Re AUVI Trademark

• Jurisdiction: Singapore
• Judge: Chao Hick Tin J
• Judgment Date: 15 November 1991
• Neutral Citation: [1991] SGHC 165
• Docket Number: Originating Motion No 96 of 1988
• Date: 15 November 1991
• Published date: 19 September 2003
• Year: 1991
• Plaintiff Counsel: Kelvin Chia (Chor Pee & Co)
• Citation: [1991] SGHC 165
• Defendant Counsel: Radakrishnan (Drew & Napier)
• Court: High Court (Singapore)
• Subject Matter: Whether author has put in sufficient skill and labour to justify copyright protection,'Persons aggrieved',Real interest in having register rectified,Whether logo constituted artistic work,Trade Marks and Trade Names,Copyright Act 1911,Alternative to expunging registered mark,Burden on respondents to rebut,Copyright Act 1987,Originality of logo,Court's discretion,Exercise of court's discretion,Whether respondents' mark copied from applicants' logo,Varying registered trademark,Application to expunge from register,Locus standi to apply for rectification proceedings,Infringement,Words and Phrases,Rectification of register,Circumstances of the case to be looked at to determine if any real grievance,Copyright,s 39(1)(a) Trade Marks Act (Cap 332),Prima facie inference of copying,Discretion of court to vary registered mark,Substantial similarity,Whether delay in instituting rectification proceedings,Whether delay bars application for relief

Cur Adv Vult

This is an application to expunge a certain entry from the trade marks register.

The applicants, Auvi Pte Ltd, are a private limited company which was incorporated in 1974. Their principal line of business relates to the sale and distribution of high fidelity equipment. They are the agents and/or distributors of a number of foreign brands of high fidelity and other household equipment. They do not manufacture any product of their own. The applicants maintain a corporate logo using the name `AUVI`. The logo is shown in the annex hereto (hereinafter referred to as `the AUVI logo`). It has never been used by the applicants as a trade mark on any product.

The volume of business of the applicants has been substantial, rising from $2,547,626 in 1976 to $8,256,795 in 1986. The sales figures for 1986 were the latest audited figures available when they commenced these proceedings in 1988. They have, from time to time, advertised the products of which they are the agents and/or distributors in the media. Such advertisements became more extensive from 1984. The AUVI logo appeared in all their advertisements and in their stationery used in the course of trade, eg invoices, letterheads, envelopes, package lists and receipts etc. They allege that by virtue of all these, they have acquired `a very substantial reputation and goodwill in their name and logo so that its use had ... come to mean the business of the applicants`.

Through their managing director, one Yeo Kian Tee, the applicants stated that the AUVI logo was designed for them, on their specific commission, by one John Lee of Pro-Ads (Pte) Ltd in February 1976. John Lee was the managing director of Pro-Ads, who were the advertising agents engaged by the applicants to render advertising and promotional services. The AUVI logo was an original creation of John Lee and his team of design artists. The applicants, accordingly, contend that copyright subsists in the logo. John Lee died on 25 October 1985.

As regards the arrangement on ownership of the copyright, Yeo Kian Tee further said the following:

The applicants no longer have the particulars of the express arrangements (if this in fact ever existed) between Mr John Lee, Pro-Ads and ourselves as to the ownership of such said copyright. The applicants have, however, always used the AUVI logo to the exclusion of both Pro-Ads and Mr John Lee, and neither Pro-Ads nor Mr John Lee had used or sought to use the AUVI logo otherwise than in connection with advertising and promotional activities undertaken on behalf of the applicants. Pro-Ads and the estate of Mr John Lee have further indicated that they are not asserting any rights to the AUVI logo as against the applicants and have prior to the commencement of the proceedings herein each executed an assignment of any copyright they might have in the AUVI logo to the applicants.

On 9 May 1988, both Pro-Ads and the estate of John Lee (deceased) separately executed a formal deed of assignment in favour of the applicants. It was explained to me that an assignment was also obtained from the estate of John Lee in order to prevent any argument that the copyright could have vested in John Lee rather than Pro-Ads.

Trade mark No 4767/83, a copy of which is also shown in the annex, was registered on 7 September 1983 in favour of two persons, Miss Seah Siew Tee and Chai Foh Min, who were trading as partners under the style of AV Electronics (Sabah) Trading Co (hereinafter referred to as `the AUVI mark`, `Miss Seah`, `Chai` and `AV Electronics`, respectively). Miss Seah and Chai are the responherein. The AUVI mark was advertised in the gazette on 27 September 1985 and an errata published on 30 May 1986. AV Electronics commenced business on 2 April 1982 and was registered on 7 May 1982. Miss Seah and Chai later incorporated a company by the name of Auvisonic Import and Export Pte Ltd which from August 1984 took over the sales of AUVI products from AV Electronics.

