MediaCorp News Pte Ltd v Astro All Asia Networks PLC

• Jurisdiction: Singapore
• Judge: Lee Seiu Kin J
• Judgment Date: 03 August 2009
• Neutral Citation: [2009] SGHC 176
• Docket Number: Originating Summons No 1192 of
• Date: 03 August 2009
• Year: 2009
• Published date: 06 August 2009
• Plaintiff Counsel: Wun Rizwi and Su Yunwen (KhattarWong)
• Citation: [2009] SGHC 176
• Defendant Counsel: Max Ng and Colin Phan (Gateway Law Corporation)
• Court: High Court (Singapore)
• Subject Matter: Trade Marks and Trade Names,Section 8(3) Trade Marks Act (Cap 332, 1999 Rev Ed),Whether opponent's earlier trade mark was distinctive,Grounds for refusal of registration,Whether earlier trade mark well known in Singapore,Whether use of later trade mark would indicate connection between services that later trade mark sought to register for and proprietor of earlier trade mark,Section 8(2) Trade Marks Act (Cap 332, 1999 Rev Ed),Whether applicant's trade mark similar to opponent's earlier registered mark,Whether likelihood of confusion on the part of the public

3 August 2009 Judgment reserved.

Lee Seiu Kin J:

1 This is an appeal by Mediacorp News Pte Ltd (“Mediacorp”) against the decision of the principal assistant registrar of trade marks (the “PAR”). The respondent, Astro All Asia Networks PLC (“Astro”) made (inter alia) two trade mark applications as follows^{[note: 1]}:

(a) Trade Mark application number T03/12742A in Class 16, for:

Mark	Class	Specification
Image 1	16	Calendars; folders (stationery); greeting cards; magazines; photographs; posters; printed publications; office requisites; (except furniture); letterheads; envelopes; complimentary slips; mailing labels; business cards; pamphlets; catalogues; charts; signboards of paper and cardboard; printed products for; packaging purposes; advertising circulars.

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(b) Trade Mark application number T03/12744H in Class 35 (the “Astro Mark”) for:

Mark	Class	Specification
Image 2	35	Consultancy and advisory services relating to business; industrial and business management assistance; business; enquiries; business investigations; business management and; organisation consulting; business research; business appraisals; publicity; business risk assessment and management; accounting services; business administration services; compilation of business; statistics; compilation and provision of commercial information; consultancy and advisory services relating to business mergers; and acquisitions.

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2 Mediacorp did not have any registration in respect of Class 16, but was registered under T00/06342B in Class 35 (the “CNA Mark”) (on 15 April 2000) for^{[note: 2]}:

Mark	Class	Specification
Image 3	35	Advertising material (updating of-); advertising matter; (dissemination of-); advertising space (rental of-); artists; (business management of performing-); business information; commerce and marketing information; publication of publicity; texts; television advertising; television commercials; all included; in Class 35.

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3 The PAR dismissed Mediacorp’s opposition to both applications with costs and allowed Astro’s applications to proceed to registration: see Astro All Asia Networks Plc v Mediacorp News Pte Ltd [2008] SGIPOS 13 at [107] (the “Judgment”). Mediacorp’s appeal before me is only in relation to Astro’s Class 35 application.

4 In its notice of opposition, Mediacorp relied on s 8(1), s 8(2), s 8(3) and s 8(4) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“the Act”). In response, Astro relied on s 28(1) of the Act in its counter-statement. At the proceedings below, Mediacorp and Astro did not proceed under s 8(1) or s 28(1) of the Act respectively. In the appeal before me, Mediacorp proceeded only on two grounds, viz s 8(2)(b) and s 8(3) of the Act.

Background Facts

5 The PAR set out the following background facts in her Judgment (at [7]-[23]):

7 The Opponents’ evidence was declared by Han Chuan Quee, the Opponents’ Senior Assistant Vice President (Corporate Services) in 2 statutory declarations dated 20 April 2005 and 7 July 2006 respectively.

8 Mr Han declares that the Opponents own and manage Channel NewsAsia, an English TV news channel established in March 1999 in Singapore. Its second feed, Channel NewsAsia (International), a satellite channel beamed via Asiasat 3S, was launched in September 2000. Channel NewsAsia is headquartered in Singapore and has an extensive network of journalists in 12 Asian cities and key Western capitals, including London, New York, Washington D.C., Paris and Moscow. It provides a staple of news on politics, business and social issues and also features lifestyle programmes.

9 Channel NewsAsia was established with the aspiration to become the authoritative voice of Asia, originating from Asia, covering news from Asia with Asian perspectives. At the time it was established, an Asian-owned all news channel in English did not exist and Channel NewsAsia filled that void. Much publicity was generated locally and overseas before and during the launch of Channel NewsAsia via promotional materials, advertisements and articles in the newspapers and in other local and overseas publications as shown in the exhibits lodged in the statutory declaration.

