Beyer Electrical Enterprise Pte Ltd v Swanfu Trading Pte Ltd

• Jurisdiction: Singapore
• Judge: MPH Rubin JC
• Judgment Date: 31 August 1992
• Neutral Citation: [1992] SGHC 234
• Docket Number: Originating Motion No 91 of 1991
• Date: 31 August 1992
• Year: 1992
• Published date: 19 September 2003
• Plaintiff Counsel: Dedar Singh Gill (Drew & Napier)
• Citation: [1992] SGHC 234
• Defendant Counsel: Tan Tee Jim and Genevieve Tan (Allen & Gledhill)
• Court: High Court (Singapore)
• Subject Matter: Proof of user in course of trade,'Bona fide use',s 39(1)(a) Trade Marks Act (Cap 332),Whether mark abandoned,Whether bona fide use of trademark during relevant period,Words and Phrases,What constitutes bona fide use of trademark,Likelihood of deception practised on general public,Rectification of register,Application to expunge from register,Trade Marks and Trade Names,Whether mark to be expunged from register,Whether user of mark with omission of word or feature substantially affects identity of mark,Court's exercise of discretion based on public interest,Whether sales of leftover goods constituted sales in normal course of trade,(Cap 332) s 29(a) Trade Marks Act,s 40(1)(b) Trade Marks Act (Cap 332),Onus on applicants to establish prima facie case of non-user

This case concerns a dispute between two rival traders in gas and gas rice cookers on the use of the name `ALOHA`. The applicants, Beyer Electrical Enterprise Pte Ltd, applied to the court that an entry styled `ALOHA SWANFU` and registered as No 71923 in the name of the respondents, Swanfu Trading Pte Ltd be expunged. The applicants contended that the said mark should be expunged because up to the date falling one month before 26 September 1991 (the date of the application), a continuous period of five years had elapsed when there had been no bona fide use of that mark. Alternatively, the applicants contended that the use and employment recently of the name `ALOHA` by the respondents is deceptive and such use is calculated to pass off someone else`s gas cookers as that of the applicants.

At the conclusion of the hearing, after considering the evidence presented by the parties and the arguments thereon, I ordered that the entry `ALOHA SWANFU` in the Trade Mark Registry bearing registration No 71923 be expunged. My reasons follow.

The trademark `ALOHA SWANFU` was registered in 1982 in Class 2 in respect of gas cookers and gas rice cookers in the names of Sim Hock Tee and Sim Lee Beng then trading as Swanfu Trading Co (`the firm`). The firm terminated its business on 14 April 1988.

More than three years later, the subject mark was assigned to the respondents on 20 July 1991. The application for the assignment of the said trademark together with three other trademarks, ie No 1135/81 (for Izola), No 867/84 (for Crown) and No 1136/81 (for something else) was made on or about 19 February 1990.

It was claimed that before the firm terminated its business, it was involved in a substantial way in the importation and sale of gas rice cookers and gas cookers bearing the name `ALOHA` on them. The respondents claimed that the sale of such appliances was carried out by one Hiap Huat Trading Co (`Hiap Huat`). The said Sim Hock Tee and Sim Lee Beng were two of the five partners of Hiap Huat.

The evidence presented to the court by the respondents included a number of invoices issued by the firm dating from 24 June 1977 to 22 November 1979. They showed that the firm was selling gas rice cookers and gas cookers under the name `ALOHA` and not `ALOHA SWANFU` though the mark registered with the registry and the certificate issued showed that the trademark was `ALOHA SWANFU`. Substantial arguments were advanced on the effect of the omission of the word or feature `SWANFU`. There was no explanation by the respondents as to why the word `SWANFU` was not used. The issue is of considerable import and is dealt with later in these grounds. However, in order to appreciate the significance or otherwise of the omission, it is convenient to reproduce the registered mark and the mark as used and employed by the firm.

The registered mark

The mark as used by the firm

Reverting to evidence, Mr Sim Hock Tee, currently one of the directors of the respondents, in his first affidavit filed on 28 October 1991 said that in the early eighties the firm faced stiff competition from other manufacturers of home appliances and consequently, the demand for home appliances bearing the mark `ALOHA` declined. As the firm had surplus stocks of home appliances, it did not import any further home appliances bearing the ALOHA mark. It was said that whatever surplus stocks left with Hiap Huat were continued to be sold till the end of the year 1986.

At this stage, it is useful to remember that the relevant period of alleged non-use for the purposes of this application falls between 26 August 1986 and 26 August 1991 (26 September 1991 being the date of the application).

A number of invoices issued by (a) the firm; (b) Hiap Huat; and (c) the respondents were produced by the respondents to support their contention that the mark was indeed in use during the relevant period and before.

