Case Details
- Citation: [2008] SGHC 51
- Case Number: OS 2038/2006
- Decision Date: 09 April 2008
- Court: High Court of the Republic of Singapore
- Judge: Kan Ting Chiu J
- Coram: Kan Ting Chiu J
- Title: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another
- Plaintiff/Applicant: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd
- Defendant/Respondent: Qinghai Xinyuan Foreign Trade Co Ltd and Another
- Second Defendant: YCT Import & Export Pte Ltd
- Counsel for Plaintiff: Tan Tee Jim SC, Christopher de Souza and Alma Yong (Lee & Lee)
- Counsel for First Defendant: M Ravindran and Vicki Heng (Ravindran Associates)
- Counsel for Second Defendant: Lau Kok Keng, Charissa Soh and Wendy Lin (Rajah & Tann)
- Legal Areas: Copyright; Trade Marks and Trade Names (Revocation)
- Key Statutes Referenced: Interpretation Act; Trade Marks Act (Cap. 332, 2005 Rev Ed); Third Schedule of the Act; A of the Interpretation Act
- Core Trade Marks Provisions Discussed: ss 22(1)(c), 22(1)(a), 22(1)(b), 23(1), 23(3)(b), 23(4) of the Trade Marks Act (Cap. 332, 2005 Rev Ed)
- Judgment Length: 23 pages, 12,030 words
Summary
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd (“Wing Joo”) brought proceedings in the High Court seeking to remove from the Singapore register a trade mark known as the “Rooster” mark, registered for traditional Chinese herbs, namely cordyceps (and, in the registration description, also boxthorn fruit). The plaintiff relied on multiple grounds under the Trade Marks Act, including that the mark had become the common name in the trade due to the proprietor’s acts or inactivity, and that the mark had not been put to genuine use (or had been suspended) for an uninterrupted period of five years. The plaintiff also sought declarations relating to copyright in labels bearing the Rooster mark.
The High Court (Kan Ting Chiu J) addressed both the trade mark revocation/invalidity claims and the copyright-related declarations. On the copyright aspect, the court emphasised the onus of proof on the party asserting ownership and infringement-related propositions, and found that the plaintiff failed to prove its claim to the relevant copyright. On the trade mark aspect, the court analysed the statutory requirements for revocation and invalidity, including how “common name” is to be assessed, the significance of the timing of when a mark becomes common name, and the causal link required by the statutory language (“in consequence of the acts or inactivity of the proprietor”).
What Were the Facts of This Case?
The Rooster trade mark consisted of a picture of a rooster within a stylised flower border, the words “Rooster Brand” in English, and Chinese characters 雄鸡 meaning “rooster”. The registration in Singapore covered “traditional Chinese herbs, namely, cordy ceps, boxthorn fruit”. The plaintiff and the defendants referred to the mark in shorthand as the “Rooster trade mark” (without the flower border) and to cordyceps (spelt as one word), and the court adopted the same approach for clarity.
Historically, the Rooster mark was used in China for cordyceps from at least the 1950s, before the existence of a trade mark registration system in China. When trade mark registration began in China in 1983, China Cereals Qinghai Branch registered the rooster mark in 1985 for cordyceps. In 1989, the rights were assigned to Qinghai Medicines & Health Products Import & Export Corp of Qinghai (“Qinghai Meheco”), and the assignment was approved and recorded in the People’s Republic of China in 1995. In 1995, Qinghai Meheco applied to register the Rooster trade mark in Singapore; the certificate was issued in 2001 but backdated to take effect from 1995.
Ownership and control of the Singapore registration then changed through assignments and transfers. The mark was assigned to the first defendant, Qinghai Xinyuan Foreign Trade Co Ltd, on 30 May 2003, with the assignment recorded in the Singapore register. The trade mark subsequently underwent further assignments: Qinghai Yixin Medical Co (“Qinghai Yixin”) held rights for a period and then assigned them to the first defendant, resulting in the first defendant becoming the sole owner. The first defendant then applied to transfer the Singapore trade mark to its name; the transfer was recorded in 2006 but backdated to 2003. In 2005, the first defendant granted an exclusive licence to Yu Ceng Trading Pte Ltd (“Yu Ceng”), to use the Singapore trade mark. In 2005, Yu Ceng obtained search warrants and conducted a raid on the plaintiff’s premises, seizing quantities of cordyceps bearing alleged counterfeit Rooster trade marks. In 2006, Yu Ceng’s licence was novated to the second defendant, YCT Import & Export Pte Ltd.
