Re Jaguar Trademark

• Judgment Date: 03 March 1993
• Date: 03 March 1993
• Docket Number: Originating Motion No 18 of 1991
• Court: High Court (Singapore)

Re Jaguar Trade Mark

[1993] SGHC 49

Lai Siu Chiu JC

Originating Motion No 18 of 1991

High Court

Evidence–Admissibility of evidence–Foreign law–Revocation of trade mark–Registered proprietor asserting that instrument purporting on its face to assign trade mark constituted only intention to assign under foreign law–Assignee relying on instrument to register trade mark in Switzerland–Whether registered proprietor's assertion as to foreign law acceptable without expert evidence being adduced–Trade Marks and Trade Names–Rectification of register–Great similarity between marks of applicant and registered proprietor likely to create confusion–Discretion of court to rectify register–Whether demerits of applicant material consideration in exercise of discretion where likelihood of confusion established–Trade Marks and Trade Names–Revocation–Registered proprietor merely preparing to use mark but making no actual sale–Whether bona fide use by proprietor so as to prevent expunging of mark–Applicant capitalising on goodwill in mark in respect of one class of goods by launching new product in class in which registered proprietor's mark is registered–Whether applicant an “aggrieved person” so as to have standing to seek expunging of registered proprietor's mark–Section 39 (1) (a)Trade Marks Act (Cap 332, 1985 Rev Ed)

The applicant was the manufacturer of Jaguar motor cars and had used the “Jaguar” trade mark since 1935 and the “Leaping Jaguar Device” as a bonnet mascot on its cars since about 1960. Both the Jaguar and the Leaping Jaguar Device trade marks were registered in many countries including Singapore. Since 1982, the applicant had licensed two watchmakers to manufacture high quality, exclusive watches bearing the trade marks. These were sold through Jaguar car dealers worldwide. The applicant applied in 1990 to register the trade marks in class 14 in respect of certain goods including watches, but was prevented from doing so by the prior registration of the respondents' “Jaguar” mark in class 14 covering watches of all kinds.

The applicant then applied for the respondents' mark to be expunged from the register on the following grounds: (a) the existence of the entry upon the register limited the applicant's legal rights and it was an aggrieved person as defined by s 39 (1) (a) of the Trade Marks Act (Cap 332, 1985 Rev Ed) (“the Act”); (b) there had been no bona fide use by the respondents of their marks; (c) the registration of the respondents' mark was invalid because the first respondent had prior to registration already assigned its mark; and (d) the use of the respondents' mark was likely to deceive or cause confusion. The respondents argued that (a) the respondents' mark was first registered by the first respondent in class 14 in Switzerland in 1945 and in Singapore in 1969 in class 14; (b) under Swiss law, the sale contract wherein the respondents' mark was purportedly assigned was only an intention to do so until a proper deed of assignment was executed; and (c) it was untrue that there had been non-usage of the respondents' mark.

Held, allowing the application:

(1) The applicant had attained considerable goodwill and reputation in Singapore for the Jaguar mark and the public closely associated the trade marks with the Jaguar motor car, which projected a certain lifestyle. When the applicant launched watches and other non-automative products bearing the trade marks, riding on the reputation of its successful product, it came within the definition of “aggrieved persons” under s 39 (1) (a) of the Act as it was then in the same trade as the respondents and the existence of the entry upon the register would or might limit its legal rights so that it could not lawfully do that which it could otherwise have lawfully done: at [15].

(2) There was insufficient evidence that there had been usage of the respondents' mark in the relevant period. Mere preparation without actual sale was not sufficient to constitute bona fide use so as to prevent removal of the respondents' mark: at [15].

(3) The respondents' assertion, that under Swiss law the sale contract merely evidenced an intention to assign and was not an assignment itself, could not be accepted without an expert's opinion particularly as the sale contract had been the basis of application for Swiss registration of the Jaguar mark: at [15].

