PT Swakarya Indah Busana v Dhan International Exim Pte Ltd

• Jurisdiction: Singapore
• Judge: Lai Siu Chiu J
• Judgment Date: 14 December 2009
• Neutral Citation: [2009] SGHC 280
• Docket Number: Originating Summons No 2 of 2009
• Date: 14 December 2009
• Year: 2009
• Published date: 05 February 2010
• Plaintiff Counsel: Sukumar Karuppiah and Justin Blaze George (Ravindran & Associates)
• Citation: [2009] SGHC 280
• Defendant Counsel: Vijai Parwani (Parwani & Co)
• Court: High Court (Singapore)
• Subject Matter: Invalidity,Trade Marks and Trade Names

14 December 2009 Judgment reserved.

Lai Siu Chiu J:

1 This was a case where PT Swakarya Indah Busana (”the plaintiff”) sought to invalidate trademarks registered by Dhan International Exim Pte Ltd (“the defendant”) under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) comprising of the words “EMPEROR MARTIN” and a star device (“the defendant’s mark”). It was the plaintiff’s case that the defendant’s mark was registered in bad faith and/or the registration was tainted with fraud.

The facts

2 The plaintiff is a company incorporated in Indonesia and is a manufacturer of ready-made garments including shirts bearing the marks “MARTIN” (“the plaintiff’s first mark”) and “MARTIN PACEMAKER” (“the plaintiff’s second mark”) with stylized letters MR enclosed in an oblong device topped with a crown. The plaintiff’s first mark is as follows:

[LawNet Admin Note: Image 1 is viewable only by LawNet subscribers via the PDF in the Case View Tools.]

while it’s second mark is as follows:

[LawNet Admin Note: Image 2 is viewable only by LawNet subscribers via the PDF in the Case View Tools.]

3 The plaintiff’s second mark was registered in Indonesia as far back as 2 July 1983 and it was assigned to the plaintiff on or about 29 June 1987. In Singapore, the plaintiff registered six marks under Class 25 of the International Classification of Goods and Services (“ICGS”). All six registered marks included the word “MARTIN” (collectively “the MARTIN marks”).

4 The defendant is a Singapore company registered on 4 April 1988 which was converted from a sole-proprietorship that began business in 1971, initially as an importer and wholesaler of Indian saris. In early 2000, the defendant expanded its business to include the sale of men’s shirts catering to the Indian community in the “Little India” area of Singapore at Serangoon Road. The defendant ceased to be a retailer in 2003 and continued its business as a wholesaler operating from No 46 Upper Dickson Road (“the defendant’s shop”) while its office for administration purposes was at No 1 North Bridge Road #11-08, High Street Centre, Singapore (“the defendant’s office”). The defendant has two directors who are siblings viz Sanjay Sunder (“Sanjay”) and Neeraj Sunder Samnani (“Neeraj”).

5 In May 2002, the defendant applied to register the defendant’s mark for its own brand of men’s shirts. The defendant’s mark was approved for registration in May 2003 under Class 25 of the ICGS and the defendant commenced selling shirts using the defendant’s mark in 2004.

6 The plaintiff’s shirts marketed under the plaintiff’s first and second marks as well as the MR device shown at [2] (hereinafter collectively referred to as “the MARTIN shirts”) have been sold in Singapore since 1982. They were shipped from Indonesia to Tan Lai Seng Trading Company (“TLS”) (a sole-proprietorship of one Tan Say Boon) who was the exclusive distributor for the promotion, marketing and sale of the MARTIN shirts in Singapore. In turn TLS distributed the MARTIN shirts through no less than seven dealers which included Ho Keh Hee trading as Meng Lee (“Meng Lee”).

7 Between 1992 and 1994, Radha Exports (“Radha”) a sole-proprietorship, was the plaintiff’s Singapore distributor in place of TLS. In 1995, Radha Exports Pte Ltd (“REPL) the successor company to Radha, took over the distribution of the MARTIN shirts.

8 The plaintiff first applied in Singapore to register the plaintiff’s second mark and the MR device on 11 May 1981 through TLS. The application was rejected by the Registrar of Trade Marks based on the old Trade Marks Act (since repealed on 15 January 1999).

9 Subsequently, Radha filed an application on or about 16 February 1989 to register the plaintiff’s first mark and the MR device. Again the application was rejected. Both this and the earlier unsuccessful application were filed with the plaintiff’s consent.

10 On or about 10 October 1991, the plaintiff filed an application to register the plaintiff’s second mark. Once again, the application was rejected.

11 Earlier the plaintiff had three marks registered. One was for the mark MARFIN with the MR device which was first registered on 21 March 1985 (“the MARFIN mark”). The plaintiff was assigned the MARFIN mark after it sued the registrant Meng Lee (its former retailer) in Originating Motion No 18 of 1992 (“the OM”). In the OM, the plaintiff and its retailers had applied to expunge the MARFIN mark. The OM was discontinued after the plaintiff signed a settlement agreement on 22 May 1992 (“the settlement agreement”) with and paid, Meng Lee a sum of $360,000 to assign the MARFIN mark to the plaintiff.

12 The second mark registered on 26 October 1998 was for the words LEO MARTIN. The original registrant Mohamed Mustafa & Samsuddin Pte Ltd (Singapore) subsequently assigned the mark to the plaintiff.

