IP DEVELOPMENTS IN SINGAPORE. 1. Trade Mark Practice Developments in Singapore

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1 1 APAA 58TH COUNCIL MEETING 27 TH -31 ST OCTOBER 2012, CHIANG MAI, THAILAND RECOGNISED SINGAPORE GROUP TRADE MARKS COMMITTEE REPORT BY SOH KAR LIANG / TASNEEM HAQ IP DEVELOPMENTS IN SINGAPORE 1. Trade Mark Practice Developments in Singapore A. New Mediation Option for Trade Mark Proceedings in Singapore The new procedure offers a voluntary mediation option to parties involved in trade mark proceedings. This procedure took effect from 3 January It applies to trade mark opposition, invalidation and revocation proceedings before the Intellectual Property Office of Singapore ( IPOS ). This option is introduced during the Case Management Conference ( CMC ) which takes place after the parties have filed their pleading (the Statement of Grounds and the Counter-Statement). The parties may file their Agreement and Request for WIPO Mediation with the WIPO Center Office in Singapore and can select 30, 60 or 90 days as the period set aside for mediation. This period may be extended upon further request and justification by parties to the satisfaction of the Registrar. As the ongoing proceedings at IPOS remain suspended, parties do not need to apply for extensions of time to file evidence. B. Trade Mark (Amendment) Rules 2011 and Trade Mark (International Registration) Rules 2011 The Trade Mark (Amendment) Rules 2011 amend the Trade Marks Rules (R 1, 2008 Ed.) (the "TM Rules") and the Trade Mark (International Registration) Rules [the "TM (IR) Rules"] as follows: (a) Amendment of Rules 15 and 16 of the TM Rules came into effect from 1 November Rules 15 and 16 have been amended with a view to capture various types of non-traditional trade marks applications in addition to 3D shape marks and colour marks. The amendments to Rule 15 and 16 result from the amendment to the Regulations concerning the details concerning a trade mark application under the Singapore Treaty on the Law of Trademarks. (b) Amendment of the First Schedule of the TM Rules, to come into effect from 1 December The following official fee increases take effect.

2 2 Matter Fee before 1 December 2011 Fee after 1 December 2011 Updating the agent name and address for service Form TM 1 Application to register a trade mark, collective mark, certification mark, per class- Form TM 4 Filing a notice of opposition- Form TM 11 Filing a counter-statement- Form TM 12 Filing notice of attendance at hearing- Form TM 13 Application for revocation, declaration of invalidity of trade mark registration- Form TM 28 Issue of a certificate under section 103 of the Act- Form TM 42 $8.00 in respect of each trade mark number (electronic submission) $8.50 in respect of each trade mark number (other than through electronic submission) $310 (electronic submission) $340 (other than through electronic submission) $8.50 in respect of each trade mark number (electronic submission) $9.00 in respect of each trade mark number (other than through electronic submission) $341 (electronic submission) $374 (other than through electronic submission) $340 per class $374 per class $325 per class $357 per class $650 per class $715 per class $325 per class $357 per class $32 for each trade mark number $35 for each trade mark number (c) Amendment to the First Schedule of the TM (IR) Rules to come into effect from 1 December The amendment reflects revision of fees in respect of form MP1. The fee for a request to transform an international registration into national application(s) increases from $306 per class to $374 per class. (d) Amendment of the Third Schedule of the TM Rules, to come into effect from 1 January The amendment to the Third Schedule reflects changes to the Class headings and items there under brought about as a result of the 10th Edition of the Nice Classification. 2. Significant Legal Decisions in the Courts A. P. T. Swakarya Indah Busana v Haniffa Pte Ltd and another [2012] SGHC 69; Lee Seiu Kin J

