Case Details
- Citation: [2025] SGIPOS 5
- Court: Intellectual Property Office of Singapore
- Date: 2025-10-22
- Judges: IP Adjudicator David Llewelyn
- Plaintiff/Applicant: Murray Colin Clarke
- Defendant/Opponent: TNSG Biotech Co Ltd
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2021] SGHC 165, [2025] SGIPOS 5
- Judgment Length: 31 pages, 7,421 words
Summary
This case involves a trade mark opposition filed by TNSG Biotech Co Ltd ("the Opponent") against the registration of a trade mark application by Murray Colin Clarke ("the Applicant"). The Opponent opposed the registration of the trade mark "童年时光" (transliterated as "tong nian shi guang" and translated as "childhood time") on the ground of bad faith under Section 7(6) of the Trade Marks Act. The key issue was whether the Applicant had acted in bad faith in applying to register the trade mark, which the Opponent claimed was confusingly similar to its own "童年时光" brand that it had been using since 2010. After considering the evidence, the Intellectual Property Office of Singapore found that the Applicant had not acted in bad faith and allowed the registration of the trade mark.
What Were the Facts of This Case?
The Applicant, Murray Colin Clarke, is a paediatrician in the United States who has been formulating nutritional and dietary supplements for children since 1996. In 1997, he founded Biozeal, LLC (trading as ChildLife Essentials), a company that produces and distributes nutritional and dietary supplement products under the "ChildLife" brand ("ChildLife Products"). The ChildLife Products have been sold to consumers in more than 25 countries, including Singapore, since at least 2003.
The Opponent, TNSG Biotech Co Ltd, is a Chinese company incorporated in 2010 that is in the business of sourcing, distributing, promoting and selling the goods of foreign manufacturers in China and other markets with Chinese-literate communities. The Opponent claims to own the "童年时光" brand, which it has used in relation to baby care products and services since 2010.
In 2011, the Opponent was appointed as a sub-distributor of the ChildLife Products by Asambly Chemicals Co., Ltd, a Chinese company that had a distribution agreement with Biozeal's official worldwide distributor, GDS Group, Inc. This sub-distributorship arrangement lasted until 2012 when the distribution agreement between GDS and Asambly was terminated.
From 2013 to 2021, the Opponent entered into direct distribution agreements with Biozeal to distribute certain ChildLife Products in mainland China, Hong Kong and Macau. During this period, the Opponent distributed the ChildLife Products as "co-branded products", displaying its own "童年时光" brand alongside the original English trade marks of the ChildLife Products.
What Were the Key Legal Issues?
The key legal issue in this case was whether the Applicant had acted in bad faith in applying to register the trade mark "童年时光" under Section 7(6) of the Trade Marks Act. The Opponent argued that the Applicant's application was made in bad faith because the Opponent had already been using the "童年时光" brand since 2010 and had invested substantial resources in marketing and promoting it.
The Opponent also contended that the Applicant's application was made without the Opponent's knowledge, authorization or consent, after the Opponent had terminated its distribution agreements with Biozeal in 2021.
How Did the Court Analyse the Issues?
The Intellectual Property Office of Singapore, through IP Adjudicator David Llewelyn, first noted that the burden of proof in this opposition was on the Opponent to establish that the Applicant had acted in bad faith. The Adjudicator then examined the evidence submitted by both parties in detail.
The Adjudicator acknowledged that the Opponent had been using the "童年时光" brand since 2010 and had invested substantial resources in marketing and promoting it. The Adjudicator also noted that the Opponent had been distributing the ChildLife Products as "co-branded products" displaying the "童年时光" brand alongside the original English trade marks.
However, the Adjudicator found that the evidence showed the Applicant had been involved in the Chinese market for the ChildLife Products since 2009, when he was approached by a marketing manager of Asambly, the parent company of the Opponent's former sub-distributor. The Adjudicator also noted that the Applicant had entered into direct distribution agreements with the Opponent from 2013 to 2021, during which time the Applicant was aware of the Opponent's use of the "童年时光" brand.
Based on these facts, the Adjudicator concluded that the Applicant's application to register the "童年时光" trade mark was not made in bad faith, as the Applicant had a legitimate interest in the mark and was aware of the Opponent's use of it during their business relationship. The Adjudicator found that the Applicant's application was not an attempt to misappropriate the Opponent's brand, but rather a move to protect his own interests after the distribution agreements were terminated.
What Was the Outcome?
The Intellectual Property Office of Singapore dismissed the Opponent's opposition and allowed the Applicant's trade mark application for "童年时光" to proceed to registration. The Adjudicator found that the Opponent had failed to establish that the Applicant had acted in bad faith in applying for the trade mark.
Why Does This Case Matter?
This case provides useful guidance on the application of the bad faith ground of opposition under Section 7(6) of the Trade Marks Act. It demonstrates that the burden of proof is on the opponent to establish bad faith, and that mere prior use of a similar mark is not sufficient on its own to prove bad faith.
The case also highlights the importance of clearly documenting the rights and obligations of parties in a commercial relationship, especially with respect to the ownership and use of trade marks. The Adjudicator noted that the lack of clear written agreements between the Applicant and Opponent contributed to the difficulty in resolving the dispute.
For practitioners, this case serves as a reminder to carefully consider the evidence of the parties' prior dealings and commercial relationships when assessing allegations of bad faith in trade mark opposition proceedings. The decision also underscores the need for opponents to present cogent evidence to substantiate their claims of bad faith, rather than relying on a "mud-throwing" approach.
Legislation Referenced
- Trade Marks Act
- Trade Marks Act 1998
Cases Cited
- [2021] SGHC 165
- [2025] SGIPOS 5
Source Documents
This article analyses [2025] SGIPOS 5 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.