Intellectual Property Law

Citation(2008) 9 SAL Ann Rev 360
Date01 December 2008
Published date01 December 2008
Trade marks

17.1 The body of local law on the registration criteria in the Trade Marks Act (Cap 332, 1999 Rev Ed) is building up. The year 2008 saw the report of two High Court cases, one dealing with the ‘distinctiveness’ criterion and the other dealing with the prohibition relating to ‘conflicts with earlier rights’.

Section 7: Distinctiveness

17.2 The High Court”s judgment in Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd[2008] 3 SLR 296 has some interesting implications on the distinctiveness requirement. Let us first look at what distinctiveness means in trade mark law, as laid down in case law from Singapore, the UK courts and the ECJ decided prior to this case.

17.3 The distinctiveness requirement is set out in s 7 of our Trade Marks Act (Cap 332, 1999 Rev Ed). This is modelled on s 3 of the Trade Marks Act 1994 (UK) (and correspondingly, on Art 3 of the EU Trade Marks Directive 1988). This requirement is intimately tied to the ‘badge of origin’ function of a trade mark, that is, its ability to inform the consumer that the goods or services in question come from a particular trade source. There are actually three concepts in the distinctiveness criterion: ‘capacity to distinguish’, ‘inherent distinctiveness’ and ‘de facto distinctiveness’.

17.4 An example of a mark which does not possess any ‘capacity to distinguish’ is the word ‘SOAP’ used in relation to the product soap. If a soap manufacturer/trader applies to register the word ‘SOAP’ in respect of soap, his application must be refused, and the reason is obvious: ‘SOAP’ cannot in any way be said to be the trade mark of this soap manufacturer/trader or, for that matter, of any soap manufacturer/trader. The word ‘SOAP’ is not a trade mark at all; it is the name of the product itself. (This ‘SOAP’ for soap example was given

in the English case, British Sugar Plc v James Robertson & Sons Ltd[1996] RPC 281.) The Trade Marks Act puts it in this way: a sign which is incapable of distinguishing goods or services provided in the course of trade by a person from goods or services provided by any other person does not qualify as a ‘trade mark’ and, therefore, cannot be registered (see s 7(1)(a) read with the statutory definition of ‘trade mark’ in s 2(1)). It is not difficult to cross this ‘capacity to distinguish’ threshold. The High Court in Nation Fittings (M) Sdn Bhd v Oystertec Plc[2006] 1 SLR 712 has described ‘capacity to distinguish’ as a ‘relatively low threshold criterion’ (at [136]). One might even say that this is a very low threshold meant only to foil attempts to register generic descriptions of products or services, such as ‘SOAP’ for soap.

17.5 A mark which crosses the ‘capacity to distinguish’ threshold may not necessarily possess any ‘inherent distinctiveness’. A local example of a mark falling into this category is the word ‘BREATHABLE’ used in relation to sanitary napkins. (See Uni-Charm Corp v The Procter & Gamble Co[2003] SGIPOS 12, a decision of the Singapore Trade Marks Registry). The word ‘BREATHABLE’ is not so descriptive of sanitary napkins that it denotes the goods themselves, but it does have some (positive) descriptive connotations in the context of these goods. There is a reason why the law should prima facie refuse to let a business register ‘BREATHABLE’ as a trade mark for its sanitary pads: the public seeing or hearing the word ‘BREATHABLE’ in the context of sanitary napkins will take it at its face value, that is, as a word which describes the quality of the goods. In other words, the word ‘BREATHABLE’inherently cannot operate as a badge of origin for sanitary napkins. The types of marks which lack ‘inherent distinctiveness’ are specified in ss 7(1)(b) to 7(1)(d) of the Trade Marks Act. These provisions are set out below:

Section 7(1) — The following shall not be registered:

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; and

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

17.6 It is especially clear from ss 7(1)(c) and 7(1)(d) that the objection to registration therein lies in the descriptive nature of the mark in the context of the goods or services in question. Section 7(1)(b)

captures marks which may not be descriptive but which are, nonetheless, not normally perceived by the public as badges of origin. The ‘devoid of distinctive character’ phrase used in s 7(1)(b) may be regarded as a sort of general ‘catch all’ formula for marks which lack ‘inherent distinctiveness’. Examples of marks which can fall into s 7(1)(b) are common surnames (eg, Nichols plc”s Trade Mark Application[2003] RPC 16) and colours (eg, Libertel Groep BV v Benelux-Merkenbureau[2004] FSR 4).

