Nautical Concept Pte Ltd v Jeffery Mark Richard and Another

• Jurisdiction: Singapore
• Court: High Court (Singapore)
• Judge: Tan Lee Meng J
• Judgment Date: 27 December 2006
• Neutral Citation: [2006] SGHC 239
• Citation: [2006] SGHC 239
• Plaintiff Counsel: Alban Kang and Joyce Ang (Alban Tay Mahtani & De Silva)
• Published date: 28 December 2006
• Docket Number: Originating Summons No 1134 of
• Defendant Counsel: Ng Chee Weng and Daryl Ong (Gateway Law Corporation)
• Date: 27 December 2006
• Subject Matter: Section 8(2)(b) Trade Marks Act (Cap 332, 1999 Rev Ed),Holders of "Jeffery-West" trade mark opposing registration of "JWest" trade mark by appellant-applicant,Conflicts with earlier marks,Registration criteria,Grounds for refusal of registration,Trade Marks and Trade Names,Whether bad faith may be found where trade marks not identical,Section 8(6) Trade Marks Act (Cap 332, 1999 Rev Ed),Whether "Jeffery-West" mark and "JWest" mark confusingly similar,Whether application to register trade mark made in bad faith

27 December 2006 Judgment reserved.

Tan Lee Meng J

1 The appellant, Nautical Concept Pte Ltd (“Nautical”), which had sought to register the mark “JWEST” in class 25 of the International Classification of Goods and Services (“ICGS”), appealed against the refusal of the Principal Assistant Registrar of Trade Marks (“PAR”) to allow it to do so. The respondents, Mr Mark Richard Jeffery (“Jeffery”) and Mr Guy Anthony West (“West”), who had already registered their trademark “JEFFERY-WEST” in Singapore in class 25 of ICGS, had opposed the registration of “JWEST” as a trademark.

Background

2 Nautical is a Singapore company that is in the business of designing, distributing and selling footwear and leather accessories. The respondents, who are based in Northampton in England, are the co-founders and directors of Jeffery-West & Co Ltd, an English company in the business of designing and evolving footwear. They have been selling and exporting products bearing their mark “JEFFERY-WEST” to many countries since the 1980s. This mark, which was coined from the surnames of the two respondents, is registered not only in Singapore but also in the United Kingdom, the European Community, the United States, Malaysia and Indonesia. The global sales figures for the respondents’ goods rose from S$3.6m in 1998 to S$5.6m in 2002.

3 In the early 1990s, Nautical’s managing director, Mr Edison Lee Soon Ann (“LSA”) worked for BigCity Fashion Ltd (“Bigcity”), which introduced the respondents’ JEFFERY-WEST shoes to the Singapore market. Subsequently, the respondents’ shoes were sold at CK Tang, a well known store in Orchard Road.

4 In 1994, LSA incorporated Nautical, which became the respondents’ agents in Singapore for footwear for ladies that were sold under the brands “JEFFERY-WEST” and/or “JW”.

5 In 1997, Nautical attempted to file an application to register “JEFFREY-WEST” and “JW” as its own trade marks in Singapore without the respondents’ consent. As the material time, the respondents’ shoes were still being sold at CK Tang. This blatant attempt to take advantage of the respondents’ marks was subsequently aborted.

6 In early 1999, the respondents complained that Nautical used the names “Jeffrey-West London” or “Jeffrey-West of London” in Singapore for its shoes without their consent. The respondents tried to arrange for a licensing agreement with Nautical. However, the negotiations between the parties were not fruitful.

7 In 2000, the respondents’ investigations revealed that Nautical was selling “Jeffrey-West” and “JW” shoes and “Jeffrey West” wallets at a heavily discounted price.

8 In 5 June 2002, the respondents lodged their application for the mark “JEFFERY-WEST” in Class 25 of the ICGS under Trade Mark Number T02/08210F. The JEFFERY-WEST mark was registered without opposition for “articles of clothing, footwear and headgear”.

9 Shortly thereafter, on 26 August 2002, Nautical filed an application to register “JWEST” as a trademark in Class 25 of the ICGS. This mark was intended for its shoes, boots, slippers, sandals, sports shoes, sports boots, gymnastic shoes, athletics shoes, sneakers, shoes and boots for walking and climbing; socks, stockings and soles for footwear.

10 On 26 November 2003, the respondents filed an opposition to the registration of the “JWEST” Mark. They argued in their Notice of Opposition that Nautical’s mark should not be registered because of:

(i) Section 7(6) of the Act as it was made in bad faith;

(ii) Section 8(2)(a) and (b) of the Act because the applicant’s mark is confusingly similar to their mark;

(iii) Section 8(3) of the Act by virtue of the law of passing off; and

(iv) Section 7(1)(a) and (b) of the Act.

11 The PAR found that the Opposition succeeded but only on two grounds. First, Nautical’s application to register the “JWEST” mark was made in bad faith. Secondly, the two marks were confusingly similar.

12 As the appeal against the PAR’s decision was filed by Nautical, only her decision in relation to bad faith under section 7(6) of the Act and confusing similarity between the two marks under s 8(2)(b) of the Act require consideration.

Bad faith

13 Whether Nautical’s application to register “JWEST” as a trade mark was made in bad faith will be considered first. Section 7(6) of the Act provides as follows:

A trade mark shall not be registered if … the application is made in bad faith.

14 Section 8(6) of the Act elaborates as follows:

In deciding whether any such application was made in bad faith, it shall be relevant to consider whether the applicant had, at the time the application was made, knowledge of, or reason to know of, the earlier trade mark.

15 An allegation that a trade mark has been applied for in bad faith is a serious one. In Royal Enfield Trade Marks [2002] RPC 24, it was held (at [31]) that:

a plea of fraud should not be lightly made … and if made should be distinctly alleged and distinctly proved. It is not permissible to leave fraud to be inferred from the facts (see Davy v Garett (1887-78) LR 7 CH D 473 at 489). In my judgment precisely the same considerations apply to an allegation of … bad faith made under section 3(6). It should not be made unless it can be fully and properly pleaded and should not be upheld unless sit is distinctly provided and this will rarely be possible by a process of inference. [emphasis added]

16 The above passage was approved by the Court of Appeal in McDonald’s Corp v Future Enterprises [2005] 1 SLR 177 at 199.

17 In Gromax Platiculture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367, 379, Lindsay J outlined the boundaries of bad faith when he stated as follows:

Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area of trade being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context; how far a dealing...