13 The third mark resulted from Suit No 14 of 2008 (“the 1992 Suit”) where the plaintiff sued Meng Lee (and his daughter Ho Foong Nee) for breach of the settlement agreement in [11] when Meng Lee registered the mark MARTIN KING and M device on 4 May 2000 without the plaintiff’s authority. The 1992 suit was eventually resolved by the signing of a settlement agreement wherein Meng Lee agreed to assign the MARTIN KING and M marks to the plaintiff.

14 The plaintiff eventually managed to register the plaintiff’s first mark and the plaintiff’s second mark, together with the stylized letters MR on 20 June 2006. Subsequently, on 11 April 2007, the plaintiff registered the MR device. These were the plaintiff’s fourth, fifth and sixth marks respectively.

15 In summary, the plaintiff’s current registered marks are the following:

[LawNet Admin Note: Image 3 is viewable only by LawNet subscribers via the PDF in the Case View Tools.]

16 The plaintiff’s marketing manager Alvernia Tan (“Alvernia”) deposed in her first affidavit that the essential feature of the plaintiff’s MARTIN marks was the word MARTIN. This equally applied to the three marks registered by the plaintiff personally (numbered 4, 5 and 6 in [15]) as well as to the three earlier marks that were assigned to the plaintiff.

17 Alvernia deposed that since 1982 at least, the plaintiff had sold and it continues to sell in substantial quantities in Singapore, MARTIN shirts. Sales were first made through TLS and later through REPL.

18 Through TLS, in 1982, the plaintiff sold 287 dozens of MARTIN shirts. In 1990, the quantities sold peaked at 67,820 dozens. In terms of value, the sales were $18,655 in 1982 and by 1990, they had increased to $4,408,300.

19 The following chart showed the estimated total sales made by TLS between 1982 and 1991:

YEAR	ESTIMATED AMOUNT; IN DOZENS	ESTIMATED SALES; IN S$
1982	287	18,655.00
1983	622	40,430.00
1984	450	29,250.00
1985	1023	66,495.00
1986	562	36,530.00
1987	5553	360,945.00
1988	27,844	1,809,806.00
1989	56,013	3,644,095.00
1990	67820	4,408,300.00
1991	49,447	3,214,185.00
	Grand Total	13,628,691.00

20 As for the sales made by Radha of MARTIN shirts between 1992 and 1994, they were as follows:

YEAR	QUANTITY OF; MARTIN SHIRTS (PIECES)	ESTIMATED SALES; IN S$
1992	500,100	2,282,086.00
1993	706,164	3,346,033.00
1994	532,260	2,627,092.00
Total	1,738,524	8,255,211.00

21 After it took over from Radha as the plaintiff’s distributor, REPL made the following sales between 1995 and February 2008:

YEAR	QUANTITY OF; MARTIN SHIRTS (PIECES)	TOTAL SALES PRICE; IN S$
1995	578,782	2,795,700.00
1996	536,086	2,781,365.00
1997	398,472	2,088,932.00
1998	271,071	1,077,580.00
1999	27,425	112,767.00
2000	42,727	228,330.00
2001	137,540	767,865.00
2002	314,897	1,815,170.00
2003	106,522	581,049.00
2004	133,524	726,569.00
2005	115,398	655,911.00
2006	89,080	513,369.00
2007	114,048	656,977.00
2008; (Jan-Feb)	11,455	66,820.00
	Grand Total	14,868,404.00

22 In addition to obtaining supplies of MARTIN shirts from the plaintiffs, REPL also obtained its supplies from PT Karwikarya Wisman Graha (“PTK”) which is an Indonesian company established in 1996 with the same shareholders as the plaintiff. Through PTK, REPL imported into Singapore between 1997 and February 2008 the following quantities of MARTIN shirts:

YEAR	QUANTITY OF; MARTIN SHIRTS (PIECES)	TOTAL SALES PRICE; IN S$
1997	31,362	87,739.00
1998	121,973	670,851.50
1999	403,110	2,233,248.46
2000	333,809	1,907,436.47
2001	208,306	1,171,544.08
2002	62,582	324,103.08
2003	136.096	784.149.67
2004	102,015	585,592.50
2005	117,285	684,162.50
2006	29,616	172,759.99
2007	91,933	536,275.84
2008	47,822	278,849.66
	Grand Total	9,436,712.75

23 The sales figures in [21] to [25] were confirmed by Radha and REPL by the first affidavit filed on 18 December 2008 by Naraindas Gangaram (“Naraindas”), its manager partner and managing-director respectively.

24 Alvernia asserted that over the years since 1982, the plaintiff had built up a solid goodwill and reputation in its MARTIN shirts in Singapore. She deposed that in early 2008, the plaintiff learnt of the defendant’s mark which appears as follows:

[LawNet Admin Note: Image 4 is viewable only by LawNet subscribers via the PDF in the Case View Tools.]

25 The plaintiff further ascertained that the defendant was a customer of MARTIN shirts and had purchased from REPL the following quantities and values of MARTIN shirts between November 2005 and October 2007:

No	Date	Invoice No	Quantity Supplied; In Dozens	Sales in S$
1	19.11.2005	105616	550	38,500
2	11.05.2007	141749	100	7,000
3	16.05.2007	142028	140	9,800
4	29.05.2007	142980	92	4,600
5	30.05.2007	143069	636	31,800
6	12.06.2007	143911	557 + 10 shirts	27,891.65
7	18.06.2008	144347	200	14,000
8	09...