Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long and others (trading as Polykwan Trading Co)

• Judge: Woo Bih Li J
• Judgment Date: 06 August 2003
• Neutral Citation: [2003] SGHC 169
• Citation: [2003] SGHC 169
• Defendant Counsel: Dedar Singh Gill and Paul Teo (Drew & Napier LLC)
• Published date: 03 October 2003
• Plaintiff Counsel: Wong Siew Hong and Tay Sock Kheng (Infinitus Law Corporation)
• Date: 06 August 2003
• Docket Number: Originating Motion No 6 of 2003
• Court: High Court (Singapore)
• Subject Matter: Distinctive character,Partial revocation,Trade Marks and Trade Names,Trade Marks Act (Cap 332, 1992 Ed) s 22(2),Whether classification unduly wide,Revocation,Trade Marks Act (Cap 332, 1992 Ed) s 22(1)(a),Trade Marks Act (Cap 332, 1992 Ed) s 22(7),Whether use of variants of trade mark constitutes genuine use for five years

Inroduction

1 This application was made by the Applicant Bluestar Exchange (Singapore) Pte Ltd to, inter alia, revoke Registered Trade Mark No. T92/098573C (“the RTM”) of which the Respondents Teoh Keng Long, Teo King Ann and Wong Sin Chong trading as Polykwan Trading Company are the registered owners. Polykwan Trading Company is a firm in Malaysia. After hearing arguments, I dismissed the application with costs.

Background

2 The RTM comprises two elements:

(a) a large star device

(b) the words “BLUE STAR” below the star device.

The Respondents became the registered proprietors of the RTM as at 11 December 1992 for men’s undergarments, briefs, socks, men’s sports clothing, knitwear, singlets, swimwear, all included in class 25.

3 However, the RTM or, rather, a variant thereof was used only from about December 1996. The Respondents used a Malaysian company Exclusive Garments Mfg Sdn Bhd to manufacture various clothing for sale in Singapore and elsewhere. Exclusive Garments Mfg Sdn Bhd is a wholly owned subsidiary of another Malaysian company Spantex Garment Corporation Sdn Bhd and all the shares in that company are held by the same three persons who are the Respondents. The clothing is distributed in Singapore by Spantex Marketing Singapore Pte Ltd.

4 The initial use of BLUE STAR with a star device had the star device with lateral stripes across it. In 1998, the Respondents started to phase out this star device (with lateral stripes) and alleged that since 1998 they had stopped using such a star device.

5 The sales figures of BLUE STAR products in Singapore were as follows:

Year Figure (SGD)

1996 29,990.40

1997 82,509.24

1998 231,983.40

1999 414,088.52

2000 314,105.88

2001 149,908.00

2002 87,279.00

6 In the meantime, Giordano International Ltd (“Giordano International”) a company domiciled in Bermuda and listed on the Hong Kong Stock Exchange incorporated Giordano Originals (S) Pte Ltd (“Giordano Singapore”) in Singapore in 1981. In 1999 as part of the multi-branding strategy of Giordano International, its management decided to establish a “downline” brand by the name of Bluestar Exchange. Its original trade mark was the word “BLUESTAR” as a single word with “BLUE” in dark letters and “STAR” in white letters. Furthermore, the “A” in “STAR” was replaced with a star device in a stylistic form. The word “EXCHANGE” was in smaller letters below “BLUESTAR”. The Applicant said that that mark was then modified “slightly” so that a star device became situated on the right of the words. I would add that the previous star device which replaced “A” in “STAR” was in turn replaced by an “a” of the same size as the rest of the letters. Thirdly, “STAR” was no longer in white but in dark letters. Fourthly, the “E” in “BLUE” was replaced by an “e” which was also the same size as the rest of the letters. Fifthly, the overall lettering was shorter and fatter than the initial BLUESTAR of the Applicant. Sixthly, the new trade mark had a small space between “BLUE” and “STAR” whereas the initial one did not have a space in between.

7 Bluestar Exchange outlets were established in Hong Kong, Taiwan and China as well as in Europe including Germany but the outlets in Germany were closed in September 2002. As at the date of the hearing before me, there were 62 Bluestar Exchange outlets but the outlet in Singapore had been closed. In 2002, Bluestar Exchange sales made up 7% of Giordano International’s total sales.

8 In the meantime, on 19 January 2000, applications were made by Hawthorne Enterprises Ltd (“Hawthorne”) to register the original Bluestar Exchange mark in classes 18, 25 and 35 in Singapore. Hawthorne is a Bermuda company which was set up to be the holding company of Giordano International’s intellectual property. The applications are under examination by the Intellectual Property Office of Singapore and the application for one of the classes is opposed by the Respondents.

9 To spearhead the entry of the Bluestar Exchange brand in South East Asia, the Applicant was incorporated on 7 July 2000. A retail outlet was set up in Jurong Point Shopping Centre and business commenced in September 2000.

