Rothmans of Pall Mall Limited v Maycolson International Ltd

• Jurisdiction: Singapore
• Judge: Lai Siu Chiu J
• Judgment Date: 23 March 2006
• Neutral Citation: [2006] SGHC 51
• Date: 23 March 2006
• Subject Matter: Registration,Whether application for registration of trade mark made in bad faith,Trade Marks and Trade Names,Section 7(6) Trade Marks Act (Cap 332, 2005 Rev Ed),Opposition to registration of trade mark,Whether breach of legal requirement necessary for bad faith to arise,Whether trade mark applicant under duty to inquire into bona fides of proposed mark,Applicable test to determine bad faith
• Docket Number: Originating Motion No 40 of 2005
• Published date: 27 March 2006
• Defendant Counsel: Daniel Koh and Boey Swee Siang (Rajah & Tann) and May Tan (Yu Sarn Audrey & Partners)
• Court: High Court (Singapore)
• Plaintiff Counsel: Low Chai Chong and Gilbert Chong (Rodyk & Davidson)

23 March 2006 Judgment reserved.

Lai Siu Chiu J:

Introduction

1 This was an appeal against the decision of the Principal Assistant Registrar of Trade Marks P Arul Selvamalar (“the Registrar”). In June 2003, Rothmans of Pall Mall Limited (“the Applicant”) commenced opposition proceedings against Maycolson International Ltd (“the Respondent”) under ss 7(6), 8(2)(b) and 8(4) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“the Act”).

2 The Registrar held that the opposition failed on all three grounds relied on by the Applicant and allowed the Respondent’s mark (see [6] below) to proceed to registration. The Applicant was dissatisfied with her decision and has now appealed. In Notice of Motion No 40 of 2005 (“the Notice of Motion”), the Applicant prayed for the following orders:

(a) that the decision of the Registrar (that the opposition fails and Trade Mark Application No T03/00663 in Class 34 may proceed to registration) be reversed and/or set aside;

(b) that the Respondent’s mark shall not proceed to registration and, in case the mark has been registered, that the said registration be disallowed;

(c) that the costs of and incidental to this appeal be paid by the Respondent; and

(d) such other relief that the court may deem fit.

3 Having taken time to consider the arguments raised by the parties before me at the hearing, I am allowing the appeal for the reasons that I now set out.

The facts

4 The Applicant belongs to the British American Tobacco Group of Companies, and is the registered proprietor in Singapore of numerous trade marks in Class 34 (“cigarettes”) of the International Classification of Goods and Services (“ICGS”). The Applicant owns the following six trade marks: registration nos T57/22291J, T67/42191F, T79/80665F, T83/02989H, T01/03299G and T01/05135E (collectively “the Applicant’s trade marks”). Each of these trade marks consists of a dark blue background framed by a gold/yellow border, a crest device at the top, and a banner at the bottom of the dark blue background. With the exception of T01/05135E, all of these trade marks contain the word “Rothmans” in cursive script, with the first letter “R” in upper case.

5 The Respondent is a private company incorporated in the British Virgin Islands. It is the licensee of Axel and Klaus Hertlein (“the Hertlein brothers”), who operate a business by the name of “Top Brands”. Top Brands is the distributor of “Fairlight” cigarettes in various Arab countries and East Africa. However, “Fairlight” cigarettes have not been sold in Singapore to date.

6 Sometime in January 2003, the Respondent filed Trade Mark Application No T03/00663B (“the Respondent’s application”) for a mark containing the word “Fairlight” on a blue, hexagon-shaped background (“the Respondent’s mark”) under Class 34 of the ICGS. The Registrar accepted the Respondent’s application and placed an advertisement for parties to express their opposition. In June 2003, the Applicant commenced opposition proceedings, alleging that the Respondent’s mark was so similar to the Applicant’s trade marks that it was likely to cause confusion under s 8(2)(b) of the Act. Additionally, the Applicant claimed that registration ought to be refused on two additional grounds: first, breach of the law of passing off and copyright under s 8(4) of the Act; and second, registration was precluded under s 7(6) of the Act due to the Respondent’s bad faith.

7 The current proceedings in court are part of a long-standing saga between the Applicant and the Hertlein brothers, who have been embroiled in a bitter fight over the latter’s use of the “Fairlight” mark. In October 2002, the Applicant successfully persuaded the Berlin District Court to issue an interim injunction restraining a contract manufacturer of Top Brands from producing, marketing and/or exporting cigarettes bearing the “Fairlight” mark.[note: 1] The proceedings in Berlin are still pending, and the Berlin courts have yet to deliver a conclusive verdict on the matter of infringement. This is unfortunate as the mark involved in the Berlin proceedings is identical to that which the Respondent sought to register in the present case. The Applicant also commenced a second set of proceedings against the Hertlein brothers in January 2003. Consequently, the Hertlein brothers have been subject to a Europe-wide injunction which prevents them from using the “Fairlight” mark or packaging.[note: 2] However, this injunction has a limited scope and only applies in relation to a mark that is not identical to the Respondent’s mark in the present proceedings.

