Intellectual Property Law

• Date: 01 December 2010
• Citation: (2010) 11 SAL Ann Rev 438
• Published date: 01 December 2010
• Author: TAN Tee Jim SC LLB (Sing), LLM (Lond); Advocate and Solicitor (Singapore).

Introduction

18.1 For the etymologically minded, the term ‘sabbatical’ is derived from the Latin word ‘sabbaticus’, Greek ‘sabbatikos’ and French ‘sabbatton’ which all mean ‘of or suitable for the Sabbath’. The word ‘Sabbath’ is in turn derived from the Hebrew word ‘shabbat’ which means ‘to cease’. The term was apparently first used in the Bible (Genesis 2:2-3) in relation to how God created the world in six days and rested on the seventh. Nowadays, the term is typically used to refer to leave of absence granted to university professors and lecturers. This providential phenomenon should also extend to advocates and solicitors in private practice who deserve the occasional rest.

18.2 The reason for this early digression is that in this year“s Annual Review of Singapore Cases, we miss the insights and contributions of my fellow reviewer, Prof Ng-Loy Wee Loon. She has the enviable privilege of being on ‘sabbatical’ this year, leaving her fellow reviewer with the task of reviewing the largest number, to-date, of intellectual property cases reported in a year. Of the 16 cases reported in 2010, 11 relate to trade marks and passing off, three relate to patents and two relate to copyright. Embedded in a number of these cases are knotty and difficult points of law which call for review below.

Trade marks and passing off

Protection of well-known trade marks

18.3 Following the important decision in Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 (‘Novelty case’) (which was reviewed at length in last year“s Annual Review), the Court of Appeal had the opportunity to provide further guidance on the nature and extent of protection of well-known trade marks under the Trade Marks Act (‘TMA’) in two cases last year, namely, Mobil Petroleum Co, Inc v Hyundai Mobis [2010] 1 SLR 512 (‘Mobil case’) and City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 (‘City Chain case’).

Mobil case

18.4 The Mobil case concerned Hyundai“s application dated 17 April 2002 to register the trade mark ‘MOBIS’ (shown below) for automobile parts.

18.5 The application was opposed by Mobil on the basis that the ‘MOBIS’ mark conflicted with its mark ‘MOBIL’ registered for oil. Mobil placed reliance on s 8(3) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (‘TMA 1999’) which provides that a trade mark which is identical with or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected shall not be registered if:

(i) the earlier trade mark is well known in Singapore;

(ii) use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered would indicate a connection between those goods or services and the proprietor of the earlier trade mark;

(iii) there exists a likelihood of confusion on the part of the public because of such use; and

(iv) the interests of the proprietor of the earlier trade mark are likely to be damaged by such use.

18.6 Before proceeding further, it should be mentioned that this provision (hereafter referred to as the ‘(old) s 8(3)’) was repealed and replaced in 2004 by two subsections (sub-ss 8(3) and 8(4) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (‘TMA 2005’)) which now govern trade mark applications filed before and after 1 July 2004 respectively and that the court considered the (old) s 8(3) as Hyundai“s application was filed on 17 April 2002. However, as the new s 8(3) retains conditions (i)-(iv) of the (old) s 8(3), the Mobil case is still instructive for its opinion on these conditions.

18.7 Mobil argued that the (old) s 8(3) was applicable to prevent registration of the ‘MOBIS’ mark by Hyundai because all of the conditions stipulated in the section were met:

(a) the ‘Mobil’ mark was well known in Singapore;

(b) use of the ‘Mobis’ mark on automobile parts would indicate a connection between these goods and the Mobil petroleum company;

(c) there existed a likelihood of confusion on the part of the public because of such use; and

(d) the interests of the Mobil petroleum company were likely to be damaged by such use.

