NV Sumatra Tobacco Co v Nanyang Brothers Tobacco Co Ltd

• Jurisdiction: Singapore
• Judge: Judith Prakash J
• Judgment Date: 27 October 1999
• Neutral Citation: [1999] SGHC 283
• Docket Number: Originating Motion No 27 of 1998
• Date: 27 October 1999
• Year: 1999
• Published date: 19 September 2003
• Plaintiff Counsel: Patrick Yap (KL Tan & Associates)
• Citation: [1999] SGHC 283
• Defendant Counsel: Ian Fok (Rodyk & Davidson)
• Court: High Court (Singapore)
• Subject Matter: Proof of evidence,Words and Phrases,Trade Marks and Trade Names,Evidence,Relevant considerations,Meaning of "bona fide use",Burden of proof,Application to rectify register of trade marks,Whether use had to be substantial,Onus of proof,Application to expunge registered trade mark,Rectification of register of trade marks,s 40(1) Trade Marks Act (Cap 332, 1992 Ed),Registration,"Bona fide use"

: The applicants, an Indonesian company, carry on the business of the manufacture and sale of cigarettes. They have been in this business since 1952. Sometime ago they decided to use the mark `DOUBLE HAPPINESS` with respect to various tobacco products and accessories. On 5 September 1994, they applied to the Registrar of Trade Marks, Singapore to register the mark `DOUBLE HAPPINESS` in Part A under class 34.

On 18 April 1997, the Registrar objected to the application. One of the grounds of objection was that the registered trade mark No TM 4030/90 under class 34 in respect of `tobacco (raw or manufactured), cigars and cigarettes` in the name of Nanyang Brothers Tobacco Co, Ltd, the respondents herein, was similar to the applicants` mark. The applicants were unable to overcome the Registrar`s citation.

On 31 August 1998, the applicants filed an originating motion intituled `In the Matter of Registered Trade Mark 4030/90 for DOUBLE HAPPINESS (word) and ` ` (Chinese word) registered in the name of Nanyang Brothers Tobacco Co Ltd in Class 34` in which they asked for, inter alia, an order that the Register of Trade Marks be rectified by expunging therefrom the whole entry relating to the registered trade mark No 4030/90 (`the mark`).

The grounds of the application as stated in the originating motion were:

(i) that the mark was registered without any bona fide intention on the part of the respondents that it should be used in relation to those goods by them 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 the application; and

(ii) that up to the date one month before the date of the application, a continuous period of five years or longer had elapsed during which the mark was a registered trade mark and during which there was no bona fide use in relation to the goods by the respondents.

The application was thus clearly grounded in ss 40(1)(a) and 40(1)(b) of the Trade Marks Act (Cap 332) (`the Act`).

An application to rectify the Register of the Trade Marks (`the register`) by removing a trade mark from it can be made under s 40(1) by `any person aggrieved` by the registration. Mr Fok for the respondents conceded at the outset, and rightly so, that the applicants here did fall within that definition. He argued, however, that they were not entitled to succeed in their application because the respondents had made bona fide use of the mark within Singapore during the specified period.

An application for rectification under s 40(1)(a) requires the applicant to prove two things. First, that at the time of registration the person applying for registration had no bona fide intention of using it in relation to the goods it affected and, secondly, that after the registration there had in fact been no bona fide use of the trade mark in relation to those goods. There is no time period that has to be satisfied in relation to this subsection and an application under it can be made at any time after registration of the trade mark concerned. On the other hand, where the rectification application is made under s 40(1)(b), the applicant although not needing to prove that the original registration of the trade mark was not bona fide, must prove that there had been no bona fide use of it during a continuous period of five years up to the date falling one month before the application. Thus, only a trade mark that has been registered for more than five years can be challenged under this latter subsection.

In this case whilst the grounds of the application cited both subsections, the applicants concentrated their evidence and their arguments around s 40(1)(b). Their main contention was that for the five years prior to 31 July 1998 the respondents had no made bona fide use of the mark in relation to their cigarettes in Singapore.

The evidence

The evidence adduced by the applicants in support of their contention as to non use was contained in affidavits. The first affidavit filed was that of one Ng Chui Guan, a private investigator employed by a business called HS Intellectual Property Services (`HS`). Mr Ng affirmed that on 20 October 1997 HS received instructions from the applicants` solicitors to investigate and do a market survey as to whether the mark had been used in Singapore in respect of tobacco (raw or manufactured), cigars and cigarettes during the previous five years. Two investigators were assigned to the job, one of them being Mr Ng.

Mr Ng and his colleague produced a record of the market survey and investigations they conducted in Singapore between 21 October to 4 November 1997. During this period, 38 retail outlets comprising shops, supermarkets and mini-marts and kiosks dealing in cigarettes and other tobacco products were visited. At all these places, the staff were shown a copy of the mark and all were positive that they had not come across cigars, cigarettes, tobacco or tobacco related products bearing the mark and stated that they had not previously sold any such products. In the course of the survey, the operators stated that they also checked many coffee shops, provision shops and mini-marts in various HDB town centres but none was found to be offering the relevant goods bearing the mark.

The next stage of the enquiry was to conduct telephone enquiries with wholesalers of cigarettes, cigars and tobacco whose names had been found in the 1997 commercial directory. Eleven wholesalers were contacted. None of them were found to be dealing in cigars, cigarettes, tobacco or tobacco related products bearing the mark. Except for one company none were familiar with the mark nor were they aware of such products bearing the mark being distributed or retailed locally. The only exception informed the operatives that the mark related to a cheap Chinese brand of cigarettes which was not available in Singapore.

On 17 June 1998, HS received instructions from the applicants` solicitors to conduct another round of surveys to confirm that the mark had not been used after October and November 1997. This second survey was completed on 10 July 1998. It confirmed that the operatives had re-visited most of the shops that had been checked during the first survey and also those outlets in the various town centres previously...