Case Details
- Citation: [2009] SGCA 9
- Court: Court of Appeal of the Republic of Singapore
- Date: 02 March 2009
- Case Numbers: CA 58/2008, 65/2008
- Tribunal/Court: Court of Appeal
- Coram: Chao Hick Tin JA; Andrew Phang Boon Leong JA; V K Rajah JA
- Judges: Chao Hick Tin JA (delivering the judgment of the court); Andrew Phang Boon Leong JA; V K Rajah JA
- Parties: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd (Appellant in CA 58/2008; Plaintiff in the Originating Summons) and Qinghai Xinyuan Foreign Trade Co Ltd (First Respondent in CA 58/2008; First Defendant below) and YCT Import & Export Pte Ltd (Second Respondent in CA 58/2008; Second Defendant below)
- Appellant / Applicant: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd
- Defendant / Respondent: Qinghai Xinyuan Foreign Trade Co Ltd and Another (and cross-appeal by the other party)
- Counsel: Tan Tee Jim SC, Christopher de Souza, Ng Guan Zhen and Zheng Shaokai (Lee & Lee) for the appellant in Civil Appeal No 58 of 2008 and the respondent in Civil Appeal No 65 of 2008; M Ravindran, Heng Su Lin Vicki and Sukumar Karuppiah (Ravindran Associates) for the first respondent in Civil Appeal No 58 of 2008 and the appellant in Civil Appeal No 65 of 2008; Lau Kok Keng and Low Wei Ling Wendy (Rajah & Tann LLP) for the second respondent in Civil Appeal No 58 of 2008
- Legal Areas: Civil Procedure; Costs; Declaratory relief; Intellectual Property (Trade Marks and Copyright)
- Statutes Referenced (as stated in metadata): Order 59 r 3(2) Rules of Court (Cap 322, R 5, 2006 Rev Ed); Order 15 r 16 Rules of Court (Cap 322, R 5, 2006 Rev Ed); Trade Marks Act (Cap 332, 2005 Rev Ed) including ss 7(1)(a), 7(1)(d), 7(6), 7(6), 22(1)(a), 22(1)(b), 22(1)(c), 23(1), 23(4); Copyright Act (Cap 63, 2006 Rev Ed)
- Cases Cited: [2001] SGIPOS 2; [2009] SGCA 9 (self-citation as the reported decision)
- Judgment Length: 78 pages, 46,475 words
- High Court Reference: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2008] 3 SLR 296
- Originating Summons: Originating Summons No 2038 of 2006
- Procedural Context: Appeal and cross-appeal against High Court decision dismissing prayers for revocation/invalidity of trade mark registration but granting a limited declaratory order regarding copyright
Summary
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal concerned a dispute over the validity of a Singapore trade mark registration for a “rooster flower” sign used in the cordyceps trade. The plaintiff sought revocation and/or invalidation of the proprietor’s registration, and also sought declaratory relief relating to copyright in labels associated with the sign. The High Court dismissed the plaintiff’s challenges to the trade mark registration but granted a declaration (limited to the first defendant). Both sides appealed.
The Court of Appeal addressed, among other things, the statutory grounds for revocation (including lack of genuine use and non-use for an uninterrupted period of five years, and whether the mark had become a common name in the trade) and invalidation (including that the sign had become customary in the trade, lacked capacity to distinguish, was registered in bad faith, and was procured by fraud or misrepresentation). The Court also considered the court’s power and discretion to grant declaratory orders, including declarations touching on criminal consequences of conduct, and the principles governing costs where there are co-defendants.
What Were the Facts of This Case?
The parties were companies involved in the business of traditional Chinese medicines, with a particular focus on cordyceps. The plaintiff, Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd, was a Singapore-registered company. The first defendant, Qinghai Xinyuan Foreign Trade Co Ltd, was a company registered in the People’s Republic of China (“PRC”) and described itself as the PRC’s largest producer and exporter of cordyceps. The second defendant, YCT Import & Export Pte Ltd, was also a Singapore-registered company and was the exclusive licensee of the first defendant’s Singapore trade mark.
The first defendant owned two trade marks bearing the “rooster flower” sign: one registered in Singapore (the “Opposed Mark”) and another registered in the PRC (the “China Mark”). The Court of Appeal used the term “Rooster Sign” to refer generically to any sign featuring the rooster flower, whether or not registered as a trade mark, other than the China Mark and the Opposed Mark. The factual background included evidence that marks bearing the rooster sign had been used in the cordyceps trade even before the registration of the China Mark and the Opposed Mark.
