Case Details
- Citation: [2009] SGCA 9
- Case Title: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal
- Court: Court of Appeal of the Republic of Singapore
- Decision Date: 02 March 2009
- Judges: Chao Hick Tin JA; Andrew Phang Boon Leong JA; V K Rajah JA
- Coram: Chao Hick Tin JA; Andrew Phang Boon Leong JA; V K Rajah JA
- Case Numbers: CA 58/2008, 65/2008
- Tribunal/Court Below: High Court (Originating Summons No 2038 of 2006)
- High Court Citation: Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2008] 3 SLR 296
- Parties (Appellant/Applicant): Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd
- Parties (Respondents): Qinghai Xinyuan Foreign Trade Co Ltd; YCT Import & Export Pte Ltd
- Procedural Posture: Appeal and cross-appeal against the High Court judge’s decision on (i) revocation/invalidation of a Singapore trade mark and (ii) grant of a declaratory order concerning copyright and non-infringement.
- Represented by (Appeal/Cross-Appeal 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 Parties
- Legal Areas: Civil Procedure — Costs; Civil Procedure — Declaratory order; Copyright — Declaratory order
- Trade Marks and Trade Names: Invalidity; Revocation; Registration criteria; Customary marks; Bad faith; Fraud/misrepresentation; Genuine use; Common name in the trade
- Statutes Referenced: Copyright Act (Cap 63, 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)-(c), 23(1), 23(4); Order 15 r 16 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)
- Length of Judgment: 78 pages, 45,851 words
Summary
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal [2009] SGCA 9 is a significant Court of Appeal decision on the interaction between trade mark invalidation/revocation and the court’s discretion to grant declaratory relief, including declarations touching on criminal consequences. The dispute arose after a raid and subsequent criminal proceedings were commenced against the plaintiff in connection with cordyceps products bearing signs alleged to be identical or similar to the defendants’ registered “rooster flower” trade marks.
On the trade mark issues, the Court of Appeal addressed multiple statutory grounds under the Trade Marks Act, including lack of genuine use, non-use for a continuous period of five years, the mark becoming a common name in the trade, customariness, lack of capacity to distinguish, and allegations of bad faith and fraud/misrepresentation in obtaining registration. The court also considered whether, even where grounds for revocation or invalidation are made out, there exists a residual discretion not to grant relief. On the declaratory relief issues, the Court of Appeal examined the power under the Rules of Court to grant declarations, particularly where the declaration may affect criminal consequences, and the general principle that courts are slow to grant such declarations unless exceptional circumstances exist.
The Court of Appeal ultimately upheld the High Court’s approach in granting a declaration concerning copyright subsistence and non-infringement (though limited in scope), while addressing the plaintiff’s challenge to the trade mark registration. The decision provides a structured and authoritative account of the evidential and doctrinal requirements for revocation/invalidation and clarifies the court’s cautious stance toward declarations that could effectively pre-empt criminal adjudication.
What Were the Facts of This Case?
The parties were companies operating in the traditional Chinese medicines industry, with a particular focus on cordyceps. The plaintiff, Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd (“Wing Joo”), and the second defendant, YCT Import & Export Pte Ltd (“YCT”), were Singapore-registered entities. The first defendant, Qinghai Xinyuan Foreign Trade Co Ltd (“Qinghai Xinyuan”), 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.
Qinghai Xinyuan owned two “rooster flower” trade marks: one registered in Singapore (the “Opposed Mark”) and another registered in the PRC (the “China Mark”). The “rooster flower” sign was used in the cordyceps trade even before the PRC registration and before the Singapore registration. To avoid confusion, the Court of Appeal referred to any sign featuring the “rooster flower” generically as the “Rooster Sign”, while distinguishing between the China Mark and the Opposed Mark.