8 These two injunctions are not the end of the matter, as the Applicant is currently involved in litigation against the Hertlein brothers in Austria. While the Hertlein brothers have used a variation of the “Fairlight” mark, the Applicant alleges that the terms of the Europe-wide injunction have been flouted due to the similarities between both marks (ie, the original mark that formed the subject matter of the injunction and the modified variation of the mark).

The decision below

9 The Registrar held that the Applicant’s opposition failed on all three grounds and permitted the Respondent’s application to proceed to registration.

10 The Registrar held that the Applicant’s opposition under s 8(2)(b) of the Act was unsustainable. Applying the global assessment test, the Registrar, inter alia, held that the Applicant had not made out a case for the refusal of registration as:

(a) the Respondent’s mark was not similar to the Applicant’s trade marks; and

(b) there was no likelihood of confusion on the part of the public.

11 The Registrar expressly rejected any claims of similarity between the Respondent’s mark and the Applicant’s trade marks. She opined that there was “no risk”[note: 3] of aural similarity between the words “Rothmans” and “Fairlight”. She also discounted the Applicant’s claims of visual similarity, on the basis that the word “Fairlight” was a “prominent feature”[note: 4] that would allow the public to distinguish the Respondent’s mark from the Applicant’s trade marks.

12 Further, the Registrar noted that no likelihood of confusion existed for the following reasons. First and foremost, the Registrar opined that the blue and white packaging used by the Applicant was nondescript, as the colour combination was not sufficiently distinctive to be identified with the Applicant. Moreover, the Registrar observed that the white background seemed to be a mere background, in contradistinction to cases where the parties had used a distinctive colour combination such as burgundy and gold. Second, the Registrar held that the mandatory placement of health warnings on cigarette packets significantly reduced the area available on cigarette packets for the display of a manufacturer’s logo and trade marks. Consequently, the aural dimension of the marks on the cigarette packets took on a greater significance. This was partly due to the unique mechanism by which cigarettes are sold locally. As cigarettes can only be sold over the counter, customers would have to make an oral request for their desired brand of cigarettes. The Registrar thus accorded great weight to the aural dissimilarity between the Applicant’s trade marks and Respondent’s mark.

13 Having established that s 8(2)(b) of the Act did not apply, the Registrar went on to dispose of the arguments under s 8(4) of the Act in a brief fashion. Misrepresentation did not arise within the meaning of s 8(4)(a) as the marks were not confusing. Similarly, the law of copyright had not been flouted as s 8(4)(b)’s threshold requirement of “substantial copying” had not been proved.

14 Finally, the Registrar held that the Respondent had not acted in bad faith so as to preclude registration pursuant to s 7(6) of the Act. In the Registrar’s opinion, the Respondent’s failure to make further inquiries did not justify a finding of bad faith. Further pursuit of the matter would not have enabled the Respondent to obtain clear or conclusive answers as to whether a breach of the law had occurred, simply because the Applicant’s trade marks and the Respondent’s mark were neither identical nor extremely similar. The Registrar thus dismissed the entirety of the Applicant’s case and allowed the Respondent’s mark to be registered.

Issues arising on the appeal

15 Under s 8(2)(b) of the Act, a trade mark shall not be registered if “it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, and there exists a likelihood of confusion on the part of the public”.

16 For the purposes of this appeal, it is not in dispute that the goods in question are identical. What is in dispute, however, is the issue of similarity between the Applicant’s trade marks and the Respondent’s mark, as well as the likelihood of confusion on the part of the public. The Applicant submitted that the Registrar erred in fact and in law in dismissing its grounds of opposition under s 8(2)(b) of the Act. The Applicant also contended that the Registrar erred in finding that the Respondent had not acted in bad faith under s 7(6) of the Act.

The applicable law

17 I now turn to consider the appropriate test for bad faith under s 7(6) of the Act. This case is significant as it is the first time that the issue will be addressed by our courts. Under s 7(6), “[a] trade mark shall not be registered if or to the extent that the application is made in bad faith”. It is thus clear that bad faith serves as an absolute bar to registration of a trade mark.

18 The Applicant had urged this court to re-examine the Registrar’s decision on the absence of bad faith by the Respondent. The crux of the Applicant’s complaint was that the Registrar had misdirected herself in determining the appropriate test that ought to be applied under s 7(6). First, she had failed to impose an affirmative duty on the trade mark applicant to make...