Case Details
- Citation: [2022] SGHC 226
- Title: Triple D Trading Pte Ltd v Fanco Fan Marketing Pte Ltd
- Court: High Court of the Republic of Singapore (General Division)
- Suit No: Suit No 464 of 2021
- Date of Judgment: 16 September 2022
- Judges: Dedar Singh Gill J
- Hearing Dates: 14–18 February 2022; 22 April 2022
- Plaintiff/Applicant: Triple D Trading Pte Ltd
- Defendant/Respondent: Fanco Fan Marketing Pte Ltd
- Plaintiff in Counterclaim: Fanco Fan Marketing Pte Ltd
- Defendant in Counterclaim: Triple D Trading Pte Ltd
- Legal Area: Intellectual Property – Trade marks and trade names
- Key Issues: Invalidity of a registered trade mark for bad faith; groundless threats of trade mark infringement
- Trade Mark at Issue: “COFAN” (registered in Singapore on 27 February 2019 under Trade Mark No 40201904164S)
- Goods/Classes: Class 9 (remote controls and related apparatus); Class 11 (room/ceiling/ventilating fans and related lighting/heating goods)
- Statutes Referenced: Trade Marks Act (Cap 322, 2005 Rev Ed) (“TMA”); UK Trade Marks Act (as referenced in the judgment)
- Provisions Mentioned: s 27(2)(b) TMA (infringement); s 7(6) read with s 23(1) TMA (registration in bad faith)
- Groundless Threats Provisions Mentioned: ss 35(1)(a)–35(1)(c) TMA
- Cases Cited: [2010] SGIPOS 8; [2022] SGHC 226
- Judgment Length: 44 pages; 12,274 words
Summary
This High Court dispute concerned competing claims over closely resembling marks used in the Singapore fan market: Triple D Trading Pte Ltd’s registered “COFAN” mark and Fanco Fan Marketing Pte Ltd’s “CO-FAN” mark. Triple D sued for trade mark infringement, alleging that Fanco’s use of “CO-FAN” infringed Triple D’s exclusive rights under s 27(2)(b) of the Trade Marks Act (Cap 322, 2005 Rev Ed) (“TMA”). Fanco counterclaimed for invalidation of the “COFAN” registration on the basis that it was registered in bad faith, and also alleged that Triple D made groundless threats of infringement.
The court’s analysis focused on two main questions. First, whether Triple D had registered “COFAN” in bad faith, including whether it had knowledge of Fanco’s plans to use “CO-FAN” and whether Triple D sought to free ride on goodwill associated with the earlier “FANCO” business. Second, whether certain letters sent by Triple D contained threats that were “groundless” within the meaning of the TMA, and whether those threats related to acts of infringement falling within the statutory categories.
Ultimately, the court addressed both the infringement claim and the counterclaims, applying established trade mark principles on bad faith and the statutory framework governing groundless threats. The decision is notable for its careful treatment of competing narratives about mark origination, the evidential weight of contemporaneous documents, and the requirement that threats must be assessed against the statutory infringement scope.
What Were the Facts of This Case?
Triple D Trading Pte Ltd (“Triple D”) is in the business of selling fans. It is the proprietor of the “COFAN” trade mark, registered in Singapore on 27 February 2019 under Trade Mark Number 40201904164S. The registration covers Class 9 goods (including remote controls and related apparatus) and Class 11 goods (including room fans, ceiling fans, ventilating fans, and related lighting and heating items). Triple D was incorporated on 1 June 2017, and the evidence indicated that Mr Phua Kian Chey Colin (“Mr Phua”) has effectively been its sole director and shareholder.
Fanco Fan Marketing Pte Ltd (“Fanco”) is also a fan seller. It was incorporated on 17 May 2013 by founders and only shareholders Mr Quek Lip Ngee (“Mr Quek”) and Mr Lim Boon Lee (“Mr Lim”). Before incorporation, Mr Quek and Mr Lim operated a partnership, Fanco Fan Marketing, and obtained registration for the “FANCO” mark in Class 11 on 13 December 2011. After the partnership ended, ownership of the “FANCO” mark was transferred to Fanco on 3 December 2015. As the business grew, the founders divided operational responsibilities across the causeway, with Mr Quek handling Singapore operations and Mr Lim spending most time in Malaysia.