However, it would appear that it was only in March 1987 that the applicants became aware that the respondents had secured the registration of the AUVI mark in class 9 in respect of `cleaning tapes for recording heads of audio and video apparatus, pre-recorded tapes, radio-cassette tape recorder, loudspeakers and headphones and parts ...`. This awareness came about when the respondents issued a warning notice in the newspaper against counterfeiting their AUVI mark. Thus this action.

In these proceedings, the applicants originally sought to have the AUVI mark expunged on the ground that it was entered without sufficient cause in that:

(a) its use by the respondents was and is contrary to law in that it was and is an infringement of the copyright owned by the applicants in (the) logo ...;

(b) its use being an infringement of the applicants` copyright as aforesaid, the respondents could not properly claim to be the proprietors of the trade mark; and

(c) its use was likely to deceive and cause confusion and thus was disentitled to protection in a court of justice.

At the closing stage of the hearing, while counsel for the respondents was sub, I gave leave to the applicants to amend the motion to add an alternative ground to expunge the trade mark, ie the entry is wrongfully remaining on the register. Counsel for the applicants explained that the amendment was made necessary at that juncture because the respondents` counsel in his final submission raised for the first time the point that at the time when the respondents applied for the registration of the mark (ie September 1983), if copyright did exist in the AUVI logo, the applicants were not then the legal owners of the copyright in the work, but only the equitable owners and as such, they were not entitled to institute these proceedings to expunge the trade mark on the ground that it was entered without sufficient cause. The applicants` counsel pointed out that nowhere in the various affidavits filed by the respondents have the latter questioned the applicants` ownership of the copyright in the logo, otherwise he would have asked for leave to amend the motion at the commencement of the hearing. The applicants` counsel also told the court that he would not be asking for leave to introduce additional evidence on account of the amendment. As the proposed amendment would not entail the tendering of additional evidence by either the applicants or the respondents, and as I did not think that the proposed amendment would cause any injustice or unfairly prejudice the respondents, I granted leave to the applicants to amend.

In his affidavit (filed in January 1989), Chai explained that he had been using the AUVI mark for some 14 years since 1974, first in Sarawak, then in Sabah and Malaya. It had been used in Singapore since 1982. In 1974, he was trading through a Malay-owned company in Sarawak called Syarikat Sinar Dahlia. The AUVI mark was then used on radio/cassette cleaners, headphones, and transistor radios which were manufactured for Chai by a company in Taiwan called Sinwan Industrial Co Ltd (`Sinwan`). Chai deposed that `the idea for the mark was conceived by (him) after he saw it in a Japanese magazine or brochure sometime before 1974`. He thought that the mark would be a nice trade mark for audio products since it was derived from the words `audio` and `video`. In 1976, he established a sole-proprietorship in Kuching called Eastern (Sarawak) Trading Co (`Eastern Sarawak`) and he continued to use the mark. He gave a photocopy of the mark to Miss Seah when they were considering the registration of the mark. He is not able now to locate the advertisement from the Japanese magazine.

Chai further deposed that on the commencement of these proceedings in 1988, he had tried without success to locate the documents to show the use of the AUVI mark on his goods. All that he could manage to find were four invoices of Eastern Sarawak dated early 1977.

He said that in or about 1982 after he met Miss Seah, they decided to go into business together in Singapore. AV Electronics was established as a result. It dealt in electrical goods including audio and video assessories using the AUVI mark. Because the sales of the AUVI goods were encouraging, they decided to register the mark to protect it against counterfeits.

As would be apparent, this application to remove the AUVI mark is founded essentially on the fact that it infringes the copyright of the applicants in the AUVI logo. The applicants say that under s 11 of the Trade Marks Act (Cap 332) (`the Act`), a person can apply to register a mark only if he can claim that he is the proprietor of the mark. Further, s 15(1) provides that `it shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice or would be contrary to law or morality, or any scandalous design`.

The applicants submit that as the AUVI mark infringes the copyright of the applicants in the logo, the AUVI mark ought not to be registered as its registration would be contrary to law. They say that the respondents could not and cannot claim to be the proprietors of the AUVI mark as the mark infringes the copyright of theirs. The applicants rely on this passage of Whitford J in KARO STEP Trade Mark [1977] RPC 255 at p 274:

Any such claim must, in my view, be bad if in fact on copyright grounds some third person is going to be in a position to stop the applicant using the mark at all. The proprietors of a mark in which copyright exists can, I think, only be the owners of the copyright in the mark.

The alternative ground for the application to expunge is that the registration of the AUVI mark could give rise to confusion, ie the public might think that the AUVI products of the respondents are in fact manufactured by the applicants. But there is hardly any real...