Case Details
- Citation: Weider Global Nutrition, LLC v Morinaga & Co., Ltd [2020] SGIPOS 13
- Court: Intellectual Property Office of Singapore
- Date: 2020-12-08
- Judges: Ms Tan Mei Lin, Principal Assistant Registrar
- Plaintiff/Applicant: Weider Global Nutrition, LLC
- Defendant/Respondent: Morinaga & Co., Ltd
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2005] SGHC 175, [2016] SGCA 33, [2016] SGHC 32, [2017] SGCA 30, [2020] SGIPOS 13
- Judgment Length: 28 pages, 9,759 words
Summary
This case involves a trade mark opposition between Weider Global Nutrition, LLC ("the Opponent") and Morinaga & Co., Ltd ("the Applicant"). The Applicant, a Japanese confectionery company, applied to register a trade mark in Singapore covering dietary supplements and confectionery products. The Opponent, an American active nutrition company, opposed the registration on several grounds, including that the application was made in bad faith.
The Intellectual Property Office of Singapore ("IPOS") found that the Applicant had acted in bad faith in applying to register the mark, as it was aware that the "Weider" and "IN" marks were owned by the Opponent and its associate company Mariz. The Applicant's application was therefore refused under Section 7(6) of the Trade Marks Act.
What Were the Facts of This Case?
The Opponent, Weider Global Nutrition, LLC, is an American company based in Phoenix, Arizona that specializes in active nutrition products. It has over 70 years of expertise in nutritional sciences and sells its goods in over 120 countries.
The Applicant, Morinaga & Co., Ltd, is a Japanese confectionery company established in 1899. It has sales and manufacturing bases in several countries, including the United States.
On 5 December 2017, the Applicant applied to register a trade mark in Singapore covering dietary supplements, nutritional supplements, and confectionery products. The application was for a series of two marks, which included Japanese text and English words such as "Wafer", "Nuts", "Protein", and "Bar".
The Opponent opposed the registration of the Applicant's mark, relying on several grounds under the Trade Marks Act. The key facts underlying the Opponent's case were as follows:
- The Opponent is the registered proprietor in Singapore of various "Weider" and "Weider"-formative trade marks, including "WEIDER ENERGY IN", "WEIDER FIBER IN", and "WEIDER VITAMIN IN".
- The Opponent's associate company, Mariz Gestao E Investimentos Limitada ("Mariz"), is the registered proprietor in Singapore of the "IN" and "IN"-formative trade marks.
- In 2007, the Opponent acquired the "Weider" and "Weider"-formative marks from Mariz, but Mariz retained ownership of the "IN" and "IN"-formative marks.
- Mariz had previously licensed the "Weider", "Weider"-formative, "IN", and "IN"-formative marks to a company called Rayo International Trading Company B.V. ("Rayo"), which in turn sub-licensed them to JWO Corporation ("JWO").
- JWO had entered into a series of Licence and Technical Assistance Agreements ("LTAAs") with the Applicant, which initially only covered the "Weider" marks but was later expanded to include the "Weider"-formative and "IN"/"IN"-formative marks.
- The Applicant therefore only had rights to use the marks through its licensing agreement with JWO and was never the owner of the "IN" and "IN"-formative marks.
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, under Section 7(6) of the Trade Marks Act.
The Opponent argued that the Applicant was aware that the "Weider" and "IN" marks were owned by the Opponent and Mariz, respectively, and that the Applicant only had limited rights to use those marks through its licensing agreement with JWO. By applying to register the mark in its own name, the Opponent contended that the Applicant was acting in bad faith.
The Applicant disputed the Opponent's allegations and argued that its application was made in good faith.
How Did the Court Analyse the Issues?
The Hearing Officer, Ms Tan Mei Lin, began her analysis by setting out the key principles on the ground of bad faith under Section 7(6) of the Trade Marks Act, as established in the Court of Appeal decision in Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203.
The Hearing Officer noted that the legal burden of proving bad faith lies on the party bringing the opposition (in this case, the Opponent). She also highlighted that bad faith encompasses not just actual dishonesty, but also dealings that would be considered commercially unacceptable by reasonable and experienced persons in the trade.
In assessing the facts, the Hearing Officer found that the Applicant was aware that the "Weider" and "IN" marks were owned by the Opponent and Mariz, respectively, and that the Applicant only had limited rights to use those marks through its licensing agreement with JWO. She concluded that the Applicant's application to register the mark in its own name, despite this knowledge, was commercially unacceptable and amounted to bad faith under Section 7(6).
The Hearing Officer rejected the Applicant's arguments that it had acted in good faith, finding that the Applicant's conduct fell short of the standards expected of a reasonable and experienced trader in the industry.
What Was the Outcome?
Based on her finding of bad faith under Section 7(6), the Hearing Officer refused the Applicant's trade mark application. As a result, the Applicant is not permitted to register the trade mark in Singapore.
Why Does This Case Matter?
This case is significant for several reasons:
Firstly, it provides a clear application of the principles on bad faith under Section 7(6) of the Trade Marks Act, as established in the Valentino case. The Hearing Officer's analysis demonstrates that bad faith can be found not just in cases of actual dishonesty, but also in commercially unacceptable conduct that falls short of the standards expected in the industry.
Secondly, the case highlights the importance of carefully managing trade mark rights and licensing arrangements, particularly where multiple parties are involved. The Hearing Officer's findings show that a party cannot simply disregard the existing rights and licensing structure and attempt to register a mark in its own name, even if it has been granted some rights to use the mark.
Finally, the case serves as a warning to trade mark applicants that they must be transparent about the provenance of the marks they seek to register. Attempting to register a mark in bad faith, even if the mark itself would not cause confusion, can still result in the application being refused under Section 7(6).
Overall, this decision reinforces the principle that trade mark registration should be granted in a fair and transparent manner, and that the Registrar has the power to refuse applications that fall short of this standard.
Legislation Referenced
Cases Cited
- [2005] SGHC 175
- [2016] SGCA 33
- [2016] SGHC 32
- [2017] SGCA 30
- [2020] SGIPOS 13
- Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203
- Rothmans of Pall Mall Ltd v Maycolson International Ltd [2006] 2 SLR(R) 551
- Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2009] 2 SLR(R) 814
- Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR(R) 1073
Source Documents
This article analyses [2020] SGIPOS 13 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.