Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd

• Jurisdiction: Singapore
• Judge: George Wei J
• Judgment Date: 05 April 2018
• Neutral Citation: [2018] SGHC 81
• Plaintiff Counsel: Pang Sze Ray Melvin and Ong Eu Jin (Amica Law LLC)
• Docket Number: Tribunal Appeal No 12 of 2017
• Date: 05 April 2018
• Hearing Date: 09 October 2017,23 October 2017
• Subject Matter: Trade Marks and Trade Names,Registration criteria,Invalidity,Distinctiveness
• Year: 2018
• Defendant Counsel: Kang Choon Hwee Alban and Wang Zheng Just (Bird & Bird ATMD LLP)
• Court: High Court (Singapore)
• Citation: [2018] SGHC 81
• Published date: 11 April 2018

George Wei J: Introduction

This is an appeal against the decision of the learned IP Adjudicator in Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd [2017] SGIPOS 5 dated 2 May 2017 refusing the appellant’s application for a declaration of invalidity of the registration of Trade Mark No T0501003C for the plain word mark, BIG BOX, owned by the respondent (“the Subject Mark”).¹ For clarity, I will refer to the appellant, Courts (Singapore) Pte Ltd, as “the Applicant”, and the respondent, Big Box Corporation Pte Ltd, as “the Proprietor”.

Background facts

I begin with a summary of the basic facts, which are largely taken from the decision of the IP Adjudicator at [8]–[12]. A more detailed discussion of the facts will be set out below where necessary.

Sometime around April 2004, the Economic Development Board (“the EDB”) decided to launch and promote a warehouse retail scheme (“the WRS”) in Singapore. The promotion ran for three years and was aimed at encouraging the setting up of large, out-of-town retail warehouses by permitting retail activities that were previously not allowed within areas designated for warehouse or industrial use.

The EDB media release of 28 April 2004 announced: “New industrial land regulations to introduce fresh retail concepts like warehouse outlets and ‘big box’ retailers to Singapore”. The promotion was reasonably successful in that several retailers decided to apply for participation in the WRS. These included the Proprietor, the Applicant and the well-known IKEA and GIANT stores.

The Proprietor was incorporated in July 2004,² just shortly after the start of the EDB’s promotion exercise for the WRS. The Proprietor applied to register the Subject Mark on 26 January 2005 (“the Application Date”).

The Applicant applied to join the WRS in 2005 and thereafter sought and obtained proposals from developers, including Ascendas Real Estate Investment Trust, to develop a “Big Box Retail-Warehouse”.

By 2008, construction for the Proprietor’s warehouse retail mall (“the Mall”) in the Jurong Gateway area was underway under the name “Big Box”. This was reported in various local newspapers largely in the context of the transformation plans for Jurong East.³

The Proprietor opened the Mall under the Subject Mark on 27 December 2014 and subsequently engaged in extensive advertising of the Mall in the English, Malay and Chinese newspapers. The Mall features the Subject Mark in point-of-sale and other promotional materials prominently throughout the location, including on shopping bags and trolleys, ticket machines, retail loyalty scheme materials, as well as social media platforms such as Facebook. The use of the Subject Mark consistently appears in the form of a device comprising the word “big” on top of the word “box”, in a square box with a green background.

In December 2012, some two years prior to the opening of the Mall, the Applicant opened a retail warehouse store in Tampines under the WRS. In December 2014, it placed advertisements for its Tampines store in The Straits Times under the description: “Courts Big Box Megastore”. In early 2015, the Proprietor sent a cease and desist letter to the Applicant alleging infringement of the Subject Mark by reason of the Applicant’s use of the words “big box” in its advertisements. The Applicant responded by applying for a declaration of invalidity on 12 March 2015.

