National Dairies Ltd v Xie Chun Trading Pte Ltd

• Judge: Christopher Lau JC
• Judgment Date: 01 September 1997
• Neutral Citation: [1997] SGHC 228
• Citation: [1997] SGHC 228
• Defendant Counsel: Patrick Yap (KL Tan & Associates)
• Published date: 19 September 2003
• Plaintiff Counsel: Chan Kok Chye (Chu Chan Gan & Ooi)
• Date: 01 September 1997
• Docket Number: Originating Motion No 13 of 1996
• Court: High Court (Singapore)
• Subject Matter: Trade Marks and Trade Names,s 40(1)(b) Trade Marks Act (Cap 332),Bona fide use,Whether respondents registered mark with bona fide intention to use,s 40(1)(b)Trade Marks Act (Cap 332),Confusion or deception under s 15 Trade Marks Act (Cap 332),Words and Phrases,Whether bona fide use of mark by respondents for continuous period of five years up to one month before date of present application,s 15 Trade Marks Act (Cap 332),"Bona fide use",Respondents' misrepresentation to registrar,Whether registration obtained by fraud,Whether applicants precluded from rectification due to substantial delay in seeking relief,Respondents' registered mark identical to applicants' expired mark,Rectification of register,Question of fact,Application to expunge from mark from register,Registration,Whether applicants abandoned their mark in Singapore,Whether applicants aware of respondents' application to register identical mark,Whether registration would have caused public "real tangible danger of confusion" over source of products

Judgment:

CHRISTOPHER LAU JC

The applicants, National Dairies Ltd, part of the National Foods Group of Companies in Australia, are producers in Australia of a wide range of dairy products, including milk, cream, butter, flavoured milk and other milk based products such as custard as well as non-dairy products such as fruit juice, mineral water and pancake batter. The applicants are the proprietors of the mark PURA in respect of these products in Australia and the expired mark PURA registered in the name of its predecessors in title Bakers Milk (Tas) Pty Ltd (Bakers Milk) in the Register of Trade Marks, Singapore (the Register) in Class 29 in respect of milk and other dairy products and desserts.

2.In these proceedings the applicants sought relief against the respondents in respect of the identical mark registered in the name of the respondents under registration No 1452/87 in Class 29 in the Register in respect of milk, jams, eggs, yoghurt and other dairy products, edible oils and fats.

3.On consideration of the affidavit evidence and following submissions by counsel, I granted the reliefs sought by the applicants and ordered that the mark PURA registered in the name of the respondents in the Register be expunged.

4.The matter arose in this way: on 11 June 1935 a company in Australia known as Metropolitan Dairy Products Pty Ltd (Metropolitan) registered the mark PURA in Class 29 in respect of milk and milk products in the Trade Marks Register in Australia. On 15 June 1966, the same mark PURA was registered by Bakers Milk in Class 29 in respect of milk and other dairy products and desserts in the Register. Bakers Milk, which subsequently changed its name to Tasmaid Foods Pty Ltd (Tasmaid) on 1 March 1984 was a wholly owned subsidiary of Consolidated Foods Ltd (CFL) an Australian company. Metropolitan was also a subsidiary of CFL. Metropolitan subsequently changed its name to Pura Dairy Products Pty Ltd (Pura Dairy). Between 1981 and 1985, Pura Dairy registered the mark PURA on several occasions in the Trade Marks Register in Australia in respect of milk, milk based products, cream, milk based drinks, yoghurt, jelly, fruit juice and cordials, all other drinks and beverages.

5.The PURA mark had accordingly been used extensively on a wide range of dairy and non-dairy products in Australia since 1935. It had also been promoted extensively in Australia. Sales in Australia had been substantial for many years. In the period 1984 to 1994 for instance, sales figures for milk alone had been more than A$50,000,000 annually.

6.From 1984 to about February 1987, the respondents were CFL`s sole agents for the sale and distribution of the PURA range of dairy products in Singapore and from 1984 to early April 1987 the respondents` advertising and promotion expenditure for CFL`s PURA range was shared by CFL. In early 1987 a decision was made by CFL to cease direct exports to Singapore due to the high costs of administrative time involved in scheduling, documentation, accounting etc and the need to concentrate on CFL`s core business problems. Shipments from CFL direct ceased from Friday, 27 February 1987. CFL however continued to manufacture their milk products for export sales to Singapore supplying them instead through a company known as Bemco (Australia) Pty Ltd (Bemco) a company incorporated by Mr Richard J Baker, CFL`s former marketing manager.

7.Shortly thereafter, on 30 March 1987 the respondents applied to register the mark PURA in their name in the Register. The application, made under s 12(1) of the Trade Marks Act (Cap 332) (the Act), was on the basis that the respondents were the bona fide proprietors of the mark in that they had used the mark themselves since 1984. Section 12 provides:

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for registration in Part A or Part B of the register.

