Case Details
- Citation: [2008] SGHC 51
- Case Title: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another
- Court: High Court of the Republic of Singapore
- Decision Date: 09 April 2008
- Judge: Kan Ting Chiu J
- Coram: Kan Ting Chiu J
- Case Number: OS 2038/2006
- Plaintiff/Applicant: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd
- Defendants/Respondents: Qinghai Xinyuan Foreign Trade Co Ltd and Another (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/Invalidity)
- Key Statutes Referenced: Interpretation Act; Trade Marks Act (Cap. 332, 2005 Rev Ed); Third Schedule of the Act; A of the Interpretation Act
- Procedural Context: Plaintiff sought revocation/invalidity of a registered trade mark and declarations relating to copyright; related applications to set aside search warrants were adjourned pending the outcome.
- Judgment Length: 23 pages, 12,030 words
Summary
This High Court decision concerns a challenge to a Singapore trade mark registration for a “Rooster” mark used in connection with cordyceps (a traditional Chinese medicinal product). The plaintiff, a Singapore trader, sought revocation and/or invalidation of the registration 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 in Singapore within the statutory grace period. The plaintiff also sought declarations in relation to copyright in labels bearing the Rooster mark.
The court’s analysis focused on the statutory requirements for revocation and invalidation, particularly the evidential burden on the party alleging non-use, genericness, or invalidity. In the copyright component, the court emphasised that the plaintiff bore the onus to prove its claim that the defendants did not own the relevant copyright. The court also considered the circumstances surrounding the mark’s history, including prior use in China and the chain of assignments leading to the defendants’ registered proprietor status in Singapore.
Ultimately, the court granted the plaintiff’s requested declaration that an alleged infringer’s declaration should be granted in part, and it addressed the trade mark challenge by applying the statutory tests for revocation/invalidity, including the “common name” inquiry and the requirement of genuine trade mark use. The decision illustrates how Singapore courts approach both the substantive trade mark grounds and the evidential discipline required to succeed in revocation and copyright-related declaratory relief.
What Were the Facts of This Case?
The dispute centred on a registered trade mark described as a “Rooster Brand” mark. Visually, it consisted of a picture of a rooster within a stylised flower border, the English words “Rooster Brand”, and Chinese characters 雄鸡 meaning “rooster”. The registration covered “traditional Chinese herbs, namely, cordy ceps, boxthorn fruit”. In the proceedings, the parties referred to the mark more narrowly as the “Rooster trade mark” (without the flower border) and to cordyceps (spelt as one word), and the court proceeded on that basis.
Historically, the Rooster mark had been used in China for cordyceps since at least the 1950s, before trade mark registration systems were established. When China began trade mark registration in 1983, the rooster mark was registered in favour of China Cereals Qinghai Branch in 1985 for cordyceps. In 1989, rights were assigned to Qinghai Medicines & Health Products Import & Export Corp of Qinghai (“Qinghai Meheco”), and the assignment was approved and recorded in China in 1995. In 1995, Qinghai Meheco applied to register the Rooster trade mark in Singapore; a certificate was issued in 2001, backdated to take effect from 1995.
The trade mark then underwent further assignments. The rights were assigned to the first defendant, Qinghai Xinyuan Foreign Trade Co, on 30 May 2003, and the assignment was recorded in Singapore. The first defendant later transferred the Singapore trade mark to its own name, with the transfer 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 had the plaintiff’s premises raided, 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 (“YCT”). The plaintiff then commenced the present proceedings. It sought revocation and/or invalidation of the trade mark registration (Registration No. T9508502Z) and declarations that any copyright in the Rooster labels and related literary or artistic works did not subsist in favour of the defendants, and that the plaintiff had not infringed any copyright (if any). The plaintiff also filed separate applications to set aside the search warrants, but those were not heard because they were considered potentially dependent on the outcome of the main proceedings.
What Were the Key Legal Issues?
The case raised several interlocking issues under the Trade Marks Act and copyright law. On the trade mark side, the plaintiff relied primarily on revocation grounds under s 22(1) of the Trade Marks Act (Cap. 332, 2005 Rev Ed). The most prominent ground was s 22(1)(c): whether, “in consequence of the acts or inactivity of the proprietor”, the registered mark had become the common name in the trade for the goods for which it was registered. This required the court to determine (i) whether the Rooster mark had become the common name in the trade for cordyceps by the relevant date of the application, and (ii) if so, whether that occurred due to acts or inactivity attributable to the proprietor or its chain of proprietors.
The plaintiff also invoked s 22(1)(a) and (b), which concern non-use and suspension of use for an uninterrupted period of five years. These grounds required the court to consider whether the mark had been put to genuine use in Singapore in the course of trade by the proprietor (or with its consent) in relation to the relevant goods, and whether there were proper reasons for non-use. A further set of issues related to invalidity under s 23(1), (3)(b) and/or (4), including whether the mark was customary to cordyceps, whether it was capable of distinguishing, and whether the application for registration was made in bad faith or involved fraud/misrepresentation.
On the copyright side, the plaintiff sought a declaration that copyright in the Rooster labels and related works did not belong to the defendants. This raised an evidential and doctrinal question: whether the plaintiff could establish, on the balance of probabilities, that the defendants were not the proprietors of the relevant copyright, and whether the plaintiff’s claim was supported by sufficient proof. The court also had to consider the scope and effect of any declarations sought, including whether the plaintiff’s position could be framed as a non-infringement declaration contingent on the existence and ownership of copyright.
How Did the Court Analyse the Issues?