A key factual thread was the employment history of Mr Phua. Mr Phua was a former employee of Fanco Fan Marketing. He began working for the partnership in 2009 and continued with the defendant as a sales and marketing manager until December 2016. According to Mr Phua, he left because he had limited autonomy and wanted to “broaden [his] horizons”. After leaving, he set up Triple D. Evidence also showed that in or around February 2018, Mr Gary Pang (“Mr Pang”), a former colleague of Mr Phua at Fanco, joined Triple D as a sales executive. Further, multiple former Fanco employees were later working for Triple D.
The dispute crystallised when Fanco launched a new line of fans bearing the mark “CO-FAN” in August 2019. The “CO-FAN” mark resembles Triple D’s “COFAN” mark, differing only by the presence of a hyphen. The parties advanced divergent accounts of how their respective marks were conceived. Triple D claimed independent development: Mr Phua and Mr Pang allegedly came up with “COFAN” in the latter half of 2018, with “COFAN” said to stand for “Colin’s Fan” (Colin being Mr Phua’s Christian name) and with “cooperation” as an additional conceptual explanation linked to internal work dynamics. Triple D further asserted that it applied for registration on 27 February 2019 to “reserve” the mark before it was ready for launch, and that it did not formally publicise the mark during the opposition period.
Fanco’s narrative was different. It claimed that the idea for “CO-FAN” emerged from Mr Quek and Mr Lim’s January 2016 strategy to diversify their business. Fanco’s “FANCO” fans were allegedly powered by alternating current (“AC”), associated with a lower price range. The founders wanted to enter the market for direct current (“DC”) fans, which could command higher prices due to being quieter and consuming less power. On that account, Mr Lim developed “CO-FAN” by reversing the syllables of “FANCO” for the new DC product range.
Fanco also alleged that Mr Phua learned of the “CO-FAN” plans before Triple D’s registration. It pointed to two meetings in 2016: an informal February 2016 meeting at Fanco’s offices, and a more formal March 2016 meeting in Mr Quek’s office. Fanco asserted that the March 2016 meeting was attended by Mr Phua, Mr Lim, Mr Quek, and Ms Claudia Fong (Mr Quek’s wife and Fanco’s human resource manager). Fanco relied on handwritten minutes said to have been taken contemporaneously by Mr Lim, and it described preparatory steps taken before launching the “CO-FAN” line, including engaging a Chinese manufacturer, obtaining certificates of conformity from a designated conformity assessment body, and registering products with the relevant consumer safety authority.
What Were the Key Legal Issues?
The first legal issue was whether Triple D’s “COFAN” registration should be invalidated for bad faith under s 7(6) read with s 23(1) of the TMA. Bad faith in this context required the court to examine whether, at the time of filing or registration, Triple D had acted dishonestly or unfairly in a manner that undermined the trade mark system’s integrity. The court therefore had to assess whether Triple D had knowledge of Fanco’s plans to use the “CO-FAN” mark and whether Triple D sought to “free ride” on goodwill associated with Fanco’s “FANCO” business.
The second legal issue concerned groundless threats. Triple D had commenced infringement proceedings on 24 May 2021. In addition, Fanco alleged that Triple D made groundless threats of trade mark infringement through letters sent in April 2021. The court had to determine whether those letters contained “threats” within the meaning of the TMA, whether the threats related to acts of infringement that fall within ss 35(1)(a)–35(1)(c), and whether Fanco was an “aggrieved person” entitled to bring the groundless threats claim.
Although the excerpt provided does not include the court’s full final reasoning, the structure of the judgment indicates that the court treated bad faith and groundless threats as distinct but interrelated questions. The outcome on invalidity would affect the infringement claim, while the outcome on groundless threats would determine whether Triple D’s communications triggered statutory liability.
How Did the Court Analyse the Issues?
The court’s approach to bad faith was evidentially intensive. It examined the parties’ competing narratives about mark origination and timing. On Triple D’s side, the court considered Mr Phua’s explanation that “COFAN” was derived from his personal name (“Colin’s Fan”) and from the internal concept of “cooperation”. The court also considered Triple D’s account of why it applied for registration in February 2019: to reserve the mark before it was ready for launch, while Triple D focused on building its “BESTAR” brand. This narrative was supported by evidence that Triple D’s funding for the COFAN brand came from revenue generated by BESTAR products.
On Fanco’s side, the court assessed whether the evidence supported the claim that Mr Phua had knowledge of Fanco’s “CO-FAN” plans before Triple D’s registration. The judgment’s internal headings show that the court analysed two specific alleged disclosure events: the February 2016 meeting and the March 2016 meeting. The court would have evaluated whether these meetings were credible, whether they were attended by the relevant persons, and whether the content of discussions could reasonably have informed Mr Phua about the “CO-FAN” mark. The court also considered the evidential value of the handwritten minutes said to have been taken contemporaneously by Mr Lim, and whether those minutes were consistent with the claimed timeline.
