Love & Company Pte Ltd v The Carat Club Pte Ltd

• Judgment Date: 22 September 2008
• Date: 22 September 2008
• Docket Number: Originating Summons No 225 of 2008
• Court: High Court (Singapore)

Love & Co Pte Ltd

Plaintiff

and

The Carat Club Pte Ltd

Defendant

[2008] SGHC 158

Chan Seng Onn J

Originating Summons No 225 of 2008

High Court

Trade Marks and Trade Names–Grounds for refusal of registration–Whether registered proprietor's word mark caught under the four absolute grounds for refusal of registration–Section 2 read with ss 7 (1) (a), 7 (1) (b), 7 (1) (c) and 7 (1) (d) Trade Marks Act (Cap 332, 2005 Rev Ed)–Whether registered proprietor's word mark had acquired distinctive character by virtue of usage and thus rescued by s 23 (2) Trade Marks Act (Cap 332, 2005 Rev Ed)–Trade Marks and Trade Names–Invalidity–Grounds for declaring registered word mark invalid–Whether registered proprietor's word mark satisfied definition of “trade mark”–Whether registered proprietor's word mark capable of distinguishing–Whether registered proprietor's word mark had acquired distinctive character by the time of registration–Whether registered proprietor's word mark designated an intended purpose of jewellery per s 7 (1) (c)–Whether registered proprietor's word mark customary in the current language or established practices of the trade–Section 2 read with ss 7 (1) (a), 7 (1) (b), 7 (1) (c) and 7 (1) (d) read with ss 23 (2) and 7 (2) Trade Marks Act (Cap 332, 2005 Rev Ed)–Trade Marks and Trade Names–Registration criteria–Whether registered proprietor's word mark capable of being graphically represented and capable of distinguishing proprietor's goods from another's–Section 2 read with s 7 (1) (a) Trade Marks Act (Cap 332, 2005 Rev Ed)–Trade Marks and Trade Names–Revocation–Whether to revoke registered proprietor's trade mark for non-use–Burden of proving use–Glaring absence of use of registered proprietor's trade mark in pristine form which was a word mark in plain typeface–Whether sporadic use of a fanciful mark bearing same word as the former and more widespread use of another fanciful trademark with the same word embedded within it tantamount to simultaneous use of the plain word mark–Sections 22 (1), 22 (2) and 105 Trade Marks Act (Cap 332, 2005 Rev Ed)

The plaintiff, Love & Co Pte Ltd, had received a letter of demand from the defendant, The Carat Club Pte Ltd, whereby the latter alleged infringement of its trademark, “the LOVE Diamond”. The plaintiff subsequently discovered that the defendant had registered in Singapore the word “LOVE” in plain typeface as a trademark in class 14. The defendant declined the plaintiff's subsequent request to voluntarily cancel the “LOVE” mark. Consequently, the plaintiff sought to invalidate the “LOVE” mark pursuant to s 23 read with s 7 of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), arguing that the “LOVE” mark did not fulfil the definition of a trade mark and that it was devoid of distinctive character. It further sought to revoke the “LOVE” mark under s 22 which provided for revocation where a trade mark had not been put into genuine use within five years from the date of its registration.

The defendant contended that its “LOVE” trade mark was not invalid because: (a) the “LOVE” trade mark was capable of distinguishing Carat's Club jewellery from other jeweller's wares; (b) the “LOVE” trade mark did not designate the intended purpose of jewellery which was to adorn the wearer; (c) “love” as a word had not become customary in the current lexicon in the jewellery trade; (d) even if the “LOVE” trade mark had been registered in breach of s 7, it was rescued by s 23 (2) which provided that usage consequent to registration imbuing the trade mark with distinctive character would render the trade mark valid.

As to the revocability of the “LOVE” trade mark, the defendant averred that its use of the “the LOVE Diamond” trade mark and another fanciful mark constituted simultaneous use of the “LOVE” trade mark, and the latter had thus been put into genuine use within five years from its date of registration. It thus argued that s 22 (1) was inoperable against it.