A key event in the dispute was a raid conducted on 29 November 2005. Search warrants premised on the first defendant’s registration of the Opposed Mark were executed against the plaintiff. As a result, cordyceps in the plaintiff’s possession bearing marks identical and/or similar to the Opposed Mark were seized. Subsequently, on 5 May 2006 and 11 May 2006, charges under the Trade Marks Act and the Copyright Act were filed against the plaintiff and some of its directors via private summonses, pursuant to fiats granted by the Attorney-General’s Chambers.
Approximately six months later, on 1 November 2006, the plaintiff commenced the Originating Summons seeking revocation and/or invalidation of the Opposed Mark. In addition, the plaintiff sought a declaration that any copyright in various labels relating to the Opposed Mark did not subsist in favour of the defendants and that the plaintiff had not infringed any such copyright. The High Court dismissed the revocation and invalidation prayers but granted the declaration, albeit limited to the first defendant. The plaintiff appealed against the dismissal of its trade mark challenges, while the first defendant cross-appealed against the grant of the declaration.
What Were the Key Legal Issues?
First, the Court of Appeal had to determine whether the Opposed Mark should be revoked under the Trade Marks Act. The plaintiff relied on statutory grounds including: (a) lack of genuine use of the mark and (b) non-use for an uninterrupted period of five years, as well as (c) the argument that the mark had become a common name in the trade due to the proprietor’s acts or inactivity. These issues required the court to examine what constituted “genuine use” in the relevant period and whether the evidence showed use that met the statutory threshold.
Second, the Court of Appeal had to consider whether the Opposed Mark should be invalidated. The plaintiff argued that the sign was customary in the trade (s 7(1)(d)), that it did not satisfy the definition of a trade mark because it lacked capacity to distinguish (s 7(1)(a)), and that the application for registration was made in bad faith (s 7(6)). It also raised allegations that the registration was procured by fraud and/or misrepresentation (s 23(4)). These grounds required the court to assess the factual and evidential basis for claims of customariness, distinctiveness, bad faith, and fraud.
Third, the Court of Appeal addressed the declaratory relief sought by the plaintiff. The plaintiff’s declaration was not merely about civil rights; it also had implications for the criminal consequences of conduct, given that the defendants had already pursued criminal charges. The court therefore had to consider its jurisdiction and discretion to grant declarations under Order 15 r 16 of the Rules of Court, and whether exceptional circumstances existed to justify a declaration that could affect criminal exposure.
How Did the Court Analyse the Issues?
The Court of Appeal began by setting out the procedural and substantive framework. It treated the appeal and cross-appeal as requiring a structured analysis: (i) revocation and invalidation of the Opposed Mark under the Trade Marks Act; (ii) the plaintiff’s request for declaratory relief concerning copyright and alleged non-infringement; and (iii) costs principles, including the general approach to costs where there are multiple co-defendants.
On revocation, the Court of Appeal focused on the burden of proof and the statutory requirements. For s 22(1)(a) and s 22(1)(b), the court examined the concept of “genuine use” and whether there had been use of the Opposed Mark during the relevant period. The analysis required the court to distinguish between token or non-genuine use and use that reflects real commercial activity in the market. The court also considered whether there had been an uninterrupted period of non-use for five years, which would trigger revocation under the non-use limb.
For s 22(1)(c), the court analysed whether the Opposed Mark had become a common name in the cordyceps trade due to the proprietor’s acts or inactivity. This required the court to consider the evidential question of how the sign was perceived and used in the trade, and whether the proprietor’s conduct (or failure to act) allowed the mark to lose its trade mark function and become generic or descriptive of the product itself. The Court of Appeal’s approach reflected the statutory policy of preventing monopolisation of signs that have effectively become part of the common language of commerce.
On invalidation, the Court of Appeal addressed multiple grounds. Under s 7(1)(d), it considered whether the Rooster Sign had become customary in the cordyceps trade. “Customary” in this context is not merely widespread usage; it is usage that indicates the sign has become a customary designation in the relevant trade, thereby undermining its role as an indicator of origin. Under s 7(1)(a), the court examined whether the sign had the requisite capacity to distinguish. This involved assessing whether consumers in the relevant market would perceive the sign as identifying trade origin rather than as a non-distinctive or descriptive feature.