For the period 24 June 1977 to 22 November 1979 - a period which is not really in issue - the firm`s invoices (Nos 0007-0143) were produced by the respondents (see Sim Hock Tee`s affidavit of 28 October 1991). For the period 7 February 1985 to 16 January 1986, the respondents relied on three invoices issued by Hiap Huat (see Lee Kia Koy`s affidavit of 25 October 1991). For the period 2 December 1986, the respondents relied on Hiap Huat`s invoice No 16580 (see Sim Hock Tee`s affidavit of 28 October 1991). For the period 7 September 1991 to 13 September 1991, the respondents relied on some ten invoices issued by Hiap Huat (see Sim Hock Tee`s affidavit of 28 October 1991). The invoices thus exhibited reveal one special aspect, that is, from 1977 to 1979 invoices of the firm featured prominently on the top left hand corner the mark `ALOHA `(without the word `SWANFU`).

Hiap Huat`s invoices dated 7 February 1985, 22 March 1985 and 16 January 1986 also bear the mark `ALOHA` on their top right hand corners. But, curiously, neither the invoice No 16580 issued by Hiap Huat on 2 December 1986 nor the invoices of Hiap Huat for the period 7 September 1991 to 13 September 1991 had the mark `ALOHA` printed thereon. But marks such as Crown, Izola and Yota sold by Hiap Huat appear on the face of those invoices. Crown, Izola and Yota are registered marks of other gas rice cookers sold and distributed by Hiap Huat.

The respondents also produced two other exhibits to show that at least two traders in Singapore, namely, Lee Kia Koy of Teo Soon Heng Radio & TV Service and Lee Kai Teck of Kwang Wing Electric & Radio Service (Havelock Co) had leftover stocks of ALOHA rice cookers. One such cooker was sold by Lee Kai Teck in 1988 and Lee Kia Koy sold at least three ALOHA cookers on 28 August 1988. Both the Lees claimed that in October 1991 they had some ALOHA rice cookers left in their inventory. In addition to the foregoing, Mr Low Sai Huay of Guan Huat Lee Jwee Kee, in his affidavit filed in support of the respondents on 15 January 1992, claimed that the cookers his firm bought from Hiap Huat on 2 December 1986 (invoice No 16580) were sold to some walk-in customers in 1987. No receipts or invoices of sale were, however, provided to the court. The respondents maintained that in the premises there was evidence of the use of the mark during the relevant period.

Mr Sim Hock Tee claimed that he went to Taiwan between 21 December 1990 and 29 July 1991 on several occasions with a view to placing orders for the design and manufacture of home appliances. Eventually, the respondents issued a purchase order with one Lux Metal Industries Inc to purchase gas cookers with the ALOHA mark. The value of that purchase order was US$106,125. The gas cookers thus ordered were to be delivered in five shipments and the first consignment of 950 units was to be shipped in August 1991. The respondents produced bank documents and a copy of the bill of lading to lend credence to their averments.

Mr Sim further averred that in anticipation of the sale of gas cookers, the respondents caused to be printed guarantee cards at the end of June 1991. The first consignment of the gas cookers arrived on or about 7 September 1991. The sales of some gas cookers from that shipment were reflected in the invoices of Hiap Huat from 7 September 1991 to 13 September 1991. Mr Sim said that the documents produced supported the respondents` contention that there was bona fide use of the registered trademark during the relevant period of five years before the date of the applicants` motion filed on 26 September 1991.

Mr Thomas Yeo, the managing director of the applicants, stated in his first affidavit filed on 26 September 1991 that the applicants commenced use of the name `ALOHA` on the applicants` products in May 1988. Originally, the name was used only on fans without any opposition from anyone and, over the years, they used the name `ALOHA` on other home appliances. The use of that name was particularized by the applicants as follows:

May 1988 - Pans

December 1990 - Electric air pots

January 1991 - Gas cookers

August 1991 - Electric rice cookers

September 1991 - Electric slow cookers and oven toasters

Mr Yeo claimed that the applicants` annual sale of products under the name `ALOHA` amounted to $463,610 in 1988 and $785,691 in 1991. From January 1991 up to 26 September 1991, it was claimed that the applicants had sold 1,908 units of gas cookers.

According to the affirmant, the applicants spent substantial sums in advertising and promoting their products. There was sufficient material placed before the court in support of the applicants` promotional efforts and they were not challenged in any serious manner by the respondents. He added that as a result of such promotion, the applicants had acquired valuable reputation and goodwill especially for gas cookers bearing the ALOHA mark.

In his second affidavit filed on 30 December 1991, Mr Yeo elaborated how the applicants came to use and adopt the name `ALOHA` on their products. He said that the applicants commenced the use of the name `ALOHA` first on fans which were manufactured in a factory in Thailand known as Bangkok Electric & Enterprise Co Ltd and the said Thai manufacturers were the registered proprietors of the ALOHA trademark in Thailand. According to Mr Yeo, the Thai manufacturers produced a whole range of home appliances under the ALOHA trademark. He claimed that when the applicants introduced ALOHA fans in Singapore in May 1988, there was no trader in Singapore using the ALOHA name for home appliances. He added that the applicants having built considerable goodwill for ALOHA fans decided to branch out into the sale of cookers. Since they had promoted the ALOHA name, they approached manufacturers in Malaysia to manufacture gas cookers bearing the ALOHA mark. The gas cookers thus manufactured have been marketed by the applicants since January 1991.

The applicants charge that the respondents became interested in the sale of gas cookers and rice cookers in 1991 only to take an unfair advantage of the...