Mitac International Corp v Singapore Telecommunications Ltd and Another Action

• Jurisdiction: Singapore
• Judge: Lai Siu Chiu J
• Judgment Date: 05 June 2009
• Neutral Citation: [2009] SGHC 137
• Docket Number: Suit No 519 of 2007; Originating Summons No 1655 of 2007
• Date: 05 June 2009
• Year: 2009
• Published date: 23 July 2009
• Plaintiff Counsel: Tan Tee Jim SC, Christopher de Souza and Zheng Shaokai (Lee & Lee)
• Citation: [2009] SGHC 137
• Defendant Counsel: Gill Dedar Singh, Paul Teo and Roe Yun Song (Drew & Napier LLC)
• Court: High Court (Singapore)
• Subject Matter: Infringement,Registered proprietor of trade marks for computer products suing registered proprietor of trade marks for telecommunications services for infringement,Whether there was likelihood of confusion between defendant's modems and plaintiff's products,Whether there was identity or similarity in marks and goods,Trade Marks and Trade Names

5 June 2009

Lai Siu Chiu J:

1 These proceedings involved trade mark disputes in Suit No 519 of 2007 (“S519/2007”), Mitac International Corporation (“the Plaintiff”) sought inter alia an injunction to restrain Singapore Telecommunications Ltd (“the Defendant”) from infringing trade marks registered by the Plaintiff under TM No T0519317J (“the Mio Trade Mark”) and TM No T0305450E (“the Mio Digi Walker Trade Mark”) (collectively “the Plaintiff’s Trade Marks”), an order for delivery up or destruction of all goods, materials and printed matter the use of which would be in breach of the foregoing injunction, as well as an inquiry as to damages or, at the Plaintiff’s option, an account of profits. By way of Originating Summons No 1655 of 2007 (“OS1655/2007”), the Plaintiff applied for an order that certain trade marks of the Defendant be declared invalid on the ground that they were registered in breach of s 8(1) and/or s 8(2) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”).

2 By an order of court dated 1 August 2008, S519/2007 and OS1655/2007 were consolidated and they were heard together. At the conclusion of the trial, I dismised the Plaintiff’s claims in both actions. The Plaintiff is dissatisfied and has appealed against my decision in Civil Appeal No. 202 of 2008.

The facts

3 The Plaintiff is a company incorporated in Taiwan and has its corporate head office in Taipei. It is and was at all material times in the business of providing computer products, internet appliances, wireless communication products and photoelectric applications and had operations in, inter alia, Taiwan, China, North America, Europe and South East Asia.

4 The Plaintiff is and was at all material times the registered proprietor of the following trade marks in Singapore:

(a)

the Mio Trade Mark ([Image 1*]), registered under TM No T0519317J in Class 9 in respect of computers, MP3 players, personal digital assistants (“PDAs”), global positioning system (“GPS”) devices, portable media players, video game machines for use with televisions, liquid crystal display (“LCD”) television sets, mobile phones and cellular phones; and

(b)

the Mio Digi Walker Trade Mark ([Image 2*]), registered under TM No 0305450E in Class 9 in respect of cathode ray tubes, computer printers, disc drives, computer keyboards, computer mouses, add-on cards, printed circuit board modules, modems, power supplies, monitors, application specific integrated circuits, scanners, facsimile machines for use with computers, leather cases for cellular telephones, cases for cellular telephones, hands-free handsets for cellular telephones use in cars, holders for cellular telephones use in cars, computers, computer software, PDAs, telephones, telephone answering machines, mobile telephones and cellular telephones.

[*LawNet Admin Note: Images 1 and 2 are viewable only by LawNet subscribers via the PDF in the Case View Tools.]

The Plaintiff’s Trade Marks are and have at all material times been valid and subsisting in Singapore.

5 The Defendant (commonly known as “SingTel”) needs little introduction. It is the leading telecommunications group in Singapore. The Defendant was incorporated in Singapore in March 1992 and became a public company in October 1993. It was listed on the Singapore Exchange in November 1993. In October 2008, it was the largest company listed on the Singapore Exchange and was ranked the most valuable brand in the Singapore Brand Awards 2006.

6 On 20 November 2006, the Defendant had registered several trade marks in Classes 9 and 37, including the following trade marks: “Mio Box” in Class 9 under registration number T0625171I; “Mio TV” in Class 9 under registration number T0625165D; “Mio Voice” in Class 9 under registration no T0625189A; and “Mio Plan” in Class 9 under registration number T0625177H. Subsequently, the Defendant restricted the scope of the first two marks and cancelled the next two marks. Thus, by the time of trial, it was the registered proprietor of the following trade marks in Classes 9 and 37 in Singapore (“the Defendant’s Trade Marks”):

[Image 3*]	T0625171I	9	Computer modems to enable connection to the Internet
[Image 4*]	T0625165D	9	Set-top boxes to enable connection to the Internet
[Image 5*]	T0625179D	37	Installing, maintaining and repairing apparatuses,; instruments, units, devices and machines relating; to the field of electronics, computing, on-line; facilities, communications and telecommunications.
[Image 6*]	T0625191C
[Image 7*]	T0625185I
[Image 8*]	T0625173E
[Image 9*]	T0625167J

[*LawNet Admin Note: Images 3 to 9 are viewable only by LawNet subscribers via the PDF in the Case View Tools.]