17.7 The third type of distinctiveness, ‘de facto distinctiveness’, operates as an exception to the prohibition set out in ss 7(1)(b) to 7(1)(d). The Trade Marks Act (Cap 332, 1999 Rev Ed) puts it this way in s 7(2):

A trade mark shall not be refused registration by virtue of subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

17.8 A local example of a mark that was allowed registration under s 7(2) is ‘MTV’ for entertainment services provided via the internet: see Viacom International Inc v Gary Lee Ongkowidjaja[2004] SGIPOS 9, a decision of the Singapore Trade Marks Registry. The mark ‘MTV’, which is defined in dictionaries to be an abbreviation for ‘music television’, could be descriptive in the context of the entertainment services. This, however, was not fatal because it was proved that this mark had been sufficiently used by the applicant prior to the date of the application such that it had become distinctive for the service of providing entertainment programmes via the Internet. In other words, as a result of the applicant”s use and promotion of the ‘MTV’ mark, the public no longer perceived the mark merely as a word descriptive of the services in question. Instead, the public on seeing or hearing ‘MTV’ in the context of internet services recognised the mark to be a trade mark in the sense that they associated it with the applicant. Evidence of such recognition or association in the mind of the public indicates the mark is doing exactly what a trade mark is supposed to do. Once that happens, there is no reason why the mark should not be allowed registration.

17.9 One very important principle emerges from the above overview of the distinctiveness requirement: if a mark is so descriptive of certain goods (or services) that it is really a generic term for certain goods or services and, therefore, lacks ‘capacity to distinguish’, it must necessarily be a mark that is caught by ss 7(1)(b) and/or 7(1)(c) and/or 7(1)(d). This principle finds judicial support in Nation Fittings (M) Sdn Bhd v Oystertec Plc[2006] 1 SLR 712. In this case, Andrew Phang J, as he then was, found that the two marks before him, which were 2-dimensional plan views of the plaintiff”s pipe-fitting, were incapable of

distinguishing pipe-fittings supplied by the plaintiff from those supplied by other traders, and for this reason, they did not qualify as ‘trade marks’. Having reached this conclusion, this is what the judge said of the ‘inherent distinctiveness’ threshold (at [137]):

[I]t is clear that if, as I have found, both these marks do not even satisfy the definition of a ‘trade mark’ under the TMA in the first instance, it would follow that they would fall foul of s 7(1)(b), as well.

17.10 When we look at the ‘capacity to distinguish’ threshold from this perspective, it is fair to say that it doesn”t add anything to the distinctiveness discussion. Why bother with ‘capacity to distinguish’ if a mark which lacks this capacity will necessarily fail at the ‘inherent distinctiveness’ threshold? This is why, in the UK/EU, they ignore the ‘capacity to distinguish’ threshold, and focus solely on the ‘inherent distinctiveness’ threshold and the ‘de facto distinctiveness’ threshold. This is the approach endorsed by the ECJ in Philips Electronics NV v Remington Consumer Products Ltd[2003] RPC 2. The effect of this ECJ decision has been considered by the UK Court of Appeal in West v Fuller Smith & Turner Plc[2003] FSR 44 at [35]. If we transpose the Singapore provisions on distinctiveness to what the UK Court of Appeal said, this is what we will get (at [35]):

The effect of the judgment of the ECJ is that [the “capacity to distinguish” concept] … must be viewed as imposing no distinctiveness requirement separate from that imposed by s 7(1)(b), (c) and (d) and 7(2). Thus, there is no requirement that the mark be both “capable of distinguishing” and “not devoid of any distinctive character”.

17.11 We now look at Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd[2008] 3 SLR 296. The plaintiff sought in these proceedings to remove the trade mark (shown below) from the register.

17.12 The Chinese characters appearing in this trade mark mean ‘rooster’. This ‘Rooster Brand’ mark was registered in respect of cordyceps (a type of Chinese traditional herb) and the defendant, a company incorporated in China, was the registered proprietor. (There was also a copyright issue with respect to the device in this trade mark. This review, however, will not cover the copyright claim.)

17.13 When one looks at the ‘Rooster Brand’ mark, it is not immediately apparent why distinctiveness is an issue. On its own, this

mark (whether the word...

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