Intellectual Property Law

Date01 December 2003
Published date01 December 2003
Citation(2003) 4 SAL Ann Rev 323
AuthorTAN TEE JIM, SC LLB (Singapore), LLM (London); Advocate and Solicitor (Singapore) NG-LOY WEE LOON LLB (National University of Singapore), LLM (London); Advocate and Solicitor (Singapore); Deputy Director, IP Academy Associate Professor, Faculty of Law, National University of Singapore
Trade marks and passing off
Infringement: identical or similar marks?

16.1 Section 27 is the infringement provision in the Trade Marks Act (Cap 332, 1999 Rev Ed) (‘Trade Marks Act 1998’). Section 27(1) sets out the elements to be proved where the mark on the allegedly infringing goods is identical with the registered trade mark, whereas s 27(2) deals with the situation where the marks are only similar. The critical difference is that, where the marks are similar, s 27(2) requires proof of a likelihood of confusion; in s 27(1), this is presumed.

16.2 This advantage that s 27(1) has over s 27(2) makes it worth the while for trade mark lawyers to argue that the marks in question in their case are identical. For this purpose, the defendant”s mark does not have to be exactly the same as the registered trade mark in order to be considered identical: Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd[2003] 4 SLR 755. The registered trade mark was ‘KATANA GOLF’ trade mark and ‘kG’ logo while the defendant”s mark was just the word ‘KATANA’. It was held that the marks were identical as the defendant”s mark had reproduced the ‘distinctive and dominant components’ of the registered trade mark (at [17], referring with approval to SA Société LTJ Diffusion v SA Sadas[2003] FSR 1 at [A31]—[A49]). (See ‘Parallel imports’, paras 16.4—16.27 infra for a more detailed discussion of the Pan-West case.)

16.3 On the comparison between marks, the case of British Sugar Plc v James Robertson & Sons Ltd[1996] RPC 281 is enlightening and amusing. In this case, the registered trade mark was ‘TREAT’ while the defendant”s mark was ‘Robertson”s Toffee Treat’. Jacob J held that the defendant”s mark was identical to the registered trade mark, since ‘Treat’ appears in the defendant”s mark. In the course of his judgment, he also said (at 294):

[I]t is possible for the sign to be hidden or swamped. No-one but a crossword fanatic, for instance, would say that ‘treat’ is present in ‘theatre atmosphere’.

Parallel imports

16.4 It would be fair to say that, generally speaking, Singapore adopts an ‘international exhaustion of rights’ principle within her intellectual property (‘IP’) regime. By this, it means that an IP right holder can no longer control the importation into Singapore of protected goods and/or their sale here, after such goods have been put on the market anywhere in the world, by or with the consent of the IP right holder. The IP right holder”s right, it is said, has been exhausted by the first sale. Such goods are often called ‘parallel imports’.

16.5 In the Trade Marks Act 1998, this principle is embodied in s 29:

(1) Notwithstanding section 27 [the infringement provision], a registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market, whether in Singapore or outside Singapore, under that trade mark by the proprietor of the registered trade mark or with his express or implied consent (conditional or otherwise).

(2) Subsection (1) does not apply where the condition of the goods has been changed or impaired after they have been put on the market, and the use of the registered trade mark in relation to those goods is detrimental to the distinctive character or repute of the registered trade mark.

16.6 Similar provisions exist in the other IP legislation: ss 25(3) and 25(4) of the Copyright Act (Cap 63, 1999 Rev Ed) (see paras 16.37—16.40 in (2001) 2 SAL Ann Rev 288); s 66(2)(g) of the Patents Act (Cap 221, 2002 Rev Ed) (note that limited changes are in the pipeline in the patents scene to give effect to Singapore”s obligation under the Free Trade Agreement with the US); s 30(7) of the Registered Designs Act (Cap 266, 2001 Rev Ed).

16.7 Parallel imports are, in essence, genuine goods, made by or with the consent of the IP right holder. Looked at in this light, it becomes clear why there is no reason for prohibiting their resale in Singapore.

16.8 But which IP right holder are we referring to — the one in Singapore or outside of Singapore? It is possible for an IP right to be owned by different entities in different countries. In this scenario, the goods made and sold by the IP right holder in one country are considered genuine in that country. Are they also genuine for our purposes?

16.9 This issue arose in two 2003 cases decided within three days of each other: Hup Huat Food Industries (S) Pte Ltd v Liang Chiang Heng[2003] SGHC 244, and Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd (para 16.2 supra).