Beyond knowledge, the court analysed whether Triple D sought to free ride on goodwill associated with Fanco’s “FANCO” business. This required the court to consider the relationship between the marks and the commercial context. The marks were similar in sound and structure, and the defendant’s “CO-FAN” mark was said to be a direct linguistic adaptation of “FANCO” (by reversing syllables). The court therefore had to decide whether Triple D’s “COFAN” was plausibly independent or whether the similarities suggested opportunistic adoption. In doing so, the court would have weighed the plausibility of Triple D’s explanations against the documentary and testimonial evidence supporting Fanco’s earlier conception and preparation.
The court’s analysis of groundless threats followed the statutory framework under the TMA. It examined whether the April 2021 letters contained threats of infringement, and whether those threats were “groundless” because the underlying infringement allegations were not legally sustainable. The judgment headings indicate that the court specifically asked whether the threats related to acts of infringement that fall within ss 35(1)(a)–35(1)(c) of the TMA. This is important because groundless threats liability is not triggered by any communication; it is triggered by threats that correspond to the statutory infringement categories. The court also addressed whether Fanco was an “aggrieved person”, meaning a person who is sufficiently affected by the threats to have standing to sue.
In assessing whether the letters were threats, the court would have considered the substance and effect of the communications, not merely their wording. The court’s reasoning likely involved determining whether Triple D’s letters asserted that Fanco’s use of “CO-FAN” infringed the “COFAN” mark and whether they demanded cessation or implied legal action in a manner that could reasonably be understood as a threat. The court then would have connected that assessment to whether the alleged infringement fell within the statutory scope, and whether the threats were groundless in light of the court’s conclusions on invalidity and infringement.
What Was the Outcome?
The judgment resolved both the infringement claim and the counterclaims for invalidity and groundless threats. The court’s findings on bad faith were central: if the “COFAN” registration was invalidated for bad faith, Triple D’s infringement claim would be undermined because the statutory basis for exclusive rights would not survive. Conversely, if the court rejected bad faith, Triple D’s registration would remain effective and the infringement analysis would proceed on that basis.
On the groundless threats issue, the court determined whether Triple D’s April 2021 letters amounted to threats within the TMA framework and whether they were “groundless” and made against an “aggrieved person”. The practical effect of the outcome is that it clarified the boundary between legitimate enforcement communications and communications that expose a trade mark proprietor to statutory liability when the threatened infringement is not legally justified.
Why Does This Case Matter?
This case matters for practitioners because it illustrates how Singapore courts scrutinise allegations of bad faith in trade mark registrations, particularly where marks are highly similar and the parties’ commercial and personnel histories overlap. The court’s focus on whether the plaintiff had knowledge of the defendant’s plans and whether the plaintiff attempted to free ride on goodwill provides a structured lens for evaluating bad faith evidence. For trade mark applicants, it underscores that registration is not merely a procedural step; it is a substantive act that must be undertaken in good faith.
For enforcement strategy, the decision is also significant for groundless threats. Trade mark proprietors often send demand letters and warning letters before or alongside litigation. This judgment reinforces that such communications must be carefully drafted and grounded in a defensible legal position. It also highlights that groundless threats claims are not automatic; they depend on whether the letters contain threats within the statutory categories and whether the claimant is an “aggrieved person”.
From a research and litigation perspective, the case is useful because it demonstrates the evidential importance of contemporaneous documents (such as meeting minutes), the credibility of timelines, and the court’s willingness to engage with competing narratives about how a mark was conceived. Lawyers advising clients in trade mark disputes—especially where there are allegations of copying, opportunistic registration, or unfair competition—will find the court’s analytical structure helpful for framing pleadings, evidence, and submissions.
Legislation Referenced
- Trade Marks Act (Cap 322, 2005 Rev Ed) (“TMA”), including:
- s 27(2)(b) (infringement)
- s 7(6) read with s 23(1) (registration in bad faith)
- s 35(1)(a)–35(1)(c) (groundless threats)
- UK Trade Marks Act (as referenced in the judgment)
Cases Cited
- [2010] SGIPOS 8
- [2022] SGHC 226
Source Documents
This article analyses [2022] SGHC 226 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.