8.At the time of the respondents` application Bakers Milk`s registration of the same mark in Singapore had not expired (although it did subsequently expire on 15 June 1987 as no application had been made for its renewal). On 21 January 1988, the Registrar of Trade Marks wrote to the respondents` then solicitors M/s Yong & Partners objecting to the respondents` application pursuant to s 15(1) and/or s 23 of the Act by reason of the mark having been registered in the name of Bakers Milk.

9.On 2 September 1988, M/s Yong & Partners, in answer to the registrar`s objection, wrote on behalf of the respondents stating:

to the best of our clients` knowledge, this mark has not been used by anyone other than our clients since 1984.

10.Thereafter on the registrar`s request for evidence that the mark had not been used by any one other than the respondents, Chung Suan Lim (Chung), a director of the respondents, swore a statutory declaration on 13 December 1988 stating, inter alia : a. `the [respondents] started using the Trade Mark of `PURA` in relation to the goods in respect of which the mark is proposed to be registered sometime in 1984,`

b. `the [respondents] has been selling substantial quantities of the goods under the mark of `PURA` to local purchasers and has gradually been establishing a market for its goods under the mark of "PURA"`

c. `to the best of [his] knowledge, the mark `PURA` has since 1984 not been used in Singapore by anyone other than the [respondents].`

11.Following Chung`s statutory declaration and on the respondents` furnishing documents evidencing sales of PURA goods and the costs allegedly incurred by them in promoting the PURA mark, the registrar permitted the respondents` registration of the mark. The mark was therefore registered on 30 March 1987. It was subsequently renewed by the respondents for ten years from 30 March 1994.

12.In 1991, Pura Dairy and Tasmaid were acquired by the applicants. On 17 January 1994 Pura Dairy formally assigned ownership of the Australian PURA mark to the applicants. In this way the applicants became the proprietors of the mark in Australia and the expired mark in Singapore.

13.When the applicants acquired Pura Dairy, a decision was made to launch PURA as a national brand for the National Dairies Group of Companies. The applicants also commenced looking at ways to expand or to restore the overseas markets for PURA products. One of the countries in which the applicants were interested to revive trade in PURA dairy products was Singapore. Around June 1994, the applicants made a search of Class 29 of the Register and found there was an identical mark in the name of the respondents. They also found the expired registration in the name of Bakers Milk. On 5 July 1994, the applicants unsuccessfully applied to register the trade mark PURA in Class 29, in respect of `milk, milk based products, milk based drinks and all dairy products in this class`.

14.At the hearing, which proceeded purely on affidavit evidence, Mr Yap who acted for the respondents raised a preliminary objection. The objection was to the admissibility of the following three affidavits filed by the applicants: (a). the third affidavit of David James Porter, the applicants` general manager, International Marketing and Sales, (filed on 16 September 1996);

(b). the third affidavit of Yee Fook Weng (filed on 2 September 1996); and

(c). the first affidavit of Leo Ying, an investigator (filed on 2 September 1996).

All three affidavits referred to events that had taken place in August 1996. The objection taken essentially was that as all three affidavits referred to events that had taken place in August 1996, they were completely irrelevant to the issues I had to decide which related to events arising well before August 1996.

15.I dismissed Mr Yap`s preliminary objection and allowed the three affidavits to remain on the record. I did so for several reasons. Firstly, by an order of court dated 10 July 1996, the applicants had been given leave to file final affidavits, if necessary, or within four weeks after the service of the respondents` final affidavits. The three affidavits were filed pursuant to this order. Secondly, each of the affidavits referred to events which were, in my view, relevant to the issues between the parties: the crux of Leo Ying`s first affidavit being that a survey of eleven consumers carried out on 27 August 1996 at Cold Storage supermarket at Centrepoint Shopping Centre showed, in relation to a product known as Skinny Milk sold by the respondents, that these consumers did not know this product as `PURA` Skinny Milk, the gist of Yee Fook Weng`s third affidavit being that there is no product known as `PURA` Skinny Milk being sold by NTUC supermarkets; and the purport of David James Porter`s third affidavit being to explain why the `PURA` mark which had been registered by the applicants` predecessors had unintentionally been allowed to lapse.

16.The applicants` case was put in three ways. First, the applicants submitted that the original registration had been obtained by fraud as relevant information had been withheld by the respondents, at the time of the respondents` application, from the registrar; alternatively that the mark PURA was likely to deceive or cause confusion. Secondly, it was said there had been no `bona fide use` of the mark for a continuous period of five years up to one month before the date of this application, ie 6 February 1991 to 6 February 1996. Finally it was said that the mark had been registered without any bona fide intention on the part of the respondents to use the mark and that there had in fact been no bona fide use of the mark in relation to the goods by the respondents up to the date one month before the date of this application, that is, 6 February 1996. The application for relief was filed by the applicants on 6 March 1996.

17.The relevant statutory provisions were ss 48(1), 15(1), 40(1)(b) and 40(1)(a) of the...