P. T. Swakarya Indah Busana v Haniffa Pte Ltd and another

• Jurisdiction: Singapore
• Judge: Lee Seiu Kin J
• Judgment Date: 30 March 2012
• Neutral Citation: [2012] SGHC 69
• Court: High Court (Singapore)
• Docket Number: Originating Summons No 486 of 2010
• Year: 2012
• Published date: 05 April 2012
• Hearing Date: 06 May 2011,04 May 2011,05 May 2011,01 July 2011
• Plaintiff Counsel: Sukumar Karuppiah and Sue-Ann Li (Ravindran Associates)
• Defendant Counsel: Alban Kang and Deryne Sim Lifen (ATMD Bird & Bird LLP)
• Subject Matter: Trade Marks and Trade Names,Infringement
• Citation: [2012] SGHC 69

Lee Seiu Kin J:

In this originating summons, the plaintiff seeks a declaration that the 15 trademarks set out in Table 1 and Table 2 below are invalid. The six marks in Table 1 were initially registered by the first defendant on 11 January 2005. Three of these marks were assigned to the second defendant on 3 March 2009, and the remaining three marks were assigned to the second defendant on 18 January 2010. The nine marks in Table 2 were registered in the name of the second defendant. The defendants are related companies in that two of the directors and shareholders of the first defendant are also the only directors and shareholders of the second defendant. The 15 marks will be referred to as the “Challenged Marks”. TABLE 1

No	Trade Mark	Registration No.	Date registered in name of 1st Defendant	Date assigned to 2nd Defendant
1		T0500403C	11 Jan 2005	18 Jan 2010
2		T0500405Z	11 Jan 2005	18 Jan 2010
3		T0500407F	11 Jan 2005	18 Jan 2010
4		T0500402E	11 Jan 2005	3 Mar 2009
5		T0500404A	11 Jan 2005	3 Mar 2009
6		T0500406H	11 Jan 2005	3 Mar 2009

TABLE 2

No	Trade Mark	Registration No.	Date of Registration
7		T0902157I	2 Mar 2009
8		T0611999C	21 Jun 2006
9		T0901505F	13 Feb 2009
10		T0901507B	13 Feb 2009
11		T0901502A	13 Feb 2009
12		T1000630H	21 Jan 2010
13		T0902524H	12 Mar 2009
14		T0307663J	28 May 2003
15.		T0211991C	13 Aug 2002

The plaintiff’s application for invalidation of the Challenged Marks is based on two alternative grounds: pursuant to s 23(1) read with s 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”), the applications to register the Challenged Marks were made in bad faith (“Bad Faith Ground”); and pursuant to s 23(4) of the Act, the registrations of the Challenged Marks were tainted with fraud and/or misrepresentation (“Fraud/Misrepresentation Ground”).

The Background Facts The plaintiff

The plaintiff is a corporation incorporated in the Republic of Indonesia. It manufactures, inter alia, readymade garments bearing the marks: (a) “MARTIN” and “MR” and crown device (“Martin Mark”) and (b) “MARTIN PACEMAKER” and “MR” and crown device (“Martin Pacemaker Mark”), representations of which are set out below:

The predecessor to the Martin Pacemaker Mark was registered (registration no 145332) in Indonesia by one Pohan Widuri, a director and shareholder of the plaintiff in 1979. This was updated to the present Martin Pacemaker Mark on 2 July 1983 (registration no 179786). This mark was assigned to the plaintiff on 29 June 1987.

The defendants

The defendants are companies registered under the Companies Act 1967 (Act 42 of 1967). The first defendant was founded by one O K Mohamed Haniffa bin Kader Mohideen (“Mohd Haniffa”) who had been selling textiles since 1962. In 1976 he incorporated the first defendant. Since then, the business of the first defendant has grown into a multinational business with stores in Singapore, Malaysia and India selling products ranging from jewellery, electrical and electronic goods, toiletries, ready-made garments and foodstuff. The second defendant was incorporated in 2002 as a product development company to ensure a profitable and continuous supply chain for the first defendant. The second defendant designs, develops, procures and manufactures a wide range of goods almost exclusively for the first defendant. The first defendant’s managing director is Abdul Samad bin O K Mohamed Haniffa (“Abdul Samad”), the son of its founder, Mohd Haniffa. Abdul Samad became a director of the first defendant in May 1998 and took over the position of managing director from his father in March 2002. Abdul Samad is also one of two directors of the second defendant. He is the majority shareholder of both defendants and controls both defendants.