10 However, prior to commencing business in Singapore and the applications to register the Bluestar Exchange mark in Singapore, Hawthorne had instructed a search to be done in the Singapore Trade Marks Registry. Paragraph 13 of the first affidavit of Robert Tay Chin Leong, filed on behalf of the Applicant stated:

13. I am further informed that prior to commencing business in Singapore and applying to register the BlueStar Exchange trade mark in Singapore, Hawthorne had instructed a search to be done in the Singapore Trade Marks Registry to establish if the mark was available for registration. The search threw up numerous trade marks which include the words “BLUE” and “STAR” as well as graphical devices of star. I show herewith as Exhibit “RT-5”, computer printouts showing the prevalence of these elements in Class 25.

The computer print-outs exhibited had the date 19 March 2003 on them and were evidently not the result of the search done before 2001. Even then, it was clear from these print-outs that all the marks other than those belonging to the Applicant or the Respondents, did not have the combination of the words “BLUE” and “STAR”, let alone “BLUE” and “STAR” with a star device. Most of the other marks had the word “STAR” in combination with other words but not “BLUE”. Of these, some had the star device while others did not. Conversely some had the star device without the word “STAR”. Some marks had the word “BLUE” but not in combination with the word “STAR”.

11 The marks which had the words “BLUE” and “ STAR” and the star device were the Applicant’s original mark which was pending registration and the RTM and a series of marks which had also been registered in the name of the Respondents. There was one mark with the words “BLUE STAR” without a star device which was pending registration. The applicant was Chiam Hern Kian, a director of Spantex Marketing (S) Pte Ltd, the Respondents’ distributor in Singapore. Neither side asserted that Mr Chiam’s application was really for his own benefit.

12 In summary, para 13 of Robert Tay’s first affidavit was quite inaccurate as it gave the impression that there were numerous trade marks belonging to others which had the combination of the words “BLUE” and “STAR” as well as the star device.

13 The Applicant accepted that the search which had been conducted prior to commencement of its business revealed the existence of the RTM. Paragraph 14 of Robert Tay’s affidavit went on to assert that he was given to understand that inquiries were made to ascertain if the RTM was being used in Singapore and the inquiries indicated that it was not. However, I noted that there was no elaboration on the nature or the extent of the alleged enquiries. Neither was there an affidavit from anyone who purported to make such enquiries then. If indeed Giordano International had caused inquiries to be made to ascertain whether the RTM was being used in Singapore before the Applicant was incorporated and commenced business, such inquiries must have been quite cursory. Otherwise they could not have failed to learn of the use of the RTM or variants thereof in Singapore.

14 In any event, the Applicant took the position that the prominent or distinctive feature of the RTM was the large star and the RTM was sufficiently different from its own original mark as both were visually very dissimilar. With this in mind as well as the intention to sell its products exclusively at its own retail outlets, the Applicant took the view that there was no likelihood of confusion or deception and sold products with its original mark in Singapore.

15 As it transpired, one of the Respondents Teoh Keng Long received information that Mr Chiam of Spantex Marketing (S) Pte Ltd had on 7 December 2001 received a complaint from a customer visiting one of the retail outlets in Singapore selling the Respondents’ products regarding a 20% discount voucher for “Blue Star” products. The Respondents had not issued, or authorised the issue of, such a voucher. After enquiries were made, the Respondents ascertained that the voucher had been issued by the Applicant’s retail outlet at Jurong Point Shopping Centre in Singapore and that the Applicant was selling various kinds of clothing bearing the words “BLUESTAR” or “BLUESTAR EXCHANGE”, mostly with a star device.

16 By a letter dated 16 January 2001, Lee & Lee, the then solicitors of Exclusive Garments Manufacturing Sdn Bhd and the Respondents wrote to the Applicant alleging that it had infringed the RTM. This resulted in correspondence from Allen & Gledhill but there was no resolution.

17 On 27 February 2001, a complaint was made against the Applicant at the Subordinate Courts and a search warrant was obtained. On 28 February 2001, the execution of the search warrant at the Applicant’s retail outlet at Jurong Point Shopping Centre was halted by a magistrate pending the presentation of arguments by both sides. At a subsequent hearing on 16 March 2001, no order was made as to the validity of the search warrant. On 20 March 2001, various kinds of clothing sold by the Applicant and which might have infringed the RTM were delivered up to the Criminal Investigation Department Intellectual Property Rights Branch.

18 In the meantime, the Respondents had filed an action in the High Court by way of Writ of Summons No 253 of 2001 on 5 March 2001 against the Applicant alleging infringement of the RTM. This action was subsequently discontinued because the Applicant was a two-dollar company.

19 In March and April 2001, there were one or two meetings between Tay Ching Leong and/or the Second Respondent and the Applicant to see if a settlement could be reached. However, no settlement was reached.

20 The Applicant continued to sell clothing under its original mark and accordingly, the Respondents...