Procedural history

As briefly alluded to at [5], on 26 January 2005, the Proprietor applied to register the Subject Mark in Class 35 of the Nice Classification, ie, the International Classification of Goods and Services under the Nice Agreement (on which I will go into greater detail later) for what can be broadly or loosely described as services relating to the merchandising and distribution of goods.⁴

On 12 March 2015, the Applicant filed an application for a declaration of invalidity pursuant to s 23(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”), which provides that the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of, inter alia, ss 7(1)(b), (c) and (d) of the Act.⁵ The Proprietor filed its counter-statement on 11 May 2015.⁶

The Applicant’s evidence comprised two statutory declarations made by Kuah Mei Yin, Finance Director of the Applicant, on 14 October 2015⁷ and 11 October 2016.⁸ The Proprietor’s evidence comprised two statutory declarations made by David Black, Managing Director of Blackbox Research Pte Ltd (“Blackbox”), on 6 April 2016⁹ and by Tong Jia Pi Julia, Director of the Proprietor, on 13 April 2016.¹⁰

On 2 May 2017, the IP Adjudicator refused the Applicant’s application for a declaration of invalidity and issued written grounds. The Applicant has appealed.

Preliminary points The nature of an appeal to the High Court from the Trade Mark Office

Order 87 rule 4(2) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) provides that “[a]n appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the Registrar and, except with the leave of the Court, no further evidence shall be given”: see Polo/Lauren Co LP v United States Polo Association [2016] 2 SLR 667 at [6]–[8].

In Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] 2 SLR 308 (“Caesarstone”) at [15], the Court of Appeal held that the words “shall be by way of rehearing” in O 87 r 4(2) directs the appellate court to hear the matter afresh, and there is no threshold requirement of general application that a “material error of fact or law” be shown before appellate intervention is warranted in such appeals. The Court of Appeal noted at [22] the trite principle that “an appellate tribunal should not set aside a trial judge’s finding of fact, based as it is on evidence of witnesses, unless the appellant satisfies the appellate tribunal that the trial judge is plainly wrong”. The Court of Appeal explained that this reluctance to interfere stems from the recognition of the simple fact that the trial judge is in a better position to assess the veracity and credibility of witnesses giving oral evidence. Appeals to the High Court from the Registrar under the Trade Marks Act, however, do not fall into this class of cases. There is no trial and no oral evidence is taken. All of the evidence is tendered by way of statutory declaration. It is well established that where only written evidence is involved, an appellate court will be in as good a position as the trial court to make its own evaluation from the primary facts (Caesarstone at [23], citing Ho Soo Fong and another v Standard Chartered Bank [2007] 2 SLR(R) 181 at [20]).

It follows that the correct approach to take in this appeal is that there is no threshold requirement for a material error. The court is to hear the matter afresh.

The burden of proof

By s 101(c)(i) of the Act, “the registration of a person as proprietor of a registered trade mark shall be prima facie evidence of … the validity of the original registration”. The IP Adjudicator rightly held at [7] of his decision that the burden in the present case fell on the Applicant to prove the ground of invalidity on the balance of probabilities. In the event that the Applicant satisfies that burden, in order to avoid a declaration of invalidity, the burden of proof would shift to the Proprietor under s 23(2) of the Act to show, again on the balance of probabilities, that the Subject Mark has in fact acquired distinctiveness as a result of use by the Proprietor since its registration.

The grounds of the attack

I note that the Applicant’s attack is not founded on s 22 of the Act, which deals with revocation on the grounds of (i) five years of non-use; (ii) inactivity or acts causing the subject mark to become the common name in trade for the product or service for which it is registered; and (iii) where the mark has become liable to mislead the public particularly as to the nature, quality or geographical origin of the goods or services. Instead of revocation, the attack is solely founded on invalidity under s 23 of the Act.

The second point to note is that the invalidity attack mounted by the Applicant under s 23(1) does not proceed on the basis that the Subject Mark comprises a sign which does not satisfy the definition of a trade mark under s 7(1)(a). There is no issue over whether the sign “is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” as set out in the definition of “trade mark” in s 2(1).

Thus, the attack on validity is based solely on the following three grounds: s 7(1)(b): trade marks which are devoid of any distinctive character; s 7(1)(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 services, or other characteristics of goods or services; and s 7(1)(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.

The scope of the attack

Before turning to the substantive issues, I address a question of “pleading” that has arisen, namely, whether the attack mounted by the Applicant is against all the services set out in the Proprietor’s specification under Class 35 as a whole, or whether it includes and also relates to each individual service claimed such that the Subject Mark may be found invalid for some but not all the services (partial invalidity).

For ease of reference, the services claimed by the Proprietor in the specification of the application under Class 35 can be broken into three main “segments”:¹¹

The bringing together, for the benefit of others, of a variety of...