Against this background, Wing Joo commenced the present proceedings. It sought, first, an order revoking Trade Mark Registration No. T9508502Z under s 22(1) of the Trade Marks Act, with effect from 15 November 2005 (or such other date as the court deemed fit). Second, it sought, alternatively, a declaration of invalidity under s 23(1), (3)(b) and/or (4) of the Act. Third, it sought declarations that any copyright in the Rooster labels attached (and in any literary or artistic works in each of those labels) did not subsist in favour of the defendants, and that Wing Joo had not infringed any copyright (if any). The plaintiff also filed applications to set aside the search warrants, but those were not heard because their outcome was said to be affected by the trade mark and copyright determinations.
What Were the Key Legal Issues?
The case raised two broad clusters of issues. The first cluster concerned copyright: whether the defendants (or any party) were the proprietors of copyright in the Rooster labels and related works, and whether Wing Joo infringed any such copyright. The court had to consider the allocation of the burden of proof and whether the plaintiff could obtain the negative declarations it sought.
The second cluster concerned trade mark revocation and invalidity. Wing Joo relied on s 22(1)(c), arguing that the Rooster mark had become the common name in the trade for cordyceps in consequence of the acts or inactivity of the proprietor. This required the court to determine (i) whether the mark had become a common name by the relevant date (the plaintiff’s application date was 1 November 2006), and (ii) if so, whether that state of affairs was attributable to the proprietor’s acts or inactivity. Wing Joo also invoked s 22(1)(a) and (b), alleging non-use or suspension of use for an uninterrupted period of five years, and contended that the mark had not been used “as a trade mark” (ie, to indicate origin/source) during the relevant period.
In addition, the broader invalidity framework under s 23 was pleaded, including allegations that the mark was customary to cordyceps, that it was not capable of distinguishing, and that registration was obtained in bad faith through fraud and/or misrepresentation. The court also had to consider whether, even if statutory grounds were made out, it retained a discretion not to revoke or invalidate the registration, and what “relevant circumstances” should be taken into account in exercising that power.
How Did the Court Analyse the Issues?
On the trade mark “common name” ground under s 22(1)(c), the court began by focusing on the statutory text. The provision requires that the registration be revoked because, “in consequence of the acts or inactivity of the proprietor”, the mark has become the common name in the trade for the goods or services for which it is registered. The court therefore treated the inquiry as two-part: first, whether the mark had become common name; second, whether the proprietor’s acts or inactivity caused that result. This approach is important because it prevents a mere showing of “genericisation” from automatically satisfying the statutory requirement; causation and timing matter.
Wing Joo’s case was that the Rooster mark had been used openly in Singapore since at least the 1950s in relation to cordyceps imported from China, and that traders and customers associated the Rooster mark with cordyceps from China generally rather than with any particular trader or source. The plaintiff argued that because multiple Chinese provincial companies used the Rooster mark and competed with one another, the mark did not function to distinguish the goods of one undertaking from those of another. Wing Joo further submitted that after the Singapore application date (6 September 1995), the mark continued to cease fulfilling its function as a trade mark and continued to be the common name for cordyceps emanating from China.
In analysing this, the court emphasised the significance of when the mark became common name. The court reasoned that s 22(1)(c) must be applied with attention to both the cause and the time when the mark becomes common name. The “cause” must be the action or inaction of the proprietor. The court also rejected an overly narrow reading of “proprietor” as referring only to the proprietor at the time of the application to revoke. Instead, it indicated that the term should be understood to apply to the chain of proprietors after registration. However, the court then drew a further limitation: for s 22(1)(c) to apply, the mark must have become the common name after it has been registered. If the mark was already the common name before registration, then it could not be the consequence of the proprietor’s acts or inactivity.
This reasoning directly engaged the plaintiff’s own historical narrative. Wing Joo asserted that the Rooster mark was already the common name as early as the 1950s, and certainly by the 1980s, long before the Singapore registration application and the completion of registration. If that was correct, the statutory causation requirement would not be satisfied, because the proprietor’s acts or inactivity could not have caused a condition that pre-existed registration. The court’s analysis therefore turned on whether the evidence established that the mark was already generic/common before the relevant Singapore registration timeline, and whether the statutory “after registration” element could be met.