The court then turned to s 7(6) and s 23(4), which involve allegations of bad faith and fraud/misrepresentation. The Court of Appeal analysed what “bad faith” means for trade mark purposes and applied that standard to the evidence concerning the proprietor’s conduct in obtaining registration. It also considered whether the statutory fraud/misrepresentation provision was applicable on the facts, including whether the plaintiff’s case fell within the scope of the provision as interpreted under the Trade Marks Act framework. The court’s reasoning emphasised that allegations of bad faith and fraud require careful evidential scrutiny, because they go to the integrity of the registration process.
Importantly, the Court of Appeal also considered whether there was a residual discretion not to grant relief even where statutory grounds for revocation and/or invalidation were made out. The judgment compared the position under the earlier trade mark regime (the 1992 Trade Marks Act) with the current Trade Marks Act and examined Parliament’s intention, case law, and academic commentary. The court’s preliminary opinion and ultimate conclusion on this point were significant because they affected whether the court could refuse relief on equitable or policy grounds even after statutory invalidity or revocation grounds were established.
On the declaratory order, the Court of Appeal addressed a preliminary point of res judicata and then the substantive question of whether the High Court was correct to grant the declaration. The court analysed the court’s power to grant declaratory orders under Order 15 r 16, emphasising that the power is discretionary. It also articulated the general rule that the court would be slow to grant declarations that touch on criminal consequences of conduct unless exceptional circumstances exist. This reflects the principle that courts should not, as a general matter, pre-empt criminal adjudication through civil declarations, absent compelling reasons.
Applying these principles, the Court of Appeal assessed whether the circumstances justified the grant of the declaration in the present case and whether the declaration should be limited as the High Court had done. The analysis therefore balanced the plaintiff’s interest in legal certainty against the judicial caution required when declarations may affect criminal exposure.
Finally, the Court of Appeal considered costs. It reiterated the general rule that where there are two or more co-defendants, only one set of costs would typically be payable. However, separate costs may be ordered where reasonable grounds exist for severance of defences. This required the court to evaluate whether the defendants’ positions were sufficiently distinct to justify separate cost treatment.
What Was the Outcome?
The Court of Appeal ultimately determined the appeal and cross-appeal in relation to both the trade mark challenges and the declaratory relief. The decision addressed whether the Opposed Mark should be revoked and/or invalidated on the pleaded statutory grounds, and whether the declaration concerning copyright subsistence and non-infringement should stand.
In practical terms, the outcome affected (i) the continuing legal status of the Opposed Mark in Singapore and (ii) the extent to which the plaintiff could obtain civil declarations that bear on the defendants’ enforcement posture, including enforcement that had already resulted in criminal charges. The costs outcome further clarified how costs should be allocated in multi-defendant trade mark and copyright disputes.
Why Does This Case Matter?
This case is important for practitioners because it consolidates several recurring issues in Singapore trade mark litigation: the evidential and legal thresholds for “genuine use” and non-use revocation; the circumstances in which a mark may be treated as customary or non-distinctive; and the heightened evidential scrutiny for allegations of bad faith, fraud, and misrepresentation. For brand owners and challengers alike, the decision underscores that statutory grounds for invalidity and revocation are not merely formal—courts will examine how the sign operates in the market and how the registration process was conducted.
From a procedural and remedies perspective, Wing Joo Loong also provides guidance on declaratory relief in contexts where criminal consequences are implicated. The Court of Appeal’s discussion of the discretionary nature of declaratory orders and the general reluctance to grant declarations affecting criminal exposure unless exceptional circumstances exist is particularly relevant for litigants seeking civil certainty in the shadow of criminal enforcement.
Finally, the costs discussion is practically useful. Trade mark disputes often involve multiple defendants (for example, a proprietor and an exclusive licensee). The Court of Appeal’s articulation of when separate costs may be ordered helps parties plan litigation strategy and anticipate cost exposure.
Legislation Referenced
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), Order 59 r 3(2)
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), Order 15 r 16
- Trade Marks Act (Cap 332, 2005 Rev Ed), including ss 7(1)(a), 7(1)(d), 7(6), 22(1)(a), 22(1)(b), 22(1)(c), 23(1), 23(4)
- Copyright Act (Cap 63, 2006 Rev Ed)
Cases Cited
- [2001] SGIPOS 2
- [2009] SGCA 9
Source Documents
This article analyses [2009] SGCA 9 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.