Case Details
- Citation: [2019] SGIPOS 6
- Court: Intellectual Property Office of Singapore
- Date: 2019-04-08
- Judges: Burton Ong
- Plaintiff/Applicant: The Patissier LLP
- Defendant/Respondent: Aalst Chocolate Pte Ltd
- Legal Areas: Trade marks and trade names – Revocation
- Statutes Referenced: Trade Marks Act, Trade Marks Act, UK Trade Marks Act
- Cases Cited: [1994] SGCA 19, [2003] SGHC 169, [2003] SGHC 205, [2007] SGHC 59, [2010] SGIPOS 14, [2017] SGIPOS 16, [2019] SGIPOS 6
- Judgment Length: 29 pages, 15,167 words
Summary
This case concerns a dispute over the use of a registered trade mark. Aalst Chocolate Pte Ltd ("the Proprietor") is the registered proprietor of a trade mark featuring the word "Pâtissier" in cursive, a chef's hat device, and the text "by Aalst Chocolate" ("the Subject Mark"). The Patissier LLP ("the Applicant") filed an application to revoke the registration of the Subject Mark on the grounds of non-use under the Trade Marks Act. The central issue was whether the Proprietor's use of the individual components of the Subject Mark, rather than the mark in its entirety, constituted genuine use of the registered trade mark.
What Were the Facts of This Case?
Aalst Chocolate Pte Ltd is a Singapore-based company that manufactures and sells chocolates and chocolate-based products. It is the registered proprietor of the Subject Mark, which was registered in Singapore in Class 30 for a wide range of chocolate and confectionery goods.
On 28 September 2017, The Patissier LLP filed an application to revoke the registration of the Subject Mark on the grounds of non-use under the Trade Marks Act. The Proprietor filed evidence in support of maintaining the registration, which showed that it had used various trade marks on its product packaging, including the individual components of the Subject Mark (the "Pâtissier-hat device" and the "Aalst Chocolate" word element) in close proximity to each other.
The Proprietor argued that its use of these individual components should be considered a genuine use of the registered Subject Mark. However, the Applicant contended that the Proprietor's use of the mark differed from the form in which it was registered, and therefore did not qualify as genuine use under the Act.
What Were the Key Legal Issues?
The key legal issue in this case was whether the Proprietor's use of the individual components of the Subject Mark, rather than the mark in its entirety, should be considered a genuine use of the registered trade mark for the purposes of the non-use revocation provisions in the Trade Marks Act.
Specifically, the court had to determine whether the Proprietor's use of the "Pâtissier-hat device" and the "Aalst Chocolate" word element in close proximity on its product packaging could be regarded as a use of the Subject Mark in "a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered", as provided for under Section 22(2) of the Trade Marks Act.
How Did the Court Analyse the Issues?
The court acknowledged that there was ample evidence that the Proprietor had made extensive use of various trade marks on its product packaging, including the individual components of the Subject Mark. However, the central question was whether this usage qualified as a genuine use of the registered trade mark.
The court noted that the Subject Mark consisted of three distinct elements: the "Pâtissier-hat device", the "Aalst Chocolate" word element, and the combination of these two elements. The Proprietor argued that its use of the Pâtissier-hat device and the Aalst Chocolate word element in close proximity should be considered a use of the Subject Mark, as the average consumer would still associate the marks with the Proprietor's business.
In analyzing this argument, the court considered the legal test for determining whether use of a mark in a form differing from the registered form still qualifies as genuine use under Section 22(2) of the Trade Marks Act. The court examined relevant case law on this issue and concluded that the key consideration is whether the differences in the used form alter the distinctive character of the registered mark.
What Was the Outcome?
The court ultimately found that the Proprietor's use of the individual components of the Subject Mark, rather than the mark in its entirety, did not constitute genuine use of the registered trade mark. The court held that the differences between the used form and the registered form were significant enough to alter the distinctive character of the Subject Mark.
As a result, the court ordered the partial revocation of the Subject Mark registration in respect of some of the goods for which it was registered, pursuant to Section 22(6) of the Trade Marks Act.
Why Does This Case Matter?
This case provides important guidance on the legal test for determining whether a trade mark proprietor's use of a mark in a form differing from the registered form still qualifies as genuine use under the Trade Marks Act. It highlights the importance of a trade mark proprietor using the mark in the exact form in which it is registered, in order to maintain the legal monopoly conferred by the registration.
The case is also significant in that it demonstrates the court's willingness to order a partial revocation of a trade mark registration, rather than a complete revocation, where the evidence shows that the proprietor has made genuine use of the mark in relation to some, but not all, of the registered goods or services.
For legal practitioners, this case underscores the need to carefully consider the form in which a trade mark is used, and to ensure that it matches the registered form, in order to avoid the risk of revocation proceedings. It also highlights the potential consequences of a trade mark proprietor using a mark in a form that differs from the registered form, even if the differences may appear minor.
Legislation Referenced
Cases Cited
- [1994] SGCA 19
- [2003] SGHC 169
- [2003] SGHC 205
- [2007] SGHC 59
- [2010] SGIPOS 14
- [2017] SGIPOS 16
- [2019] SGIPOS 6
Source Documents
This article analyses [2019] SGIPOS 6 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.