On 29 November 2005, search warrants premised on Qinghai Xinyuan’s registration of the Opposed Mark were executed against Wing Joo. As a result of the raid, cordyceps in Wing Joo’s possession bearing marks alleged to be identical and/or similar to the Opposed Mark were seized. Subsequently, on 5 May 2006 and 11 May 2006, charges were filed against Wing Joo and some of its directors via private summonses, with fiats granted by the Attorney-General’s Chambers. The charges were brought under the Trade Marks Act and the Copyright Act.
Approximately six months later, on 1 November 2006, Wing Joo commenced Originating Summons No 2038 of 2006. It sought revocation and/or invalidation of the Opposed Mark. It also sought a declaration that any copyright in various labels relating to the Opposed Mark did not subsist in favour of Qinghai Xinyuan or YCT, and that Wing Joo had not infringed any such copyright. The High Court dismissed the prayers for revocation and invalidation but granted a declaration, albeit limited to the first defendant. Both parties appealed: Wing Joo appealed against the dismissal of the trade mark challenges, while Qinghai Xinyuan 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 and/or invalidated under the Trade Marks Act. This required the court to examine several distinct statutory grounds, including whether the mark had been subject to genuine use during the relevant period, whether there had been non-use for an uninterrupted period of five years, and whether the mark had become a common name in the trade due to the proprietor’s acts or inactivity. The court also had to consider whether the Rooster Sign had become customary in the trade and whether the sign satisfied the statutory definition of a trade mark, including whether it had the capacity to distinguish.
Second, the court had to address allegations that the Opposed Mark was registered in bad faith and/or procured by fraud and/or misrepresentation. These grounds required the court to consider what constitutes “bad faith” for the purposes of section 7(6) of the Trade Marks Act, and whether the plaintiff had made out the evidential basis for fraud or misrepresentation under section 23(4) (as well as the applicability of that provision to the case). The court also considered whether, even if grounds for revocation or invalidation were established, it retained a residual discretion not to grant relief.
Third, on the declaratory relief, the court had to decide whether the High Court was correct to grant the declaration sought by Wing Joo. This involved the court’s power to grant declarations under Order 15 r 16 of the Rules of Court, including whether the court may grant declarations concerning criminal consequences of conduct. The Court of Appeal reiterated the general principle that the court is slow to grant such declarations unless exceptional circumstances exist, and it assessed whether those circumstances were present.
How Did the Court Analyse the Issues?
The Court of Appeal approached the trade mark issues by working through the statutory scheme in a disciplined manner. On revocation, the court considered the burden of proof and the evidential requirements for establishing lack of genuine use and non-use. The analysis turned on what constitutes “genuine use” in the relevant period and whether the proprietor’s activities amounted to use in the trade mark sense rather than token or merely defensive use. The court also examined whether the Opposed Mark had been unused for an uninterrupted period of five years, which would trigger revocation under the relevant provisions.
In addition, the court addressed the “common name” ground under section 22(1)(c). This required the court to assess not only whether the Rooster Sign had become generic or descriptive in the cordyceps trade, but also whether that change could be attributed to the registered proprietor’s acts or inactivity. The court’s reasoning reflected the policy behind trade mark law: a registered mark should not remain enforceable if the public has come to understand the sign as the name of the goods rather than an indicator of origin. The court therefore evaluated evidence of how the sign was used and perceived in the market, including whether it had become a common reference for cordyceps products.
For invalidation, the court analysed whether the Rooster Sign had become customary in the trade under section 7(1)(d). Customariness is distinct from genericness: it focuses on whether the sign has become a customary feature of trade in the relevant goods, such that it no longer performs the trade mark function. The court also considered section 7(1)(a), which concerns whether the sign satisfies the definition of a trade mark, including whether it has the capacity to distinguish. This required the court to consider the sign’s inherent and/or acquired distinctiveness, and whether the evidence supported a conclusion that the sign could indicate origin.
