Nautical Concept Pte Ltd v Jeffery Mark Richard and Another

• Judge: Tan Lee Meng J
• Judgment Date: 27 December 2006
• Neutral Citation: [2006] SGHC 239
• Citation: [2006] SGHC 239
• Defendant Counsel: Ng Chee Weng and Daryl Ong (Gateway Law Corporation)
• Published date: 28 December 2006
• Plaintiff Counsel: Alban Kang and Joyce Ang (Alban Tay Mahtani & De Silva)
• Date: 27 December 2006
• Docket Number: Originating Summons No 1134 of
• Court: High Court (Singapore)
• 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 must so fall-short as to amount to bad faith is a matter best left adjudged not by some paraphrase by the courts (which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard to all material circumstances.

18 In paragraphs 9 to 13 of their notice of opposition, the respondents listed the following grounds for alleging that Nautical had acted in bad faith:

9 The Opponents’ Marks have also acquired extensive goodwill and reputation in relation to the Opponents’ Marks and the associated common law rights in the Opponents’ Marks in Singapore and worldwide.

10 The Applicants in choosing to register the word JWEST are seeking to take advantage of the Opponents’ rights and reputation in the Opponents’ Marks and therefore the Applicants’ Mark was not chosen in good faith.

11 In early 1999, the Opponents and/or their representatives and the Applicants corresponded with each other and the Applicants were therefore made aware of the Opponents’ rights to the Opponents’ marks.

12 It was also made aware to the Applicants in March 1999 during the meetings that the Opponents were going to use a variation of the JEFFERY-WEST mark “J-W” in the future. Therefore, it is submitted that the Applicants had knowledge about the Opponents’ marks and rights as early as 1998, which is 4 years before application date of 26 August 2002.

13 The use or intended use likewise of the Applicants’ Mark is not in good faith and the Applicant cannot therefore validly claim to be the bona fide proprietor of the Applicants’ Mark. Registration of the Applicants’ mark, if allowed, would therefore be contrary to Section 7(6) of the Act.

19 If bad faith is established, the application to register the trade mark in question will not be allowed even if the mark does not cause any confusion or breach of duty. That bad faith must be kept distinct from a breach of duty was stressed in Demon Ale Trade Mark [2000] RPC 345 at 356 by Hobbs QC, who explained that the expression “bad faith” has “moral overtones which appear to make it possible for an application for registration to be rendered invalid … by behaviour which otherwise involves no breach of any duty, obligation, prohibition or requirement that is legally binding upon the applicant”.

20 In Harrison’s Trade Mark Application [2005] FSR 10, Sir William Aldous, with whom Arden and Pill LJJ agreed, stated at [26] that the words “bad faith” suggested a mental test and the court must decide whether the applicant’s knowledge was such that his decision to apply for registration of his mark would be regarded as bad faith “by persons adopting proper standards”. In this case, the applicant attempted to register the trade mark “Chinawhite” for “beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices; syrups and other preparations for making beverages in class 32, and alcoholic beverages (except beers) including cocktails in class 33. The opponent was the owner of a night club called “Chinawhite”, whose bar manager had approached the applicant, saying that he had developed a cocktail called “China White” and that a derivative of the cocktail was to be served at the nightclub....