(4) There was great similarity in the applicant's Jaguar mark and the respondents' mark. The respondents had not explained their choice of the Jaguar mark for their watches and their use of the “Leaping Jaguar Device” in one advertisement. The respondents had intended to take advantage of the applicant's reputation by causing the public to think that their Jaguar watches were manufactured by the applicant. The applicant had acquired sufficient reputation in Singapore as at the date of the registration of the respondents' mark to merit protection: at [15].

(5) Under s 39 of the Act, the court had the discretion to rectify the register by expunging the respondents' mark based on the circumstances of the case. The demerits of the applicant were irrelevant, at least where a likelihood of confusion had been established, as the question was not between the applicant on the one hand and the respondents on the other but between the public and the respondents: at [15].

Cafe Do Brasil SpA v Scrava Pty Ltd (1991) 22 IPR 359 (refd)

Eastman Photographic Materials Company Ld, The v The John Griffiths Cycle Corporation Ld and The Kodak Cycle Company Ld (1898) 15 RPC 106 (refd)

Electrolux Ld v Electrix Ld (No 2) (1954) 71 RPC 23 (folld)

GE Trade Mark [1973] RPC 297 (refd)

Hermes Trade Mark [1982] RPC 425 (refd)

Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72 (refd)

Nodoz Trade Mark [1962] 79 RPC 1 (folld)

Palm Trade Mark [1992] RPC 258 (refd)

Revue Trade Mark [1979] RPC 27 (refd)

Ritz Hotel Ltd, The v Charles of the Ritz Ltd (1988) 12 IPR 417 (refd)

Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501 (refd)

Trina Trade Mark [1977] RPC 131 (refd)

William Powell v The Birmingham Vinegar Brewery Company Limited [1894] AC 8 (folld)

Trade Marks Act (Cap 332, 1985 Rev Ed) s 39 (1) (a) (consd);ss 2 (2) (b), 11 (1), 15, 39, 40, 47

Trade Marks Act 1938 (c 22) (UK) s 26 (1) (b)

Yew Woon Chooi (Drew & Napier) for the applicant

Lim Teng Leong (Donaldson & Burkinshaw) for the respondent.

Lai Siu Chiu JC

1 At the end of the hearing, I granted Jaguar Cars Ltd (“the applicants”) an order in terms of their application to expunge the respondents' trade mark 47248 (“the respondents' mark”) from the trade mark register (“the register”) pursuant to ss 15, 39 and 40 of the Trade Marks Act (Cap 332) (“the Act”) and ordered the respondents to pay costs. The respondents have appealed against my decision and I now give my reasons.

2 The grounds of the application, inter alia,were that:

(a) the applicants the registered proprietors of trade mark 60095 for “Jaguar” in class 12 in respect of motor cars since 15 February 1974 who applied to register trade mark 8702/90 for “Jaguar” and “Leaping Jaguar Device” in class 14 in respect of “smokers” articles of precious and semiprecious metals or coated therewith; watches; clocks; jewellery; parts of and fittings for all the aforesaid goods' are aggrieved by the entry of the respondents' mark for “Jaguar” in class 14 in respect of “watches of all kinds, alarm clocks, desk clocks and watch parts”etc;

(b) the respondents' mark was registered without any bona fide intention on the part of the respondents that it should be used in relation to the goods for which the same is registered and, there having in fact been no bona fide use of the mark in relation to those goods up to one month before the date of the application, the registration offends s 40 (1) (a) of the Act;

(c) alternatively, there not having been any bona fide use of the respondents' mark for a continuous period of five years or longer up to one month before the date of the application, the same wrongly remained on the register in contravention of s 40 (1) (b) of the Act;

(d) as at the date of the registration of the respondents' mark, the first respondent as the assignor cannot claim to be the proprietor of the mark and the registration contravenes s 11 (1) of the Act;

(e) the use of the respondents' mark contravenes s 15 of the Act as it is likely to deceive or cause confusion by reason of the reputation and goodwill of the applicants who commenced using their “Jaguar” and “Leaping Jaguar Device” on quality...