3 3 The first defendant registered six trade marks in 2005, three variants of MARTIN EXECUTIVE and three variants for MARTIN ORIGINAL. These six trade marks were assigned to the second defendant. The second defendant registered other marks comprising of MARTIN such as MARTIN EMPIRE, MARTIN POLO, MARTIN SUPREME, MARTIN GOLD, MARTIN ROYAL and MARTIN CLASSIC between the years 2002 and The Plaintiff manufactures clothing under the trade marks MARTIN with MR and crown device and MARTIN Pacemaker. Their registrations date back to 1979 and 1983 respectively. The Plaintiff filed an application to invalidate fifteen of the Defendant s MARTIN composite marks on two alternative grounds, namely, (i) bad faith and (ii) fraud and misrepresentation. On bad faith, Lee J considered the undisputed evidence that before registering its marks, the first Defendant had purchased a large quantity of shirts with the Plaintiff s MARTIN Pacemaker and MARTIN GOLD trade marks. The Defendant had knowledge of the Plaintiff s MARTIN shirts as they were in the same business. It is unlikely that the Defendant chose to use the sign MARTIN in an attempt to develop their own brand. The Plaintiff s were unable to present evidence of fraud and misrepresentation on the part of Defendant so this part of the claim filed. B. The Singapore Professional Golfers' Association v Chen Eng Waye and others [2012] SGHC 113; Tan Lee Meng J The Singapore Professional Golfer s Association ( SPGA ) is a non-profit golfing association instituted proceedings against the first Defendant, Mr. Chen, the second Defendant Mr. Roy Chen and the third Defendant, Singapore Senior PGA LLP, with respect to the Defendants alleged unauthorized use of the same Singapore Senior PGA LLP and the initials SSPGA. In January 2011, the third Defendant advertised on its website that it would be conducting a Senior Professional Qualifying Test ( Senior Pro-test ) exclusively for senior golfers. Despite a cease and desist letter to the Defendants issued by the Plaintiff s solicitors in respect of their use of name similar to theirs, the third Defendant successfully applied to register the trade marks SINGAPORE SENIOR PGA and SINGAPORE SENIOR PGA and device. SPGA did not oppose or seek to cancel these trade mark registrations. On 25 th April 2011, SPGA filed an action against the Defendants for passing-off. The Defendants submitted that even if SPGA had some goodwill in golfing activities, it had no goodwill in relation to the activities of senior professional golfers at the relevant date, which it took to be January 2011 namely, when the 3 rd Defendant advertised its Senior Pro-test. Tan J. held SPGA had some goodwill in relation to golfing activities on both dates and it was not necessary to confine SPGA s goodwill to non-senior professional golfers activities. Tan J. considered that there are sufficient differences between the name and logos of the two bodies and in the context of a population which has become more literate; there would not be any real difficulties to differentiate the two parties. As it was decided that there was

4 4 no misrepresentation, the third requirement of damage suffered by SPGA was not considered. SPGA s action against the defendants was dismissed with costs. C. Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another [2012] SGHC 104; Chan Seng Onn J The Plaintiff dealt in cosmetics under the name Lady Rose. The 1 st Defendant distributed cosmetic products manufactured by VOV Cosmetics, under the name of Rose Lady. The 2 nd Defendant is a retail store which sold the Rose Lady cosmetic products. The Plaintiff sued the Defendants for trade mark infringement and passing off. The Defendants argued that Rose Lady was a descriptive of cosmetic products made from the essence of the rosa canina plant that were intended for ladies use and that the products were actually marketed under the trade mark VOV. The Court did not accept that Rose Lady was a descriptive term. The combination of Rose and Lady is distinctive. The Court noted that Rose Lady was being used as a secondary mark. Even though the products contain the trade mark VOV, this does not preclude Rose Lady from being used as a secondary mark. The Court went on to hold that there was trade mark infringement on the basis that Rose Lady and Lady Rose shared strong visual, aural and conceptual similarities and that a substantial portion of the relevant public (ie, consumers of cosmetic products) would be confused. Although the Plaintiff claimed that it had been trading under Lady Rose for 40 years, the Plaintiff was not able to show much evidence of sales (annual sales between 2003 to 2010 were generally about SGD200,000) to establish goodwill which is likely to be damaged by the Defendant s use of the Rose Lady mark. As such, the claim for passing off was dismissed. D. Doctor's Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012] 3 SLR 193; Judith Prakash J The Plaintiff is a popular international sandwich chain named SUBWAY, a name they adopted in The Plaintiff s first outlet in Singapore was opened in They registered their mark in Singapore in Classes 29, 30, 32, 42 and 43 between 1989 and The Defendant has been operating a chain of snack stalls under the name SUBWAY NICHE which sold nonya kueh, bubble tea and local snacks since The Plaintiff sued the Defendant for infringement of a registered mark, infringement of a well-known mark and passing off. The Court found SUBWAY and SUBWAY NICHE to be visually, aurally and conceptually similar. The goods and services on which SUBWAY NICHE were similar to those registered for SUBWAY. However, the Defendant took pains to distinguish his goods from the Plaintiff s: Sale, display and handing over of sandwiches to customer differed The defendant sold pre-packaged sandwiches made from sliced bread and simple ingredients, while the plaintiff s sandwiches are classic Italian submarine sandwiches

