THE MEANING OF ‘INVENTED’ IN TRADE MARK LAW

• Author: NG-LOY WEE LOON
• Published date: 01 December 1997
• Citation: (1997) 9 SAcLJ 203
• Date: 01 December 1997

Yomeishu Seizo Co Ltd v Sinma Medical Products (M) Sdn Bhd 1

INTRODUCTION

Registration of a trade mark in Singapore and in Malaysia under the respective trade mark legislation confers on the registered proprietor “the exclusive right to the use of the trade mark”.2 Infringement of this seemingly unbridled exclusive right, however, is limited to unauthorised uses of the trade mark, or marks which are similar thereto, which are uses “in a trade mark sense”, that is, uses which are “indicative of the origin of the goods in relation to which reference is made to the trade mark”.3

The question whether the use of the registered trade mark is a use “in a trade mark sense” often arises when the trade mark consists of a known word which has a descriptive meaning.4 If the defendant was merely using the trade mark to describe his goods or services, such use of the trade mark would not be to indicate the provenance of the goods or services and

therefore would not be used “in a trade mark sense”.5 In fact, the Trade Marks Act makes specific provision sanctioning the use of the trade mark by any person if it is a bona fide description of the character or quality of his goods or services.6 In this sense, the scope of statutory protection for trade marks which consist of ordinary words with descriptive meanings is more restrictive than that for trade marks which are fanciful, newly coined or invented words. There is another reason why trade marks which consist of descriptive words are in a less favourable position than those which consist of invented words: descriptive words may not be registered as trade marks if they have “direct reference to the character or quality of the goods or services” in respect of which the registration is sought,7 whereas ‘invented’ words are registrable under s 10(1)(c) of the Singapore and Malaysian Trade Marks Acts.

The meaning of ‘invented’ was considered in the recent Malaysian case Yomeishu Seizo Co Ltd v Sinma Medical Products (M) Sdn Bhd.8 The test applied by the Malaysian High Court in determining what is an ‘invented’ word appears to be different from the test applied by the Singapore High Court in Yomeishu Seizo Co Ltd v Sinma Medical Products (S) Pte Ltd.9

FACTS AND HOLDING

The plaintiffs were registered proprietors of a series of trade marks registered in Malaysia under the Trade Marks Act 1976 in respect of a herbal medicinal wine manufactured in Japan using a secret recipe. In each of these trade marks were the three kanji characters10“

”., and the word ‘Yomeishu’ which was the phonetic sound of the three kanji characters

in the Japanese language. The plaintiffs contended that the combination of the three kanji characters was validly registered under s 10(1)(c) of the Trade Marks Act 1976 which provides that a trade mark is registrable in Part A of the register if it consists of “an invented word or invented words”.

The defendants imported a medicinal wine from China and sold it in Malaysia under a get-up which included the words “Chinese Yang Ming Jiu”. The last three words were the phonetic pronunciation of the three kanji characters “

” in Mandarin. The plaintiffs sued the defendants for trade mark infringement and for passing off.

Among the evidence called by the plaintiffs to establish that they enjoyed goodwill in the Mandarin pronunciation of the three kanji characters “

” were the results of a radio campaign conducted by the plaintiffs over the Chinese networks of Radio Malaysia. In this promotion, the listeners were told that the first 100 listeners who brought in an empty bottle of the medicinal wine “Yang Ming Jiu”, “Yong Meng Chow” or “Yeoh Miah Chiew” — the phonetic pronunciation of the three kanji characters “

” in Mandarin, Cantonese and Hokkien respectively — could exchange it for a free bottle of the wine. 121 listeners, all Chinese, responded to this promotion. Of these, 110 turned up with empty bottles of the plaintiffs’ product, 10 with the defendants’ product, and one with an empty bottle of the plaintiffs’ product and an empty bottle of the defendants’ product. VC George J held that the plaintiffs had successfully established that a substantial and significant majority of Malaysian Chinese consumers related to the plaintiffs’ product with the sound of the combination of the three kanji characters in the Chinese dialects including that in Mandarin, “Yang Ming Jiu”.

The main thrust of the defence was that the three kanji characters “

” in Chinese meant “life-preserving wine” and thus was descriptive of a class of medicinal wine into which fell both the plaintiffs’ product and the defendants’ product. An expert witness called by the defendants testified that each of the three kanji characters had a specific meaning and that even a primary school-leaver would have no problem getting the meaning of the combination to be “tonic wine”. Therefore, the defendants argued, the combination of the three kanji characters was not an invented or coined word. The defendants sought, by counterclaim, a rectification of the Register of Trade Marks by the cancellation from the plaintiffs’ trade marks of the three kanji characters. The defendants contended that the plaintiffs had misrepresented to the Malaysian Trade Marks Registry that the three kanji characters had no meaning, and that had the Malaysian Registry known of the descriptive nature of the three kanji characters and their transliteration, the plaintiffs would not have been able to obtain registration of the said combination under s 10(1)(c) of the Trade Marks Act 1976. The defendants also relied on s 40(1)(b) of the Trade Marks Act 1976 which provided that “the use in good faith by a person of a description of the character or quality of his goods” did not constitute an infringement of a trade mark.

VC George J pointed out that, for s 40(1)(b) to apply, the defendants must show that (i) the use of “Yang Ming Jiu” by the defendants was only a description of the character or quality of the defendants’ wine, and (ii) such use was made in good faith. At the end of the trial, he concluded that...