Cheng Kang Pte Ltd and Others v Sze Jishian

• Jurisdiction: Singapore
• Judge: MPH Rubin JC
• Judgment Date: 31 March 1992
• Neutral Citation: [1992] SGHC 77
• Docket Number: Originating Motion No 35 of 1991
• Date: 31 March 1992
• Year: 1992
• Published date: 19 September 2003
• Plaintiff Counsel: Dedar Singh Gill (Drew & Napier)
• Citation: [1992] SGHC 77
• Defendant Counsel: Anita Fam and Jeanette Ling (Khattar Wong & Partners)
• Court: High Court (Singapore)
• Subject Matter: s 39(1)(a) Trademarks Act (Cap 332),'Persons aggrieved',Application to expunge from register,Trade Marks and Trade Names,Whether mark common to trade,Whether respondents' mark distinctive,Rectification of register,Words and Phrases,Locus standi to apply for rectification proceedings,ss 10, 11, 15(1), 39(1), 45 & 47 Trademarks Act (Cap 332),Whether mark descriptive of character and quality of joss paper

Cur Adv Vult

Background

This case is all about trade mark rights on joss paper. Joss paper is singularly associated with Chinese custom, more especially a Buddhist and Taoist phenomenon. Literature produced to the court (see `Chinese Customs and Festivals` by the Singapore Federation of Chinese Clan Association) shows that Taoists believe that the portals of hell open each year on the first day of the seventh month (usually around August) allowing the dead and unborn souls to wander the world for food and other necessities. Throughout that month and especially on the 15th day, joss paper (in silver and gold) and food are offered to these hungry ghosts. The festival of the hungry ghosts is popularly known as `Zhong Yuan Jie`. Chinese observe `Zhong Yuan Jie` by offering prayers, food and paper money to the dead. It is therefore not uncommon to see Singaporeans, particularly those who subscribe to Taoist traditions and beliefs, burning joss paper at temples, street corners and road sides during that festival. Joss paper is burnt in many forms and shapes, and sometimes in stacks or bundles.

Parties and facts

Sze Jishian (`SJ`), the respondents in this action, had been in the business of selling joss paper since about December 1983. They claim that sometime in 1986, one of the partners, Ng Kim Bok, wanted to have a trade mark for the joss paper they were selling in Singapore. As a result, the services of one Everbeauty Art Studio was commissioned to design the mark and the mark so designed with a Chinese `Yuan Bao` (silver or gold ingot) surrounded by a typical Chinese border characterized by a decorative, geometric motif was eventually registered. The respondents are currently the proprietors of trade marks bearing registration Nos 5730/87 and 4264/89. The trade marks are reproduced hereunder for reference.

Trade mark registration No 5730/87

5730/87. Joss-paper. Ng Kim Bok and Toh Poh Chu (both Singapore citizens) trading as Sze Jishian, Block 416, Pandan Garden #01-121, Singapore 2260; importers and exporters - 24 November 1987.

Trade mark registration No 4264/89

The transliteration of the Chinese characters appearing in the mark is `Cai` meaning `wealth` and `Bao` meaning `treasure`.

4264/89. Joss paper. Ng Kim Bok and Toh Poh Chu (both Singapore citizens) trading as Sze Jishian, Block 416, Pandan Garden #01-121, Singapore 2260; importers and exporters - 6 July 1989. To be associated with No 5730/87.

It can be observed that the trade marks` main feature is the pictorial likeness of a Chinese `Yuan Bao` representing a hoof-shaped silver or gold ingot used as currency in China in the early days. One account presented to the court shows that the gold ingot is normally meant for safe-keeping and the other, the silver ingot, is for circulation. The trade mark registration bearing No 4264/89 is identical in all respects to that of the one registered as 5730/87 except for the addition of the Chinese characters `Cai Bao` which means `wealth` and `treasure` placed near the ingot.

After the registration of the said marks, the respondents claimed that sometime in 1989, they appointed one Young Heng Paper Pte Ltd to engage a manufacturer in China to produce joss paper with the said marks on them. The first batch of joss paper thus manufactured was delivered to the respondents in June 1989 and according to the respondents, between 26 June 1989 and 21 June 1991, there had been a steady increase in the demand for their brand of joss paper. All in all, during that period they claimed to have ordered 376 crates of joss paper, each crate containing 360 stacks or bundles of joss paper of about half an inch thick. They also claimed to have sold off everything they had just ordered and it was due to the success of their design and the trade mark thereon that rival traders dealing in joss paper were eager to partake of its popularity and prestige.