5 5 prepared on the spot. Further, the Plaintiffs took great pains to distinguish their sandwiches from normal sandwiches The prices differed significantly The Defendant s outlets employ a very different interior design scheme The Court held that there was insufficient evidence of likelihood of confusion and as such, infringement was not established, stating that it was hypothetical and speculative. Therefore, the claim for infringement of a registered mark failed. The Court went further to consider the defence of prior user and held that there was evidence to support the defence in relation to sale of sandwiches and nonya kueh but not in relation to restaurant services. The Court accepted that SUBWAY is well-known in Singapore in view of its 92 outlets and extensive marketing and advertising. However, as there was no likelihood of confusion and there was insufficient evidence that there was damage to the Plaintiff s interests. Accordingly, the claim for infringement of a well-known mark also failed. The Plaintiff s claim of passing off was dismissed because they could not establish that it had goodwill in SUBWAY in 1987 when the Defendant started selling its goods. 3. Decisions of Registrar of Trade Marks A. Ex Hacienda Los Camichines SA DE CV v Rum Creation & Products Inc [2012] SGIPOS; Hearing Officer Ms. See Tho Sok Yee, Principal Assistant Registrar of Trade Marks This was a consolidated opposition against three trade marks, namely, ZACAPA CENTENARIO (as a word mark) and two marks consisting of ZACAPA CENTENARIO with flower and woven basket designs ( the device marks ) all for rum based products in class 33. The Opponent is the registered proprietor of GRAN CETENARIO for tequila in class 33. They opposed ZACAPA CENTENARIO on the basis of a likelihood of confusion and that the device marks were liable to be prevented by the law of passing-off. In concluding that a reasonable likelihood of confusion does not exist, Registrar considered that GRAN CENTENARIO would be distinctive in Singapore where Spanish is not widely spoken. The Registrar also commented that ZACAPA is quite prominent in the device marks and the word CENTENARIO appears in much smaller font. The conclusion was that the phonetic and visual differences between ZACAPA CENTERNARIO and GRAN CENTENARIO were dominant. Further, rum and tequila are not cheap consumerables that are bought without much thought so there was a possibility that consumers would distinguish the goods.