16.10 In the Pan-West case, the plaintiff was the registered proprietor of the ‘KATANA GOLF’ trade mark in Singapore for golf clubs etc. In Japan, the mark ‘KATANA’ was registered in the name of another entity, Umeda Shokai KK (‘Umeda’) for golf clubs. Umeda was unrelated to the plaintiff. The defendant imported Umeda”s KATANA golf clubs into Singapore, and was sued by the plaintiff for infringement of its registered trade mark and for passing off. There was prima facie infringement of the plaintiff”s registered trade mark within s 27(1) of the Trade Marks Act 1998 (see discussion above). The defence relied on, inter alia, s 29 of the Act, arguing that it provided a defence to trade mark infringement when the goods involved were ‘parallel imports’. The plaintiff applied for, and obtained, an order for summary judgment. There was an appeal against this order, which was heard by Lai Kew Chai J.

16.11 In an extremely concise judgment, Lai J dismissed the defendant”s case. The judge crystallised the issue right at the outset: in determining whether there is trade mark infringement under the Trade Marks Act 1998, the relevant consent is that of the trade mark registered proprietor in Singapore. As the judge pointed out at [14]:

…‘the proprietor’ must refer to the proprietor or registered owner of the trade mark infringed against. It also follows that the trade mark complained against must be a trade mark that is registered in the Singapore register of trade marks (see further s 2(5) [Trade Marks Act 1998]).

16.12 Section 2(5) of the Trade Marks Act 1998 provides that:

References in this Act to registration (in particular, in the expression ‘registered trade mark’) are, unless the context otherwise requires, to registration in the register.

16.13 This is consistent with the principle in IP law that IP rights are territorial in nature. In the case of trade marks, the registration of a trade mark in one territory gives a bundle of exclusive rights to the trade mark proprietor in that territory. If the same entity registers the trade mark in different territories, he gets a separate bundle of exclusive rights in each territory. One of the exclusive rights is the right to control importation of goods bearing his trade mark (see in particular s 27(4)(c) of the Trade Marks Act 1998). It is precisely this territorial nature of trade mark rights that allows him to segregate the markets in different territories by exercising this importation right to prevent goods he puts on the market in one territory from entering into another territory. To some, this is an abuse of the trade mark monopoly, since the goods originate from the same party and the trade mark proprietor has already received his just dues in the first sale of the goods. The principle of ‘international exhaustion of rights’ is the means to correct this abuse.

16.14 If different entities register the trade mark in different territories — Singapore and Japan, in this case — then the monopoly over the use of the trade mark in each territory is vested in the respective trade mark proprietors. Goods made by and sold in Japan by the Japanese trade mark proprietor are genuine goods in Japan, but they are not genuine goods in Singapore because they were not made by or with the consent of the Singapore trade mark proprietor; the latter has not received any returns from the first sale of the Japanese goods.

16.15 Therefore, from this policy point of view, it is right to refer to the consent of the Singapore trade mark proprietor when determining if the Singapore trade mark has been infringed.

16.16 As Lai J put it, the case before him ‘could not strictly be “parallel imports”’ (at [55]). For this simple reason, s 29 did not apply to exonerate the defendant.

16.17 What was critical to Lai J”s conclusion in the Pan-West case was the fact that the plaintiff (the Singapore proprietor) and Umeda (the Japanese proprietor) were not related. He emphasised that the parties were ‘separate and distinct entities’ (at [53]). If it had been otherwise, the judge might have arrived at a different conclusion; then, it might be said that the plaintiff impliedly gave its consent to the manufacture and sale of the Japanese goods by Umeda. Support for this view comes from Revlon Inc v Cripps & Lee Ltd[1980] FSR 85 (one of the cases examined by Lai J), where the Revlon trade mark in the US (country of first sale) was registered in the name of the parent company, while the Revlon trade mark in the UK (country of importation) was registered in the name of the subsidiary. It was held that the UK trade mark had not been infringed by the importation and sale of the US goods because the subsidiary must be taken to have given its consent to the use of the Revlon mark by the parent company. It is in this case that Templeman LJ (as he then was) made one of his better known remarks: the Revlon group of companies could not escape the statutory provision legitimising parallel imports (s 4(3)(a) of the repealed UK Trade Marks Act 1938) by ‘substituting the monkey for the organ-grinder’ (at 116).

16.18 This explains the following reason, inter alia, given by Lai J as to why s 29 did not apply to the case before him (at [35]):

[T]he defendants” club was made by the registered proprietor of the Umeda Trade Mark in Japan, which was not a subsidiary or an associated company of the plaintiffs. [emphasis added]

16.19 This fact — that...

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