The plaintiff’s enforcement actions against other parties

In 1992, the plaintiff was engaged in litigation in originating motions no 18 of 1992 against Meng Lee Shirt Company (“Meng Lee”) in relation to a dispute between them over the “Marfin” trade mark (registration no 1266/85) (“Marfin Mark”) which was registered in Meng Lee’s name. This was concluded by a settlement agreement dated 22 May 1992 under which Meng Lee assigned the Marfin Mark to the plaintiff. The plaintiff also subsequently acquired two other marks, viz, the “Leo Martin” and “Martin King” marks, as a result of enforcement actions. The plaintiff registered these three marks in class 25 of the International Classification of Goods and Services (“ICGS”). The details of these three marks are in Table 3 below: TABLE 3

No	Trade Mark	Registration No	Registration date & Specification of Goods
1	[MARFIN & Device]	T8501266F	21 March 1985
Men’s shirts and slacks
2.		T0007285E	4 May 2000
Shirts for men, women and children; trousers; pants; slacks; tee-shirts; underpants; shorts for men, women and children; all included in Class 25 of the ICGS
3.		T9810739C	26 October 1998
Shirts, T-shirts, jeans, polo-shirts, tops, trousers, jackets, caps; and sweat shirts.

The plaintiff’s other registered marks

In 2006 and 2007, the plaintiff registered three marks in Singapore, all in Class 25 of the ICGS. The details of these three marks (“Plaintiff’s Singapore Marks”) are set out in Table 4 below: TABLE 4

No.	Trade Mark	Registration No.	Registration Date & Specification of Goods
1	[Martin Mark (see also above at [3])	T0611966G	20 June 2006
Ready made clothing: men, women and kids’ underwear; sandals; shoes and ties.
2	[Martin Pacemaker Mark (see also above at [3])	T0611956Z	20 June 2006
Ready made clothing: men, women and kids’ underwear; sandals; shoes and ties.
3	[“MR” and Crown Device]	T0707676G	11 April 2007
Clothing, footwear and headgear.

The plaintiff’s use of its marks in Singapore

The plaintiff gave evidence that its shirts bearing the Martin Pacemaker Mark have been sold in Singapore since 1982 and continue to be sold through several distributors. As for shirts bearing the Martin Mark, they have been sold from 2004. Since 1995, the plaintiff’s Singapore distributor has been Radha Exports Pte Ltd (“Radha Exports”). The plaintiff’s witnesses gave evidence that as a result of extensive sales of shirts bearing the Martin Pacemaker Mark and Martin Mark from 1982 to the present, the plaintiff enjoyed substantial goodwill and reputation in Singapore in relation to the sale of the same without carrying out any advertising or promotional activities. The network of retailers selling the above-mentioned shirts was located at Serangoon Road. The majority of the purchasers of the shirts were visitors from the Indian sub-continent as well as foreign workers from the said sub-continent who were based in Singapore. In my view, only the Martin Pacemaker Mark is relevant as the Martin Mark made its appearance much later, viz, in 2004 at the earliest. I shall therefore restrict my consideration to the Martin Pacemaker Mark. The plaintiff exhibited invoices as far back as 1982 in which its shirts were referred to as “Martin” shirts and not as “Martin Pacemaker” shirts. The plaintiff also called Naraindas Gangaram (“Naraindas”), the managing director of Radha Exports, to give evidence of the plaintiff’s distribution in Singapore of shirts bearing the Martin Pacemaker Mark since 1987. Radha Exports has also distributed in Singapore the plaintiff’s shirts bearing the mark “Martin Gold” (“Martin Gold Mark”) since 1997. Naraindas gave evidence that the plaintiff’s shirts bearing the Martin Pacemaker Mark (I should add, as well as the Martin Mark and Martin Gold Mark) were known by customers as “Martin” shirts.

I note that the plaintiff commissioned a survey by Forbes Research Pte Ltd to support its position. However the sample size was too small for the conclusion to be safely relied on. I did not take this factor into account in arriving at my decision.

Naraindas gave evidence that the first defendant was one of the customers who had bought shirts bearing the Martin Pacemaker Mark, Martin Mark and the Martin Gold Mark. He produced invoices to show that the first defendant had, between 1995 and 2009, purchased some 95,000 such shirts at a total price of about $623,000. The first defendant’s witnesses acknowledged purchasing shirts bearing the Martin Pacemaker Mark and the Martin Gold Mark, as well as a “Martin Plus” mark. The total quantity of shirts purchased was not substantively disputed. However they denied purchasing shirts bearing the Martin Mark.

The plaintiff pointed out that as far back as late 1995, the first defendant has been purchasing shirts bearing the Martin Pacemaker Mark. This was more than six years before the first registration of the Challenged Marks by the second defendant (on 13 August 2002), and more than nine years before the first defendant registered the six Challenged Marks in Table 1 (on 11 January 2005) (see above at [1]).

The defendants did not dispute that the plaintiff had used the Martin Pacemaker Mark in Singapore since 1982. Their challenge was that the Martin Mark was only introduced in 2006. They did not adduce any significant evidence to disprove the plaintiff’s assertion that its shirts were associated with the word “Martin”.

The defendants’ marks

Abdul Samad, the first defendant’s managing director and the second defendant’s director (see above at [5]), gave evidence on how the...