7 The Defendant’s ownership and use of the Defendant’s Trade Marks in Singapore first came to the Plaintiff’s attention in or around January 2007. (The exact nature and scope of this use was disputed by the parties.) It was this ownership and use which led to the Plaintiff’s subsequent filing of S519/2007 and OS1655/2007.

The pleadings

8 In its final statement of claim filed on 21 May 2008 (“Statement of Claim (Amendment No 2)”), the Plaintiff claimed that the Defendant had infringed the Plaintiff’s Trade Marks under s 27(1) of the TMA by using in the course of trade in Singapore signs which were identical with the Plaintiff’s Trade Marks in relation to goods which were identical to goods for which the Plaintiff’s Trade Marks are registered.

9 The Plaintiff further claimed that the Defendant had infringed the Plaintiff’s Trade Marks under s 27(2) of the TMA by: using in the course of trade in Singapore signs which were identical with the Plaintiff’s Trade Marks in relation to goods and services which were similar to goods for which the Plaintiff’s Trade Marks are registered, and/or using in the course of trade in Singapore signs which were similar to the Plaintiff’s Trade Marks in relation to goods and services which were identical with or similar to goods for which the Plaintiff’s Trade Marks were registered, such that there existed a likelihood of confusion on the part of the public.

10 The Plaintiff also claimed that the Defendant had infringed the Plaintiff’s Trade Marks under s 31(5) of the TMA by using, in relation to goods and/or services, counterfeit trade marks which were identical with or so nearly resembling the Plaintiff’s Trade Marks as to be calculated to deceive.

11 The Plaintiff averred that, from a date unknown to it, the Defendant had been advertising, promoting and/or selling goods (namely computers; computer software; computer printers; computer keyboards; monitors; LCD televisions; televisions; computer software for use in delivering and receiving video-on-demand services, downloading an audio/video stream from a global computer network, work processing, organization of data, accessing the internet; cellular phones; mobile phones and telephones) under or by reference to the trade marks set out at [6] above as well as the marks “mio Mobile”, “mio” and “Generation mio” (which were unregistered). I shall refer to the Defendant’s Trade Marks and the unregistered SingTel mio marks collectively as “the marks complained of”. It also averred that the Defendant had been advertising, promoting and/or selling services used with or in relation to these goods. According to the Plaintiff, despite its request to the Defendant to cease and desist the uses complained of, the Defendant threatened and intended to continue with the said acts.

12 In its most recent defence filed on 6 June 2008 (“Defence (Amendment No 1)”), the Defendant admitted that the Plaintiff was the registered proprietor of the Plaintiff’s Trade Marks and that those trade marks were at all material times valid and subsisting in Singapore.

13 It admitted that it had registered the Defendant’s Trade Marks but denied the particulars of infringement stated in the Statement of Claim (Amendment No 2) and set out at [9] above. In particular, the Defendant averred that the marks complained of were neither identical nor similar to the Plaintiff’s Trade Marks. Further or alternatively, the goods or services in relation to which the Defendant used the marks complained of were neither identical nor similar to those in respect of which the Plaintiff’s Trade Marks were registered.

14 Further or alternatively, the Defendant denied that there was any likelihood of confusion arising from the Defendant’s use of the marks complained of, whether as alleged in the Statement of Claim (Amendment No 2) or at all, inter alia because:

(a)	the marks complained of were used in relation to the Defendant’s integrated mobile, fixed line and broadband services only (“the Defendant’s mio services”);
(b)	the Defendant’s mio services were always promoted in conjunction with the Defendant’s “SingTel” trade mark;
(c)	the Defendant did not offer for sale any goods under the marks complained of; and
(d)	the Defendant’s mio services could only be obtained by way of a subscription with the Defendant, the process of which would eliminate any likelihood of confusion.

15 The Defendant denied that it was in violation of s 31(5) of the TMA. It averred that the marks complained of did not constitute counterfeit trade marks, nor were they identical with or nearly resemble the Plaintiff’s Trade Marks. Further or alternatively, the Defendant averred that its goods or services under the marks complained of were not falsely represented as being the goods of the Plaintiff.

16 The Defendant contended that, in addition to the Defendant’s Trade Marks set out at [6] above, it was also the registered proprietor of mio trade marks in Classes 38, 41 and 42 (eg, “mio Box” in Class 38 under registration number T0625174C). Pursuant to s 28(3) of the TMA, use of its registered trade marks in relation to the goods and/or services for which those marks were registered did not amount to infringement.

17 The...