Held, allowing the plaintiff's application that the “LOVE” trade mark was invalid and alternatively, that the “LOVE” trade mark could be revoked on the basis of non-use:

(1) The “LOVE” mark had cleared the low threshold in s 2 read with s 7 (1) (a) of the TMA, thereby satisfying the definition of a “trade mark” under the TMA. In other words, the “LOVE” mark was capable of distinguishing the goods of the defendant because “LOVE” was not generic of or synonymous with jewellery nor was it descriptive of all or a large number of the other aspects or characteristics of jewellery. However, there was the higher threshold of registrability that the “LOVE” mark would have to satisfy under ss 7 (1) (b)-7 (1) (d) of the TMA: at [50] to [52].

(2) The “LOVE” trade mark was devoid of distinctive character, thereby failing to satisfy s 7 (1) (b). This was because of (a) its strikingly unimaginative design which could not be supposed to be able to immediately indicate to the average, discerning consumer as being the badge of commercial origin for the defendant's jewellery; (b) the ubiquitous use of such “LOVE” marks or similar marks by other jewellery traders meant that it was unlikely that the average discerning consumer could immediately recognise the “LOVE” trade mark as identifying only the defendant's jewellery and no other's; (c) there was a need to educate the public that the “LOVE” trade mark was being used by the defendant as its trade mark; (d) the widespread use of the word “love” within the jewellery trade meant that there was significant factual erosion of the “LOVE” trade mark's ability to distinguish the defendant's jewellery from its counterparts' in the jewellery industry: at [55], [56]and [61] to [66].

(3) The “LOVE” mark failed to satisfy s 7 (1) (c) as it designated the intended purpose of jewellery. An intended purpose of jewellery was to serve as an expression of love as contended by the plaintiff. To confine its purpose to only adorning the wearer was unconvincing. Though the wording of s 7 (1) (c) of “the … intended purpose … of goods …” suggested that there was only one intended purpose of any good or service, this was an implausible proposition. A more acceptable and realistic view was that there were often several purposes for a good or service, but there were situations in which there was one identifiable primary intended purpose of the good or service in a given factual matrix. Consequently, a practical approach to adopt was to invoke s 7 (1) (c) only when it was patently obvious that a particular purpose was commonly associated with the trade mark in question, rather than engaging in a pedantic search for a good's primary intended purpose. The “intended purpose” of the goods should be determined objectively from the standpoint of the average discerning consumer at the time of the purchase of the particular type of goods in question: at [71], [72], [74] and [76] to [79].

(4) The defendant could not avail itself of s 23 (2) of the TMA to rescue the trade mark since it had not acquired a de facto distinctive character. This was because there was insufficient evidence of use of the “LOVE” mark before and after its registration. Furthermore, the evidence indicates that the defendant did not trust the “LOVE” mark to function as a badge of origin since the “LOVE” mark was never used in its registered form but always in a significantly modified form with the addition of other distinctive decorative elements: at [104] to [111].

(5) The “LOVE” mark was vulnerable to revocation on grounds of non-use as per s 22 (1) of the TMA. It was no defence that the defendant's use of its other marks constituted simultaneous use of the “LOVE” mark. These other marks were wholly distinct from the “LOVE” mark, possessing distinct visual and aural differences from the latter. For the “LOVE” trade mark to be put into genuine use, it had to be used substantially standing by itself. Further, the absence of usage of the “LOVE” mark in the form in which it was registered and the minimal usage of its “altered” form of the “LOVE” mark with a diamond device also raised suspicions as to whether the defendant genuinely intended for the LOVE mark to be used as its trade mark, or as a means to unfairly monopolise a word used by other jewellery traders: at [120] and [123] to [127].

[Observation: Marks which satisfied the requirements in s 2 of the TMA were considered trade marks. They then proceeded to the registrability threshold. At this stage, these trade marks would fall into one of three distinct categories: (a) immediately registrable trade marks which were inherently distinctive; (b) immediately registrable trade marks with de facto distinctive character; or (c) not immediately registrable trade marks because they were not distinctive. These trade marks formed an “intermediate category” of trade marks: at [32] and [97].

The boundaries dividing the categories were not impermeable and immutable, but were porous and flexible. For example, a trade mark, which had acquired de facto distinctiveness through use or nurture, might well lose its “de facto distinctive character” status due to a lack of continued use or through the subsequent actions of other traders, with the result that the mark moved from category (b) into category (c). Of course, if the trader later intensively promoted the mark and put the mark into extensive use again, the mark might regain its de facto distinctive character and fall back into category (b) again: at [38].]

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