6 6 On passing-off, the Opponent s only evidence presented in support was an invoice showing that they sold 40 units of GRAN CENTENARIO tequila to a Singapore company. The invoice post-date the date of application of the device marks so goodwill was not established. B. Starwood Hotels & Resorts Worldwide, Inc. and Another v Staywell Hospitality Group Pty Ltd [2011] SGIPOS 7; Hearing Officer Ms. Lee Li Choon, Principal Assistant Registrar of Trade Marks The Opponents are the proprietors of ST. REGIS mark registered in classes 36, 37, 41 and 42. They opposed the trade mark application for PARK REGIS (series of two marks with a device) in Singapore in classes 35 and 43 filed on 3 March The Registrar considered there was a real likelihood of confusion from the Opponent s evidence of a media report which mistook the Opponent s ST. REGIS hotel as associated or emanating from the Applicant. The Opponent was able to demonstrate that ST. REGIS was well known to the relevant sector of the public in Singapore. However, the Registrar was not convinced that ST. REGIS was well known to the public at large in Singapore, bearing in the mind the date of assessment was the application date of 3 March As at that date, the ST. REGIS hotel in Singapore had not yet been opened and the general public would not have recognised the ST. REGIS mark as well known. The Opponent was unable to establish goodwill based on this evidence so their claim for passing-off failed on this basis as well. The Opponent s claim of bad faith failed as the Applicant had a legitimate claim to the mark since they operated PARK REGIS hotels in Australia and other countries for over 40 years. The opposition succeeded on the grounds that a likelihood of confusion exists between the marks and the Opponent s mark is well-known to the relevant sector in Singapore and the Applicant s trade mark makes a connection which could damage the Opponent s interests. The Applicant s PARK REGIS mark was refused registration. Latest Update as at 17 October Park Regis filed an appeal and the High Court allowed it on the basis that whilst both signs bore some similarity, there was no possibility of confusion. Justice Judith Prakash noted that the services rendered by both proprietors are similar and the trade marks conveyed the message of royal or luxurious treatment. However, she took the view that the marks were visually different and that the St Regis hotels are not cheap hotels, potential guests are likely to do a quick Internet search or seek clarification before making their booking and this would dispel any confusion. Based on all factors, the marks are not likely to be confused. In finding that Starwood s claim that being linked to the three to four star Park Regis hotel group would hurt its reputation for luxury unpersuasive, Justice Prakash stated that even if the hotels were perceived to be economically linked, it is clear from the marketing of both hotels that Park Regis Singapore is pitched at a class or two below the St Regis Singapore. The judge also dismissed St Regis s appeal that Park Regis was passing-off its trade mark and found there was no damage to the ST REGIS trade mark from the use of the PARK REGIS trade mark and no misrepresentation or goodwill to protect at the time the PARK REGIS mark was applied in

7 She found that Starwood did not provide figures for the actual earnings of its hotel in Singapore alone for the period from the soft launch until 2 March C. The Timberland Company v Avtar Singh and Harkirat Singh Trading as Aero Club SGIPOS 14; Hearing Officer Ms. See Tho Sok Yee, Principal Assistant Registrar of Trade Marks The Applicant applied to register WOODLAND & tree device as a series in Singapore in class 25 for Clothing, clothing belts, socks, footwear, headgear. Their business began in India in 1992 and they used this trade mark at that time. The Opponent s TIMBERLAND mark was first used in 1973 in the USA. The Opponent relied on five trade mark registrations comprising of TIMBERLAND with a tree device, hereinafter referred to as the Opponent s marks ). The Registrar held that the marks were not visually or phonetically similar. There was some conceptual similarity, because both marks have devices and word references to trees and nature. However, there was no reasonable likelihood of confusion. On passing-off, the Registrar was reasonably satisfied that the Opponent had demonstrated goodwill since their average sales in Singapore between the years 2000 to 2006 was about USD10million. On misrepresentation, one piece of evidence adduced in the opposition proceedings by the Applicant related to a comparative advertisement showing a visual of two pairs of shoes with the tagline You can buy [the Opponent s shoes] from Macy s, New York at $100 a pair. Or you can buy [the Applicant s shoes] in India for Rs 890 a pair. The Registrar concluded that a normal and fair reading of the advertisement would cause the consumer to realise that two different, competing brands are being compared and the cheaper brand is putting itself out as the brand of choice. The Registrar was not persuaded that misrepresentation existed between the trade marks of the parties and the claim of passing-off failed. The claim that the use of the marks would indicate a connection between the goods of the respective parties also failed as the Opponent was unable to establish a confusing connection between the marks and consequently, the use of the Applicant s mark was not likely to damage the Opponent s interests. The opposition failed on all grounds and the Applicant s mark was allowed to proceed to registration.

January 2012 EXECUTIVE SUMMARY COPYRIGHT

January 2012 EXECUTIVE SUMMARY COPYRIGHT EXECUTIVE SUMMARY COPYRIGHT For the purposes of determining whether a defendant had copied the plaintiff s works, held that the defendant s access to the works could be established where these had been