The respondents came to know sometime before 31 July 1990 that one Cheng Kang Pte Ltd (`CK`), the principal applicants in this motion, had been selling or distributing joss paper bearing the mark similar to that of the respondents. SJ`s solicitors therefore wrote to CK on 31 July 1990, demanding CK not to pass off CK`s products as that of the respondents, and threatened to institute legal proceedings for passing-off against them.

CK and 11 other joss paper traders claiming to be persons aggrieved within s 39(1) of the Trade Marks Act (Cap 332) (`the Act`) responded by applying to the court for the register of trade marks to be rectified by expunging therefrom the whole of the entry relating to trade mark Nos 5730/87 and 4264/89. The applicants` main point of contention was that the said pictorial representation being such a descriptive device in the joss paper trade cannot and should not be monopolized by the respondents.

Affidavits filed in support and in opposition were legion. Evidence presented in those affidavits had an inclination to repeat itself. The affidavits contained allegations and counter-allegations, points and counter-points replete with legal arguments, some of which could well have been left for submissions. All the same, the salient parts of the applicants` averments and the respondents` rebuttal could be conveniently summarized in the following few paragraphs.

The applicants, after alleging that they were aggrieved parties, averred that they, too, had been importing joss paper bearing the gold ingot symbol from manufacturers in China, and in that country, the representation of the gold ingot is regarded as descriptive and hence a number of manufacturers use that symbol on joss paper. These manufacturers who used representations of gold ingot on joss paper would then use different trade marks to differentiate their products from that of other manufacturers. They further averred that joss paper importers in Singapore should be at liberty to buy joss paper bearing the representation of the gold ingot from any one of those Chinese manufacturers. They argued that a Singapore importer in the position of the respondents could not validly claim to be the proprietors of such a mark within the meaning of s 11 of the Act. I must add at this juncture that the applicants` arguments based on `prior use` were abandoned in the course of the hearing.

The applicants went on to contend that the representation of the gold ingot for joss paper is not a mark which qualified for registration under s 10 of the Act as it lacked any one of the essential particulars required therein. The applicants also took objection to the Chinese characters `Cai Bao` appearing in trade mark No 4264/89.

Tan Han Teo, in his affidavit filed on 27 April 1991 on behalf of the applicants, alleged that the representation of the gold ingot had been regarded as descriptive in the joss paper trade and by devotees who burn such joss paper. According to him, when burning joss paper, the devotees desire to signify certain qualities and the gold ingot signified good luck, prosperity, wealth and progress. He also averred that it had been an age old practice to fold coloured joss paper into the shape of gold ingots for burning. He invited the court`s attention to the definition of the word `joss paper` set out in the compact edition of the Oxford English Dictionary which defined joss paper as `gold and silver paper cut into the shape of coins and ingots and sometimes inscribed with prayers and burnt by Chinese at funerals and other religious ceremonies`.

The thrust of the applicants` contention, shorn of tautology and all linguistic embellishments, was that the mark is more or less the actual representation of a Chinese `Yuan Bao` and the representation has a direct reference to the character and quality of the goods.

The respondents denied that the marks they registered had ever been marks in China or in Singapore. Before they designed the same, they did not find any mark, design or representation which closely resembled the subject mark prior to the respondents registering them.

The principal affirmant for the respondents, Ng Kim Bok, in his affidavit filed on 4 November 1991, asserted that one could have any design printed on the joss paper as it symbolized what one may wish to burn and transport to the next world. The design which they came up with, ie the design of a stylized `Yuan Bao` was not descriptive of joss paper but a unique design.

Some paragraphs, particularly paras 5, 6, 7 and 8 of Ng Kim Bok`s affidavit filed on 23 July 1991 on behalf of the respondents, are indeed relevant and they are set out below:

Paragraph 5:

I started the respondent company in 1983 and before that date I was working in a temple. Joss paper-burning is an act by various groups of the Chinese community in Singapore as a symbol of offering to the deities or gods or their ancestors. It is the act of burning joss paper as similar to the burning of joss stick that is revered. It is meant as an offering. In the case of offerings to the deities or gods, earthy luxury like wealth is never represented as it will be totally offensive.

Paragraph 6:

There is no denying that there is a practice by the Chinese community to burn joss paper which may be folded into different shapes before burning. This is partly to facilitate the process of burning and partly for decorative purposes to appease the deities or gods. It is folded into various shapes and sizes. However, often, the joss paper is burnt together in a stack without any folding.

Paragraph 7:

The defendants are selling their joss papers not in a folded fashion which is a completely different product from those that are folded. The two-dimensional piece of paper does not in any way represent the gold or silver ingot. The characters `Yuan Bao` may refer to coins or silver ingots in ancient China. However, this use of the words as a form of currency is only one meaning of the characters. In Singapore today, the

...