Nation Fittings (M) Sdn Bhd v Oystertec Plc and Another Suit

JudgeAndrew Phang Boon Leong J
Judgment Date15 December 2005
Neutral Citation[2005] SGHC 225
CourtHigh Court (Singapore)
Citation[2005] SGHC 225
Subject MatterRevocation,Invalidity,Whether defendants selling goods similar to plaintiff's goods,Whether any proper reasons for non-use,Whether to revoke registered proprietor's trade marks for non-use,Minimal use of registered trade marks in pristine form,Whether registered proprietor making groundless threat of trade mark infringement,Whether registered proprietor's trade marks having any distinctive character,Burden of proving use,Whether two-dimensional trade marks registered under repealed Trade Marks Act may be considered three-dimensional shape marks as provided for under new Trade Marks Act without need for fresh application for registration as such,Registered proprietor of trade marks for pipe fittings seizing allegedly infringing pipe fittings,Sections 27, 35 Trade Marks Act (Cap 332, 2005 Rev Ed),Trade Marks Act (Cap 332, 1993 Rev Ed), ss 27, 109, Third Sched para 2(1) Trade Marks Act (Cap 332, 2005 Rev Ed),Sections 2(1), 7(1)(a), 7(1)(b), 7(6), 23(1) Trade Marks Act (Cap 332, 2005 Rev Ed),Whether any infringement under s 27 Trade Marks Act,Passing off,Infringement,Trade Marks and Trade Names,Whether any misrepresentation of defendants' goods as plaintiff's goods,Whether registered proprietor's trade marks satisfying definition of "trade mark",Sections 22(1), 22(2), 105 Trade marks Act (Cap 332, 2005 Rev Ed),Whether application for registration made in bad faith,Grounds for declaring registered trade mark invalid,Whether use of registered trade marks in form differing in elements suffices,Plaintiff suing defendants for passing off,Whether defence of actual infringement of trade marks available to registered proprietor,Whether sufficient proof of goodwill belonging to plaintiff,Whether any actual or potential damage to business or goodwill of plaintiff resulting from such misrepresentation,Seized pipe fittings three-dimensional whereas registered proprietor's trade marks two-dimensional,Tort
Published date20 December 2005
Plaintiff CounselPatrick Yap Peck Choon and Prithipal Singh (K L Tan and Associates)
Defendant CounselM Ravindran and Adrian Kwong Sze Ken (Ravindran Associates)

15 December 2005

Judgment reserved.

Andrew Phang Boon Leong J:


1 The present case raises, apparently for the first time in the local courts, issues relating to the legal status of shape marks.

2 Shape marks are, as the very term suggests, three-dimensional in nature. Prior to the enactment of the present Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA” or “the present Act”) in 1998, which came into force on 15 January 1999 (with the exception of s 54, which came into force on 31 October 2000), such (shape) marks could not be registered. Only two-dimensional marks could be registered. However, since the enactment of the present Act, shape marks may be registered.

3 As we shall see, the present proceedings do not relate to shape marks that were registered under the TMA. Hence, an important threshold issue that arises is whether or not the registered trade marks that are the subject matter of the present proceedings and that were originally registered under the previous Trade Marks Act (Cap 332, 1993 Rev Ed) (“the previous Act”) as two-dimensional marks can now be considered as three-dimensional shape marks for the purposes of the present proceedings.

4 However, I am running a little ahead of the story. Before proceeding to outline and consider the various legal issues raised in the present proceedings, it would be appropriate to set out briefly the relevant factual background.

5 On 27 May 2004, Oystertec Plc (“Oystertec”), a company registered in the UK, obtained (and subsequently executed) a search warrant at the premises of Best Ceramic Pte Ltd (“Best Ceramic”). This raid was executed together with members of the Criminal Investigation Department’s Intellectual Property Rights Branch. Best Ceramic is a retailer of, inter alia, pipe fittings. Oystertec in fact seized 950 pipe fittings supplied by Nation Fittings (M) Sdn Bhd (“Nation Fittings”).

6 Correspondence ensued between the lawyers for Oystertec, Best Ceramic as well as Nation Fittings. Amongst this correspondence was a letter dated 18 June 2004 from Oystertec, through its lawyers, which contained (according to Nation Fittings) a threat of legal proceedings.

7 On 23 July 2004, Nation Fittings commenced legal proceedings (in Suit No 619 of 2004), alleging a groundless threat by Oystertec under s 35 of the TMA. Oystertec’s defence was that the threat was not in fact groundless as the sale of the (seized) pipe fittings had infringed its registered trade marks under s 27 of the same Act. These registered trademarks in Class 6 (for “pipe fittings”), of which Oystertec was the registered proprietor, were T81/02113Z and T81/02114H (hereinafter referred to as “TM 113” and “TM 114”, respectively, and which can be found at Appendix A to this judgment). TM 113 is in fact the device as used in T81/02114H, but which includes the words “CONEX SANBRA”.

