Davidoff Extension SA v Davidoff Commercio E Industria Ltda

• Jurisdiction: Singapore
• Judge: Chua F A J
• Judgment Date: 14 October 1987
• Neutral Citation: [1987] SGHC 40
• Docket Number: Originating Motion No 2 of 1983
• Date: 14 October 1987
• Year: 1987
• Published date: 19 September 2003
• Plaintiff Counsel: Aloysius Leng (Abraham Low & Partners)
• Citation: [1987] SGHC 40
• Defendant Counsel: Tan Tee Jim (Donaldson & Burkinshaw)
• Court: High Court (Singapore)
• Subject Matter: s 39 Trade Marks Act (Cap 206, 1970 Ed),Applicant original owner of trademark,Rectification of register,Court's discretion to grant application to expunge registered mark,Use of registered trademark deceptive to public,Trade Marks and Trade Names,Registered trademark same as that of applicant

By this originating motion, the applicants, Davidoff Extension SA, seek an order that the Register of Trade Marks be rectified by expunging thereform the whole entry relating to the trade mark no 77412 `Davidoff` registered in the name of the respondents, Davidoff Commercio E Industria Ltda.

At the end of the hearing, I made an order in terms of the motion and ordered the respondents to pay costs. I now give my reasons.

The grounds of the application are that:

(1) the applicants, being the proprietors of the mark Davidoff, are aggrieved by the respondents obtaining registration of trade mark no 77412 in contravention of s 11 and s 15(1) of the Trade Marks Act (Cap 206); and

(2) the applicants are aggrieved by the trade mark no 77412 wrongly remaining on the Register in contravention of s 15(1) of the Trade Marks Act (Cap 206).

The contentions of the applicants are that the respondents are not the proper proprietors of the trade mark `Davidoff` and their use of the trade mark is not bona fide and that there would be not only likelihood of deception but in fact there is actual deception.

The following facts are not in dispute.

The trade mark `Davidoff` is derived from the name of Mr Zino Davidoff who owned a tobacco shop in Geneva which he inherited from his father who established it in 1912.

In May 1940 Mr Zino Davidoff established a company, Davidoff et Cie, and this tobacco shop existed under that name under Zino Davidoff`s management, stocking a line of full size cigars called `Davidoff` made from Cuban tobacco.

In 1969 Mr Zino Davidoff sold a majority interest in Davidoff et Cie to Oettinger Imex AG of Basle, one of the leading tobacco wholesale and retail traders in Switzerland.

In 1973 the applicants, Davidoff Extensio SA, were established. In 1980 Zino Davidoff SA were established.

Davidoff et Ciet, Davidoff Extensio SA and Zino Davidoff SA (the Davidoff Group) had common shareholders. Oettinger Imex AG are the majority shareholders in the Davidoff Group and have a distribution agreement with the Davidoff Group to market Davidoff cigars and smoking accessories world-wide.

Davidoff cigars, a high class quality cigars, and smoking accessories, are produced by the Davidoff Group and these cigars are manufactured in Cuba out of Havana tobacco under the directions of Mr Zino Davidoff by the state-owned enterprise Cubatobacco since 1969 and known internationally as Davidoff No 1, 2 and 3. The Davidoff Group has a close collaboration with Cubatobacco.

Mr Zino Davidoff is still involved in the Davidoff Group. He is a minority shareholder in all the three companies and sits on the board of the three companies. He is involved in the sale of Davidoff cigars and smoking accessories and helped in the promotion of Davidoff cigars internationally.

The Davidoff chain of exclusive shops was opened all over the world, including Singapore, stocking and selling and dealing in top quality cigars, including the Davidoff cigars and smoking accessories.

The first registration of the trade mark `Davidoff` by the Davidoff Group was made in Switzerland in December 1969.

The Davidoff Group and Cubatobacco have registered the trade mark `Davidoff` in many countries all over the world and there are many pending applications all over the world.

The respondents applied for the registration of the trade mark `Davidoff` in Singapore on 12 September 1978, and the application was approved and registered on 10 October 1980 - registration no 77412.

The respondent company was incorporated in Brazil in 1978. After its incorporation the respondents registered the trade mark `Davidoff` under their name in various parts of the world.

In April 1979 the Davidoff Group applied for the registration of the trade mark `Davidoff` in Singapore under the name of their agent Bluebell (HK) Ltd The application was held in abeyance in view of the earlier application of the respondents.

The point taken by the respondents is that the applicants are not the proprietors of the mark. It...