied the step-by-step approach set out in the Staywell decision to assess the ground of invalidation under section 23 read with section 8(2) of the Trade Marks Act.
On the issue of identity or similarity of the marks, the Hearing Officer agreed with the applicant that the registered mark is aurally and conceptually identical to the applicant's earlier registered mark. On the visual comparison, the Hearing Officer found that the differences between the marks, such as the slightly thicker strokes and higher positioning of the horizontal strokes in the registered mark, were insignificant and would likely go unnoticed by the average consumer.
The Hearing Officer then considered the similarity of the goods or services covered by the competing marks. Both marks covered tea-based beverages in Class 30, which were found to be identical goods.
Having established the first two elements of the test, the Hearing Officer then assessed the likelihood of confusion. Considering the high degree of similarity between the marks and the identity of the goods, the Hearing Officer concluded that there was a likelihood of confusion on the part of the public.
On the ground of bad faith under section 7(6), the Hearing Officer noted that the burden of proof lies with the applicant. The Hearing Officer found that the applicant had not provided sufficient evidence to show that the registered proprietor had acted in bad faith in obtaining the registration.
What Was the Outcome?
The Hearing Officer declared the registered trade mark invalid under section 23 read with section 8(2) of the Trade Marks Act, on the basis that the registered mark is identical or similar to the applicant's earlier registered mark, and there exists a likelihood of confusion on the part of the public.
The Hearing Officer dismissed the applicant's ground of invalidation under section 7(6) (bad faith), finding that the applicant had not provided sufficient evidence to establish this ground.
Why Does This Case Matter?
This case is significant for several reasons:
Firstly, it provides a clear application of the step-by-step approach set out in the Staywell decision for assessing the ground of invalidation under section 8(2) of the Trade Marks Act. The Hearing Officer's analysis of the identity or similarity of the marks, the similarity of the goods, and the likelihood of confusion serves as a useful reference for future trade mark disputes.
Secondly, the case highlights the high threshold required to establish bad faith under section 7(6) of the Trade Marks Act. The Hearing Officer's finding that the applicant had not provided sufficient evidence to show bad faith on the part of the registered proprietor demonstrates the difficulty in successfully invoking this ground of invalidation.
Finally, the case is a reminder of the importance of conducting thorough trademark searches and clearance before adopting and registering a new mark. The registered proprietor's failure to do so resulted in the invalidation of its mark, which could have significant commercial consequences.
Legislation Referenced
Cases Cited
- [2010] SGIPOS 11
- [2015] SGHC 216
- [2015] SGIPOS 10
- [2016] SGIPOS 1
- [2017] SGIPOS 17
- [2018] SGIPOS 18
- [2021] SGIPOS 12
Source Documents
This article analyses [2021] SGIPOS 12 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.