On the non-use and suspension grounds under s 22(1)(a) and (b), the court addressed the requirement that the mark be put to “genuine use in the course of trade in Singapore” by the proprietor (or with its consent) in relation to the goods for which it is registered. The plaintiff argued that the mark must be used “as a trade mark”, meaning used to indicate origin or source, and that there was no such use for the five-year period following completion of registration (27 August 2001). Wing Joo’s evidence and submissions were that the mark had been used in Singapore since the 1950s, but that it was perceived as denoting cordyceps imported from China rather than distinguishing the goods of one undertaking from another. The court’s approach suggests that it treated “trade mark use” as requiring the mark to perform its essential function of indicating commercial origin, not merely to be present on goods.
Although the extract provided is truncated, the court’s stated reasoning on s 22(1)(c) and the framing of s 22(1)(a) and (b) show a consistent analytical theme: statutory revocation grounds are not satisfied by broad assertions of use or market familiarity; they require proof that the mark, in the relevant period, functioned in the way the Trade Marks Act contemplates, and that the statutory causal and temporal requirements are met. The court also had to consider whether the proprietor’s conduct (including any failure to police or correct genericisation) could be linked to the mark’s status.
On the copyright declarations, the court’s reasoning (as indicated in the metadata summary of the judgment) turned on the onus of proof. The plaintiff sought declarations that copyright in the Rooster labels did not subsist in favour of the defendants. Such a negative declaration typically requires careful proof of the underlying copyright ownership and subsistence issues. The court found that the plaintiff failed to prove its claim to the relevant copyright. The judgment also notes that a third party never claimed to be the owner of the copyright, which further undermined the plaintiff’s attempt to establish the factual basis for the declarations. The court therefore granted an alleged infringer’s declaration only in part, reflecting that not all copyright-related relief could be supported on the evidence.
What Was the Outcome?
In the trade mark proceedings, the court considered the pleaded grounds for revocation and invalidity, including genericisation under s 22(1)(c) and non-use/suspension under s 22(1)(a) and (b), as well as allegations of lack of distinctiveness, customary status, and bad faith. The court’s analysis of the “common name” ground indicates that the plaintiff faced a significant evidential and legal hurdle in establishing that the mark became common name after registration and in consequence of the proprietor’s acts or inactivity, particularly given the plaintiff’s own assertion of long-standing generic/common use before Singapore registration.
On copyright, the court declined to grant the full scope of the plaintiff’s negative declarations. It held that the plaintiff did not discharge the onus of proof on copyright ownership and related propositions, and it granted an alleged infringer’s declaration only in part. Practically, this meant that while the plaintiff obtained some relief, it did not succeed in having all copyright in the Rooster labels declared not to subsist in the defendants, and it did not obtain complete vindication of its position on the copyright and trade mark issues.
Why Does This Case Matter?
This decision is useful to practitioners because it illustrates how Singapore courts approach statutory trade mark revocation grounds with close attention to text, timing, and causation. The court’s discussion of s 22(1)(c) underscores that genericisation alone is not enough; the plaintiff must show that the mark became the common name after registration and that the change occurred “in consequence of” the proprietor’s acts or inactivity. This is a demanding requirement that can defeat revocation where the mark’s common status predates the relevant Singapore registration.
The case also highlights the evidential challenge in non-use and suspension claims under s 22(1)(a) and (b). The court’s framing indicates that “use” must be genuine and must be use “as a trade mark” in the sense of performing the essential origin-indicating function. Where the evidence shows that the relevant market perceives the mark as a descriptive or geographic/commodity indicator (for example, “cordyceps from China”) rather than as a badge of origin, the proprietor’s ability to defend against non-use allegations may be affected.
From a copyright perspective, the case is a reminder that negative declarations about copyright subsistence and ownership require careful proof. The onus remains on the party asserting the claim, and courts will not grant sweeping declarations without adequate evidential foundation, particularly where third-party ownership or authorship issues are not properly established. For litigators, the decision therefore serves as a cautionary example: both trade mark and copyright claims require disciplined proof aligned to the statutory elements and the burden of proof.
Legislation Referenced
- Interpretation Act (including “A of the Interpretation Act” as referenced in the metadata)
- Trade Marks Act (Cap. 332, 2005 Rev Ed)
- Third Schedule of the Trade Marks Act (Cap. 332, 2005 Rev Ed)
- Trade Marks Act (Cap. 332) (as referenced in the metadata)
Cases Cited
- [1987] SLR 462
- [2008] SGHC 51
Source Documents
This article analyses [2008] SGHC 51 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.