RIGHTS AND DEFENCES AT THE INTERFACE OF COPYRIGHT AND TRADE MARK LAW: A CLOSER LOOK AT THE “ARTISTICALLY ENDOWED TRADE MARK” PHENOMENON
| Citation | (2003) 15 SAcLJ 135 |
| Published date | 01 December 2003 |
| Date | 01 December 2003 |
| Author | EUGENE LIM CHOON MUN |
Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd v Fragrance Foodstuff Pte Ltd (“Bee Cheng Hiang”) 1
1 Trade marks play an important role in the course of trade by indicating the origin of goods and services, thereby setting apart the products of one trader from those of another. As competition among traders for limited custom grows ever more intense, branding prestige has not unexpectedly become a quality which is highly sought after in the commercial world. Trade mark rights have accordingly evolved into a unique, highly valued and zealously guarded species of intangible property. Under section 2(1) of the Singapore Trade Marks Act2 (“TMA”), a “trade mark” is defined as a visually perceptible sign which is capable both of graphical representation and of distinguishing goods and services in the course of trade. This effectively means that a trade mark must be visually distinctive to the customer in order to qualify for registration under the TMA. This current definition would therefore preclude non-visual aspects of a product (such as sounds and smells) from registration as trade marks.3
2 The triple requirements of visual perceptibility, graphical representation and distinguishing ability embodied in section 2(1) TMA
provide traders seeking trade mark registration with an incentive to create indicia of origin with visual impact for their goods or services. It would therefore not be surprising to note that many creatively designed trade marks contain a mélange of literary and artistic elements which quite often attract copyright protection4 under the Singapore Copyright Act5 (“CRA”). While it might be difficult to argue that literary copyright subsists in a work which comprises a short word or phrase,6 such a work will enjoy artistic copyright if its literary elements are enhanced by original artistic embellishments7 which bring it within the ambit of “artistic work”8 under the CRA. Proprietors of “artistically endowed trade marks” can thus acquire concurrent protection under two (or more9) intellectual property regimes, namely copyright law (by virtue of the act of artistic expression) and trade mark law (by virtue of the act of registration pursuant to the TMA).
3 While section 26 TMA confers certain exclusive rights on the proprietor of a registered trade mark, such as the right to use the mark and the right to obtain relief for infringement, it is important to note that such rights are not absolute. There exist a number of defences under the TMA which curtail the right of a trade mark proprietor to object to the use of his mark. For example, section 28(1)(b)(i) TMA exonerates the descriptive use by any person of a registered trade mark to indicate the “kind, quality, quantity, intended purpose, value, geographical origin or other characteristic of goods or services”. This defence plays an important role in safeguarding the linguistic freedom of traders to describe the nature of their goods to customers and in preventing the pool of common descriptive words used in trade from being depleted.10 In addition, section 27(6) TMA allows any person to use a registered trade mark to identify goods and services as those of the trade mark proprietor, so long as such use is in accordance with honest practices in industrial or commercial matters.
4 Copyright holders also enjoy exclusive rights under the CRA. The exclusive rights conferred upon an author or owner11 of a work are set out in section 26 CRA, and include the right to reproduce the work in a material form.12 However, it is important to note that rights arising under the CRA, like trade mark rights, are not absolute. While section 31 of the CRA defines what amounts to an act of copyright infringement, Singapore’s copyright regime also provides for a number of exceptions which allow the use of copyright material in certain circumstances, such as fair dealing for the purpose of private study or research (section 35) and fair dealing for the purpose of reporting current events (section 37).
5 The concurrent subsistence of copyright and trade mark rights in an “artistically endowed” mark results in a number of ambiguities which
defy simple resolution. One such ambiguity which the writer intends to examine is the apparent conflict in Singapore between the copyright and trade mark regimes in regulating the use of an artistic logo for the purpose of identifying its proprietor. As mentioned earlier, section 27(6) TMA exonerates from trade mark infringement the honest use of a registered mark to identity “goods or services as those of the proprietor or a licensee”, but the CRA does not contain an equivalent provision to exonerate such use from copyright infringement. Does this mean then that an act of use specifically sanctioned by the TMA may amount to an act of infringement under the copyright regime?