On bad faith and fraud/misrepresentation, the Court of Appeal examined the meaning of “bad faith” under section 7(6). The court’s analysis emphasised that bad faith is not established by mere knowledge of another’s use or by the fact that a registration is contested; rather, it requires a more culpable state of mind or conduct in obtaining registration. The court also addressed whether section 23(4) (fraud and/or misrepresentation) applied to the case, and it assessed whether the plaintiff had met the evidential threshold for fraud or misrepresentation in the registration process. The court further considered whether, if grounds for revocation or invalidation were made out, it should nonetheless exercise a residual discretion not to grant relief. The reasoning reflected the statutory nature of trade mark invalidation/revocation: where Parliament has set out grounds for removal, the court should be cautious about introducing an additional discretionary layer unless the statutory framework clearly permits it.
Turning to the declaratory relief, the Court of Appeal analysed the court’s power under Order 15 r 16. The court emphasised that the power to grant declarations is discretionary, and that declarations—particularly those that may affect criminal consequences—are generally not granted unless exceptional circumstances exist. This caution is rooted in the separation between civil and criminal adjudication, and in the concern that civil declarations should not effectively determine issues that are properly for criminal courts to decide.
In the present case, the Court of Appeal considered whether the High Court’s grant of the declaration was appropriate. It examined the scope of the declaration and whether it was limited in a manner that avoided prejudging the criminal proceedings. The court also addressed a preliminary point of res judicata, assessing whether the declaration was barred by prior determinations. Ultimately, the Court of Appeal concluded that the declaration was properly granted in the circumstances, though it remained constrained by the principles governing declaratory relief and the need to avoid undue interference with criminal processes.
What Was the Outcome?
The Court of Appeal dismissed Wing Joo’s appeal against the High Court’s dismissal of the prayers for revocation and invalidation of the Opposed Mark. In other words, the Opposed Mark remained registered and enforceable, and the plaintiff’s statutory challenges did not succeed on the grounds pleaded.
On the cross-appeal, the Court of Appeal upheld the High Court’s grant of a declaration concerning copyright subsistence and non-infringement, while maintaining the limits that the High Court had imposed (including limiting the declaration to the first defendant). The practical effect was that Wing Joo obtained civil clarity on the copyright issue, but it did not obtain the broader trade mark relief it sought to undermine the defendants’ enforcement position.
Why Does This Case Matter?
This decision matters because it provides a comprehensive appellate treatment of multiple trade mark grounds in a single dispute, including genuine use, non-use, common name, customariness, capacity to distinguish, and allegations of bad faith and fraud/misrepresentation. For practitioners, the case is useful as a checklist of the evidential and doctrinal elements that must be addressed when seeking revocation or invalidation under the Trade Marks Act. It also illustrates how courts evaluate market evidence to determine whether a sign has lost its trade mark function.
Equally important is the Court of Appeal’s discussion of declaratory relief in the context of criminal consequences. The case reinforces the general caution that courts are slow to grant declarations that could effectively determine criminal liability or pre-empt criminal adjudication. At the same time, it demonstrates that declarations may still be granted where the circumstances are exceptional and where the declaration is carefully tailored to avoid prejudicing criminal proceedings.
From a litigation strategy perspective, Wing Joo Loong highlights the risks of pursuing broad civil declarations alongside trade mark invalidation/revocation. It also underscores the importance of framing evidence and arguments to meet the statutory thresholds, particularly for “genuine use” and for subjective grounds such as bad faith and fraud. For law students, the case is a valuable study in how appellate courts structure legal analysis across multiple statutory provisions and procedural doctrines.
Legislation Referenced
- Copyright Act (Cap 63, 2006 Rev Ed)
- Trade Marks Act (Cap 332, 2005 Rev Ed), including sections 7(1)(a), 7(1)(d), 7(6), 22(1)(a), 22(1)(b), 22(1)(c), 23(1), and 23(4)
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), Order 15 r 16
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), Order 59 r 3(2)
Cases Cited
- [2001] SGIPOS 2
- [2008] 3 SLR 296
- [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.