10 The Opponents are owners of the trade mark “CHANNEL NEWSASIA” and “A” device in Singapore in classes 35, 36, 38, 41 and 42; and have applications and registrations in other jurisdictions including Australia, Brunei, China, Hong Kong, Indonesia, India, Japan, Korea, Malaysia, Philippines, Thailand, United Kingdom, the United States of America and Vietnam.

11 The deponent states that the Opponents’ “CHANNEL NEWSASIA” mark has been substantially used in Singapore and other countries in respect of the services covered by the registrations. Channel NewsAsia is viewed by 16.3.million homes and hotels in 19 territories across Asia and has consistently enjoyed a high viewership especially amongst the public in Singapore. The channel is also online at www.channelnewsasia.com and www.cna.tv (Chinese website).

12 The Opponents exhibited materials and feature articles evidencing the use and recognition of the Opponents’ mark in Singapore and other countries. They also exhibited the landmark speeches and “live” news conferences from the region that Channel NewsAsia has covered since its inception in March 1999, as well as the prestigious international awards and accolades received for their highly acclaimed documentaries, current affairs and analysis programmes. Channel NewsAsia has also been extensively promoted and advertised over television, the local newspapers and both the local as well as overseas publications, and have actively raised their profile through the organisation of interactive games and tournaments.

13 The Opponents have expended a substantial sum in the advertising and promotion of their Channel NewsAsia mark and the annual expenses for the period between 2000 and 2005 as extracted from the Opponents’ accounting records which have been subjected to statutory audit are:

For Financial Year ended	Singapore $
31 March 2001	3,886,753
31 March 2002	1,652,261
31 March 2003	1,390,759
31 March 2004	1,021,822
31 March 2005	934,294

14 The annual turnover figures for the period between 2000 and 2005 as extracted from the Opponents’ accounting records which have been subjected to statutory audit are as set out:

For Financial Year ended	Singapore $
31 March 2001	17,254,371
31 March 2002	27,144,565
31 March 2003	21,356,418
31 March 2004	26,315,130
31 March 2005	28,626,685

15 In the statutory declaration in reply filed on 7 July 2006, the Opponents stressed that the Opponents’ mark have been used extensively in Singapore and elsewhere over 7 years such that the public have come to recognise the Opponents as the established and authoritative voice of Asian news.

The Applicant’s Evidence

16 The Applicants evidence was lodged by Lim Meng Leong, Head Counsel of the Applicants. He states that the Applicants are the region’s leading cross-media operator with Direct-To-Home (“DTH”) satellite television services in Malaysia and Brunei. It is also the leading commercial radio broadcaster and a major publisher of TV guides and lifestyle magazines in Malaysia.

17 The Applicants are the parent company of the Astro Group of companies and were registered as a foreign company in Malaysia on the 16 September 2003; and operate out of the All Asia Broadcast Centre, a fully-integrated digital broadcast and production complex in Kuala Lumpur. The Applicants have many subsidiary companies operating out of the same complex in Kuala Lumpur, such as Celestial Pictures, owns the world’s largest Chinese film library and its digitally remastered films are released internationally through theatrical, video, television and new media distribution, and the Celestial Movies channels. The Applicants also wholly own MEASAT Broadcast Network Systems Sdn Bhd, which holds a 20-year exclusive licence for direct-to-home (“DTH”) satellite transmission in Malaysia.

18 The Applicants derive a greater part of its revenue from subscriptions to its pay-TV services and to a lesser extent, from advertisements through its TV and radio services and distribution of its content assets. The Applicants’ services have also extended into interactive and multimedia services including provision of content for mobile telephony. The Applicants’ subscription TV service broadcasts 55 channels to more than 1.6million subscribers, or to some 31% of television homes in Malaysia. The Applicants through a joint venture also distribute these services in Brunei; and intend to significantly expand its services to the region in the future with the launch of the MEASAT-3 satellite.

19 The Astro Group operates eight FM terrestrial radio stations in Malaysia, which include the top-ranking stations in key Malay, Chinese, Indian and English vernacular demographics. These stations cumulatively reach over 10 million listeners a week or 62% of all radio listeners in Malaysia, and command over 79% of the radio industry's advertising expenditure. In addition, the Astro Group also packages 17 music channels in 6 languages for distribution over its DTH platform. The Group has also won awards for these services.

20 The Astro Group provides studio infrastructure and airtime sales and programming services for two radio stations in Kolkatta, India. The Group is also active in content origination and during the financial year 2005, it produced 1,300 hours of in-house content in the key Malay, Chinese, English and Indian languages; with further 5,000 hours of...