6 The Singapore Court of Appeal in the recent local case of Bee Cheng Hiang had to consider whether an action for copyright infringement involving the use of an artistic logo (which had been registered as a trade mark) could be resolved in a summary fashion. This case raises interesting questions of law and fact which relate to the scope and interpretation of, inter alia, the “honest use” defence under section 27(6) TMA and the “fair dealing” defence under section 37 CRA.
7 The plaintiffs Fragrance Foodstuff Pte Ltd and the defendants Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd were both in the business of selling a type of barbequed, sweet meat popularly referred to as bak kwa among the local Chinese community. In addition to bak kwa, the plaintiffs also sold, among other things, food items such as titbits, fried cuttlefish and mooncakes.
8 The defendants were considerably more established then the plaintiffs in the bak kwa trade, as the former company had been managing a business presence in Singapore since the 1930s. From 1985, the defendants had marked their goods with their logo comprising a single Chinese character “ 香 ”13 written in classical calligraphic form and almost entirely enclosed within a circular frame, as shown below in Figure 1.
9 The defendants registered their calligraphic logo as a trade mark under class 29 (for dried minced pork, pork floss, chicken floss, snack foods, preserved, jellies, dried and cooked fruits and vegetables). The certificate of registration for the defendants’ mark No. T91/10763J contained the following line:
“Registration of this mark shall give no right to the exclusive use of the Chinese character(s) of which the hanyu pinyin14 is “Xiang” except in the form as represented.”
Figure 1: Registered Trade Mark of Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd
10 In October 1994, the plaintiffs commissioned the creation of a logo for their business. The commissioned artist, Chionh Cher Tin (“Chionh”) formally assigned all his rights and interest in the logo to the plaintiffs by an agreement dated 5 February 2002. This logo contained a stylised representation of the Chinese character “ 香 ” within a circular frame, with the posterior geometric radical “ 日 ” of the character “ 香 ” made to resemble a slithering tongue protruding from a pair of lips seemingly in a “licking motion” so as to convey an image of quality and tastiness to consumers.15 Below this composite image was printed the word “FRAGRANCE” in capital letters, arranged in such a way as to fit snugly around the circular contour of the frame. Both the stylised “ 香 ” character and the word “FRAGRANCE” were completely enclosed within two concentric oval frames, one with a dark background, and the other with a light one, as shown in Figure 2.
11 In July 1995, the plaintiffs applied to register their logo as a mark under both classes 29 (for fried minced pork, pork floss, chicken floss, snack foods, preserved, jellies, dried and cooked fruits and vegetables) and 30 (for biscuits, cakes, pastry and confectionery). Their application under
class 30 was accepted for registration, but their application under class 29 was still pending due to opposition proceedings initiated by the defendants.
Figure 2: Registered Trade Mark of Fragrance Foodstuff Pte Ltd
12 Shortly before the Lunar New Year festival in 2002, the defendants published a half-page advertisement in the local English and Chinese newspapers prominently displaying both the plaintiffs’ and defendants’ logos and stating that the two companies were not related. This advertisement is shown below in Figure 3. The defendants also handed out similar pamphlets and notices to members of the public.
13 The plaintiffs commenced civil proceedings against the defendants, applying for an injunction to restrain the defendants from further infringing the trade mark and the copyright in the work, as well as summary judgment against the defendants in respect of the copyright infringement. The judge-in-chambers Lai Siu Chiu J made no order with respect to the injunction application (on condition that the defendants undertook not to repeat their advertisements), and reserved the determination of the trade mark issue for full trial, but granted the plaintiffs’ application for summary judgment in respect of the copyright issue. The plaintiffs were, however, not allowed to execute this summary judgment until full trial (of the trade mark action) or further order.16
14 On appeal by the defendants, the Court of Appeal set aside the summary judgment, holding that there were difficult questions of fact and law that required mature consideration.17
Figure 3: Extract from the defendants’ half-page advertisement in the local English and Chinese newspapers appearing over two days, on 2 and 3 February 2002
15 It should be noted that the decision by the Court of Appeal in this case was based on an interlocutory application: the defendants appealed against summary judgment for copyright infringement awarded by the judge-in-chambers in favour of the plaintiffs, and that...
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