8 On 13 August 2004, Oystertec commenced its own set of legal proceedings against Best Ceramic (in Suit No 674 of 2004) for alleged trade mark infringement of TM 113 and TM 114, as well as for alleged passing off. Best Ceramic not only denied such alleged infringement as well as passing off but also counterclaimed for a groundless threat (under s 35 of the TMA) as well as for the revocation of TM 113 and TM 114 under s 22 of the TMA and/or invalidation of these registered trade marks under s 23 of the same Act.

9 On 12 November 2004, Lai Siu Chiu J consolidated both the above actions and ordered that they be heard together. By a subsequent Order of Court dated 21 March 2005, it was ordered that both actions be treated for the purposes of trial as being one action under the (second) Suit No 674 of 2004, with all documents filed or given in either of the two actions mentioned being capable of being used in the consolidated proceedings. These are in fact the actions before the court in the present proceedings. To avoid unnecessary confusion, and consistent with the last-mentioned Order of Court, I will henceforth refer to Oystertec as “the plaintiff” and Best Ceramic as well as Nation Fittings as (collectively) “the defendants”.

The issues

10 The issues raised in this case may be classified into two broad categories – those relating to statutory provisions in general and to provisions of the TMA in particular, and those relating to the common law with regard to the law of passing off.

11 In so far as the former category is concerned, it may be classified into five broad issues, as follows:

(a) Whether or not the transitional provisions contained in the Third Schedule of the TMA (applicable by virtue of s 109 of the same Act) operated to render or “convert” the plaintiff’s two registered marks (viz, TM 113 and TM 114), which were registered as two-dimensional marks under the previous Act, into three-dimensional (shape) marks under the present Act, without the need for the plaintiff to make a separate application under the present Act.

(b) Whether or not the actions of both defendants in the present proceedings constitute trade mark infringement under s 27(1) and/or s 27(2) of the TMA.

(c) Whether or not the plaintiff’s two registered trade marks ought to be revoked on the basis of non-use in Singapore under s 22(1)(b) of the TMA.

(d) Whether or not the plaintiff’s two registered trade marks ought to be invalidated under s 23(1) of the TMA.

(e) Whether the plaintiff had made a groundless threat under s 35 of the TMA and, if so, the appropriate relief that should be accorded to Nation Fittings or any other party.

12 In so far as the latter category is concerned, the relevant issues (at common law) centred around the doctrine of passing off – in particular, whether Best Ceramic had in fact passed off Nation Fittings’ pipe fittings as the plaintiff’s.

The relevant provisions of the TMA

13 It would also be appropriate, in my view, to set out, right at the outset of the present judgment, the relevant provisions of the TMA that are in issue, and which were referred to briefly above.

14 Sections 22(1), 22(2), 22(3) and 22(4) read as follows:

Revocation of registration

22.—(1) The registration of a trade mark may be revoked on any of the following grounds:

(a) that, within the period of 5 years following the date of completion of the registration procedure, it has not been put to genuine use in the course of trade in Singapore, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of 5 years, and there are no proper reasons for non-use;

(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for the product or service for which it is registered;

(d) that, in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

(2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in Singapore includes applying the trade mark to goods or to materials for the labelling or packaging of goods in Singapore solely for export purposes.

(3) The registration of a trade mark shall not be revoked on the ground mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the 5 year period and before the application for revocation is made.

(4) Any commencement or resumption of use referred to in subsection (3) after the expiry of the 5 year period but within the period of 3 months before the making of the application for revocation shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.

15 Sections 23(1) and 23(2) read as follows:

Grounds for invalidity of registration

23.—(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 7.

(2) Where the registered trade mark was registered in breach of section 7 in that it is a trade mark referred to in subsection (1) (b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

16 Section 23(1) above refers to s 7, which reads as follows:

Absolute grounds for refusal of registration

7.—(1) The following shall not be registered:

(a) signs which do not satisfy the definition of a trade mark in section 2 (1);

(b) trade marks which are devoid of any distinctive character;

(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 of services, or other characteristics of goods or services; and

(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.

(2) A trade mark shall not be refused registration by virtue of subsection (1) (b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

(3) A sign shall not be registered as a trade mark if it consists exclusively of —

(a) the shape which results from the nature of the goods themselves;

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

(4) A trade mark shall not be registered if it is —

(a) contrary to...

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