18.8 The issue in the case concerned the word ‘connection’ which, as mentioned above, is also found in the new s 8(3)(ii) of the TMA 2005. This word also appears in s 55(3)(a) which entitles the proprietor of a well-known trade mark to restrain by injunction the use of an identical or similar trade mark in relation to any goods or services (including dissimilar goods or services) where the use of the mark ‘would indicate a connection between those goods or services and the proprietor’. In the Novelty case (above, para 18.3), the Court of Appeal held that the word ‘connection’ in s 55(3)(a) is to be construed as implicitly requiring a showing of a likelihood of confusion. The court expressed (Novelty case at [233]) preference for this construction due to the ‘balancing’ factor:

In our view, the widespread availability of protection to trade marks which are “well known in Singapore“ should be balanced by interpreting s. 55(3)(a) of the current TMA as requiring a likelihood of confusion to be shown before an injunction to restrain the use of the defendant“s trade mark on (inter alia) goods or services dissimilar to those of the plaintiff can be obtained …

18.9 The question in the Mobil case was whether the word ‘connection’ in the (old) s 8(3)(ii) of TMA 1999 has the same meaning as in s 55(3)(a). There is, however, an important difference between the (old) s 8(3) and s 55(3)(a) in that the former provision expressly provided (in sub-s 8(3)(iii)) that there must exist a likelihood of confusion on the part of the public as a result of the offending use. The presence of the element of confusion in s 8(3)(iii) easily led the court to conclude (Mobil case at [36]) that:

[O]ne should, therefore, not read s 8(3)(ii) to also encapsulate the notion of confusion. Otherwise there would be duplicity between s 8(3)(ii) and s 8(3)(iii). Accordingly the “connection“ under s 8(3)(ii) could not be the same as that under s 55(3)(a) of the TMA….

18.10 What, then, does the word ‘connection’ in the (old) s 8(3)(ii) mean?

18.11 The word ‘connection’ is inherently of wide import and can encompass any form of commercial connection or relationship between, on the one hand, the goods or services for which a trade mark is sought to be registered and, on the other hand, the proprietor of a well-known trade mark. The word appears in Art 4(1)(b)(i) of the Joint Recommendation Concerning Provisions on the Protection of Well-Knwn Marks which was adopted in September 1999 by the Assembly

of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organisation (‘Joint Recommendation’). Article 4(1)(b)(i) states:

Irrespective of the goods and/or services for which a mark is used, is the subject of an application for registration, or is registered, that mark shall be deemed to be in conflict with a well-known mark where the mark, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration of the well-known mark, and where at least one of the following conditions is fulfilled:

(i) the use of that mark would indicate a connection between the goods and/or services for which the mark is used, is the subject of an application for registration, or is registered, and the owner of the well-known mark, and would be likely to damage his interests; …

[emphasis added]

18.12 It is noticeable that the Article relates to an application, registration and use of a trade mark which conflicts with a well-known trade mark. Section 8(3)(ii) gives effect to this Article as it relates to an application for registration.

18.13 The word ‘connection’ also appears in Art 16(3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS Agreement’) which provides that Art 6bis of the Paris Convention shall apply, mutatis mutandis, to dissimilar goods or services:

provided that use of that trade mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trade mark and provided that the interests of the owner of the registered trade mark are likely to be damaged by such use. [emphasis added]

18.14 However, neither the TRIPS Agreement nor the Paris Convention provides any definition or explanation concerning the word ‘connection’. The commentary in the Explanatory Note (‘Explanatory Note’) to Art 4(1)(b)(i) of the Joint Recommendation merely provides examples of the requisite connection:

Under [Article 4(1)(b)(i)], a connection between a well-known mark and a third party“s goods or services may be indicated, for example, if the impression is created that the owner of the well-known mark is involved in the production of those goods, or the offering of those goods, or that such production or offering was licensed or sponsored by him.

18.15 In the Novelty case (which concerns s 55 of the TMA 2005), the Court of Appeal said (at [212]) that the Explanatory Note indicates that

Art 4(1)(b)(i) requires the likelihood of confusion to be shown before the defendant“s trade mark will be deemed to be in conflict with the plaintiff “s trade mark. If this interpretation were to be adopted for the word, ‘connection’ in s 8(3)(ii) which relates to trade mark application, it would cause difficulties. In particular, there would be duplicity between s 8(3)(ii) and s 8(3)(iii), as mentioned by the court in the Mobil case, and s 8(3)(iii) would become otiose. Another difficulty associated with such an interpretation is that the word ‘connection’ (however wide its import) in Art 4(1)(b)(i) would bear one meaning in the context of a trade mark application (namely, s 8(3)(ii)) and another meaning in the context of registration and/or use of a trade mark (s...