The court began by setting out the statutory framework and the factual chronology of the mark’s use and registration. In relation to revocation under s 22(1)(c), the court emphasised that the “common name” inquiry is not merely descriptive of how traders and customers perceive the mark; it also requires a causal link to the proprietor’s acts or inactivity. The court treated this as a two-stage analysis: first, whether the mark had become the common name in the trade by the relevant date; second, whether that state of affairs was caused by acts or inactivity of the proprietor.
Crucially, the court addressed the timing problem inherent in the plaintiff’s case. The plaintiff argued that the Rooster mark had been used in Singapore since at least the 1950s and was already commonly associated with cordyceps from China long before the Singapore registration application. The plaintiff further contended that after 6 September 1995 (the date of the trade mark application in Singapore), the mark continued to cease fulfilling its function as a trade mark and continued to be the common name. The court responded by explaining that s 22(1)(c) must be applied with particular attention to the cause and time when the mark becomes a common name. The cause must be the action or inaction of the proprietor, and the proprietor must be understood in a broader sense to include the chain of proprietors after registration.
However, the court also made an important doctrinal point: 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 its registration, then it cannot be said that the proprietor’s acts or inactivity caused the mark to become generic. This reasoning directly engaged the plaintiff’s own factual narrative. If the mark was already generic in Singapore decades earlier, the plaintiff’s reliance on s 22(1)(c) would face a structural difficulty because the statutory causation element would not be satisfied.
On the non-use grounds under s 22(1)(a) and (b), the court’s approach reflected the requirement that the mark must be used “as a trade mark”. The plaintiff’s case was that the Rooster mark had been used in Singapore since the 1950s but was perceived as denoting cordyceps from China rather than distinguishing the goods of one undertaking from another. In other words, the plaintiff argued that even if the mark was present in the market, it was not used in a manner that fulfilled the essential function of a trade mark. The court therefore had to consider whether the defendants’ use (or the proprietor’s use) amounted to genuine trade mark use in Singapore during the relevant five-year periods, and whether any gaps could be justified by “proper reasons”.
Although the extracted judgment text provided is truncated, the metadata and the court’s framing indicate that the court treated the evidential burden as central. The plaintiff, as the party seeking revocation and declarations, had to prove the statutory grounds. This included proving that the mark had become common name due to proprietor inactivity, and proving non-use or suspended use without proper reasons. The court’s treatment of the copyright claim similarly reflected the onus: the plaintiff failed to prove its assertion that the defendants did not own the copyright in the Rooster labels and related works. The court noted that a third party never claimed to be the owner of the copyright, which undermined the plaintiff’s attempt to displace the defendants’ ownership position.
Finally, the court addressed the invalidity allegations, including whether the mark was customary to cordyceps, whether it was capable of distinguishing, and whether registration was obtained through bad faith, fraud, or misrepresentation. In such cases, the court typically examines the circumstances of the application, the nature of the mark in the relevant market, and the proprietor’s conduct. The court also considered whether it had any discretion not to revoke or invalidate even if grounds under ss 22(1) or 23(1) were made out, and it identified the relevant circumstances to be taken into account in exercising such power. This reflects a broader principle in trade mark law: revocation and invalidation are not purely mechanical; the court may consider fairness and the overall context, although the statutory grounds remain decisive where proven.
What Was the Outcome?
The court granted the plaintiff’s requested declaration relating to an alleged infringer’s declaration, but only in part. This indicates that while the plaintiff achieved some measure of declaratory relief, it did not succeed fully in displacing the defendants’ position across all pleaded grounds. The court’s reasoning on the copyright claim, in particular, turned on the plaintiff’s failure to prove that the defendants were not the copyright proprietors, and the absence of any competing claim by a third party.
On the trade mark challenge, the court’s application of the s 22(1)(c) “common name” test and its causation/time requirements would have been decisive. Where the mark’s generic character predated registration, the statutory link to proprietor inactivity becomes difficult to establish. The court’s overall approach therefore resulted in partial success for the plaintiff, with the registration challenge not fully overturning the defendants’ trade mark position.
Why Does This Case Matter?
This decision is significant for practitioners because it clarifies how Singapore courts interpret the “common name” ground for revocation under s 22(1)(c). The court’s insistence on the causal and temporal link between the proprietor’s acts or inactivity and the mark’s genericisation is particularly useful. It prevents applicants from relying on market perceptions that existed before registration to satisfy a statutory ground that is expressly tied to post-registration proprietor conduct.
The case also underscores the evidential burden in trade mark revocation and invalidity proceedings. Applicants must prove not only that a mark is perceived in a certain way, but also that the statutory prerequisites are met, including genuine trade mark use (or lack of it) and proper reasons for any non-use. In addition, the decision illustrates that declaratory relief in copyright disputes will not be granted on assertions alone; the claimant must establish ownership and subsistence issues with adequate proof, and the court will consider the broader evidential landscape, including whether any third party claims ownership.
For brand owners and enforcement licensees, the case highlights the risks of relying on trade mark registrations when the mark may have long-standing generic or descriptive usage in the relevant market. For traders seeking to challenge registrations, the decision provides a roadmap for structuring pleadings and evidence: applicants should focus on the relevant statutory periods, the proprietor’s conduct, and the functional role of the mark as an indicator of origin rather than merely a label associated with goods.
Legislation Referenced
- Interpretation Act (including “A of the Interpretation Act” as referenced in the judgment metadata)
- Trade Marks Act (Cap. 332, 2005 Rev Ed)
- Third Schedule of the Trade Marks Act (as referenced in the judgment metadata)
- Trade Marks Act (Cap. 332) (as referenced in the judgment metadata, including references to the Act’s provisions and schedules)
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.