Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd

• Judge: Lai Kew Chai J
• Judgment Date: 20 October 2003
• Neutral Citation: [2003] SGHC 250
• Defendant Counsel: Tan Tee Jim SC (counsel) and Khor Wee Siong (Khor Thiam Beng & Partners)
• Year: 2003
• Citation: [2003] SGHC 250
• Subject Matter: Defence,Trade Marks Act (Cap 332, 1999 Rev Ed) s 27(6),Whether plaintiffs' earlier import and sale of products bearing trade mark of infringing product in Singapore amounted to implied consent,Exhaustion of rights,Whether any defence applicable,Trade Marks Act (Cap 332, 1999 Rev Ed) s 27,Whether requirements of passing off met,Whether plaintiffs' failure to object to registration of identical trade mark in foreign jurisdiction amounted to implied consent,Use of proprietor's trade mark for purpose of identifying proprietor's goods,Infringement,Implied consent,Whether defendants could rely on defence of implied consent under s 29(1) of the Trade Marks Act (Cap 332, 1999 Rev Ed) where infringing product not a parallel import,Passing off,Trade Marks and Trade Names,Whether alleged infringing trade mark identical or similar to plaintiffs' trade mark
• Plaintiff Counsel: G Radakrishnan (Khattar Wong & Partners)
• Published date: 03 December 2003
• Court: High Court (Singapore)

These are two appeals from the Registry that came before me. The first appeal is RA 89/2003 which is the defendants’ appeal against an order for summary judgment made by the learned Assistant Registrar. The second appeal, RA 90/2003 is the plaintiffs’ appeal on the matter of costs. I dismissed the first appeal and allowed the second appeal. I set out my reasons for doing so.

2 The plaintiffs’ claim is for trade mark infringement and passing off, in respect of, inter alia, the KATANA GOLF trade mark and kG Logo (T97/099241). In the Statement of Claim, the plaintiffs prayed for the following:

“1. An injunction to restrain the defendants, whether by itself, its servants or agents or any of them or otherwise howsoever from doing the following acts or any of them, that is to say, infringing the plaintiffs’ trade mark registration T97/099241 for the mark KATANA GOLF and kG logo as shown in the Schedule (“the Trade Mark”) by manufacturing, purchasing, importing, exporting, possessing for any purpose of trade, distributing, selling, offering for sale or advertising for sale gold clubs bearing the trademark KATANA or any other mark substantially similar or colourably imitative of the Trade Mark (hereinafter “the Infringing Mark”) or cause, enable or assist others to infringe as described above.

2. An injunction to restrain the defendants, whether by itself, its servants or agents or any of them or otherwise howsoever from doing the following acts or any of them, that is to say, passing off by manufacturing, purchasing, importing, exporting, possessing for any purpose of trade, distributing, selling, offering for sale or advertising for sale golf clubs or any other golfing articles bearing the mark KATANA which clubs or articles are not the goods of the plaintiffs as and for the goods of the plaintiffs or as being connected to or associated with the plaintiffs by the use of, on, with or in connection with the goods in the course of trade the mark KATANA or any other mark confusingly or deceptively similar or cause enable or assist others to pass off as described above.

3. Delivery up to the plaintiffs and/or its solicitors for destruction all articles bearing the Infringing Mark that are in the possession, custody or control of the defendants, its servants or agents or any of them, the continued retention and/or intended use of which would be a breach of the injunctions prayed for.

4. Full discovery on all the defendants’ acts of trade mark infringement and passing off.

5. An inquiry as to the damages suffered by the plaintiff or at its option an account of the profits made by the defendants from all the accts of trade mark infringement and passing off and payment by the defendants to the plaintiff of all sums found due upon the taking of such inquiry or account.

6. Costs.

7. Interest.”

The Trade Mark

3 The plaintiffs are the registered proprietor of the Singapore series mark KATANA Golf and kG Logo (T97/099241), for the following goods in class 28:

“Golf clubs; golf putters and irons; golf apparatus; golf clubs shafts, grips, heads, covers and head covers; golf balls; golf gloves; golf bags; golf bag travel covers; sporting bags; bags adapted for carrying sporting articles; all included in Class 28.”

4 There is a Japanese word appearing in the mark, which, as is apparent from the certificate of registration, means “Sword”.

5 The plaintiffs’ series mark has been registered since 1997. The registration is not without conditions. The certificate of registration clearly states that the registration shall give no right to the exclusive use of the word “GOLF” and the letters “kG”.

6 From the first affidavit of Mr Loh Ah Joo (managing director of the plaintiffs), it is clear that the plaintiffs have been selling golf clubs bearing its trade mark since 1997. I had the opportunity to examine sales invoices and receipts over the period of October 1997 to July 2002. There can be no doubt that the trade mark is in current use in Singapore.

The Defendants’ activities

7 The defendants are the plaintiffs’ competitor. It also sells golf clubs. On its pleading the defendants imported 6 drivers bearing the trade mark KATANA. This trade mark was registered in Japan by one Umeda Shokai KK, in August 2000. It is not a trade mark that is registered in Singapore. The plaintiffs were justified to take objection to the sale and advertisement in Singapore of the drivers bearing Umeda’s KATANA trade mark, by reason of its own registration in Singapore.

8 In this case the driver in question was known as the 55ATi, which is not made by the plaintiffs. There was also evidence that the plaintiffs had also sold, at one point in time, golf clubs bearing Umeda’s KATANA trade mark, as a distributor and retailer of golf clubs.

9 The plaintiffs hired a private investigator who obtained a trap purchase of this driver, bearing the KATANA trade mark. This is not in dispute. The defendants also did not deny the importation or sale of the 55ATi driver in Singapore.

Charge of trade mark and infringement

10 The plaintiffs commenced proceedings against the defendants over its sale of the 55ATi driver in Singapore, arguing that the Umeda trade mark “KATANA” infringed its trade mark (T97/099241) under section 27(1) and (2) of the Trade Marks Act (“TMA”).

11 Section 27(1) TMA provides that “A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.” Section 27(2) TMA provides that “A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or (b) the sign is similar to the trade mark and is used in relation to the goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public.” (my emphasis)

12 The language between the two sub-sections is clear and differentiated. The first subsection is what I would describe the most straightforward of trade mark infringements: the use (as defined under subsection (4)) of an identical trade mark in relation to identical goods or services. The second subsection envisages the scenario where an identical or similar trade mark is used in relation to identical or similar goods or services; in either situation the plaintiffs have to demonstrate a likelihood of confusion on the part of the public.

13 Yet the two subsections share a common phrase: an infringement of rights will only arise where the given activity of infringement takes place “without the consent of the proprietor.” This is common to primary infringements of intellectual property laws. It is here that the defendants has attempted to argue that defence applies in this instance, under section 29(1) TMA. It is the first issue that I had to address in this appeal brought against the learned Assistant Registrar’s decision to order summary judgment against the defendants. The second issue is one of implied consent, albeit this is also related to section 29(1) TMA. Although I was given to understand that the defendants abandoned another defence based on section 27(6) TMA, but in their reply submissions they canvassed the point again.

14 At the outset I would also make the additional point that within the language of section 27 TMA, it is of paramount clarity that “the proprietor” must refer to the proprietor or registered owner of the trade mark infringed against. It also follows that the trade mark complained against must a trade mark that is...