Tiffany & Co v Fabriques de Tabac Reunies SA

• Jurisdiction: Singapore
• Judge: Karthigesu JA
• Judgment Date: 28 May 1999
• Neutral Citation: [1999] SGCA 39
• Docket Number: Civil Appeal No 317 of 1998
• Date: 28 May 1999
• Published date: 19 September 2003
• Year: 1999
• Plaintiff Counsel: Davinder Singh SC, Dedar Singh Gill and Penny Leng (Drew & Napier) for
• Citation: [1999] SGCA 39
• Defendant Counsel: Tan Tee Jim SC and Corrine Tan (Allen & Gledhill)
• Court: Court of Appeal (Singapore)
• Subject Matter: Whether claim to mark bona fide,Trade Marks and Trade Names,Opposition on ground of confusion and deception,Whether misappropriation of mark existing,Whether necessary to show use of mark by applicant,s 15 Trade Marks Act (Cap 332),Relevant date for considering issue of confusion and deception,Opposition to registration,s12 Trade Marks Act (Cap 332),Registration

Judgment:

YONG PUNG HOW CJ

(delivering the judgment of the court): This is an appeal against an order allowing the respondents to register the trade mark 7671/89 for `Tiffany` in Class 34 in respect of cigarettes. The respondents applied to register the mark on 20 November 1989 and this was advertised in the Government Gazette on 25 October 1991. The appellants filed their opposition to the registration on 23 December 1991. On 11 November 1997, the appellants` opposition was overruled by the assistant registrar of the Registry of Trade Marks and the mark was registered. On appeal against the registration of the mark, Kan Ting Chiu J confirmed the decision of the assistant registrar.

2. The facts

The appellants have been doing business since 1837 and were incorporated as Tiffany & Company in 1868 in New York City. They design, manufacture and sell high quality luxury consumer goods such as jewellery, household and personal items like pens, card holders, watches and cigarette holders. They have 44 locations world-wide. The shops in Singapore opened here in September 1991, first at Raffles Hotel Shopping Arcade and subsequently at Ngee Ann City Shopping Centre. The company has registered and used the `Tiffany` and `Tiffany & Company` marks in many countries around the world.

3.The respondents on the other hand are a wholly owned subsidiary of Philip Morris Holland BV. The `Tiffany` mark was obtained by Philip Morris Holland BV by virtue of a corporate acquisition in 1988. This mark is known as Netherlands Registration No 149655 `Tiffany` for cigarettes, cigars and tobacco and was dated 22 March 1963. The mark has been registered in many countries. The affiliate of the respondents, Philip Morris GmbH, which is also a wholly owned subsidiary of Philip Morris Companies Inc has used the mark in Germany under the authority of the respondents.

4.The appellants contended in their notice of opposition that the respondents could not claim to be the proprietors of the mark and therefore registration should be denied under s 12(1) of the Trade Marks Act (Cap 332) (`the Act`). Furthermore, the appellants contended that the proposed use of the trade mark by the respondents was calculated to deceive or cause confusion to the public and would be contrary to law or otherwise disentitled to protection in a court of law under s 15 of the Act.

5.The assistant registrar rejected the appellants` opposition and registered the respondents` trade mark. In so doing, she held that the respondents were the proprietors of the mark `Tiffany` for the purposes of s 12(1) of the Act. The assistant registrar was of the view that the test under s 15 of the Act required use within the jurisdiction and thus found that the appellants` evidence of use was not sufficient for it to invoke s 15 successfully. In addition, she held that the question of likelihood of confusion or deception should be considered at the date of the application for registration.

6. The decision below

Kan Ting Chiu J dismissed the appeal against the assistant registrar`s decision. On the first question of whether the appellants could challenge the respondents` proprietorship of the `Tiffany` mark under s 12(1) of the Act, the learned judge held that the cases of Vitamins Ltd`s Application [1956] RPC 1, Application by Brown Shoe Co Inc [1959] RPC 29 and Hong Kong Caterers Ltd v Maxim`s Ltd [1983] HKLR 287 which were cited by the appellants were of no help in its arguments. This was because, in those three cases, there had been a misappropriation or copying of the original mark. In the present case, there was no evidence that the respondents` mark was misappropriated or copied from the appellants when it was first registered in the Netherlands in 1963.

7.The learned judge then considered the appellants` arguments in regard to s 15 of the Act. Unlike the assistant registrar, he was of the opinion that for s 15 to come into play, there need not be use within the jurisdiction of the mark by the opponent. As s 15 was intended to protect the public, there was no reason to lift the protection from a deceptive or confusing mark simply because the mark was not used within the jurisdiction. Furthermore, with the improved accessibility to and dissemination of information as well as increased international travel, the members of the public of a country could well know of marks even though these marks have not been used in their own country. The judge was aware that this opinion went against the grain of Lord Upjohn`s dictum in Bali TM [1969] RPC 472. However, he was of the view that the public should be protected from deception and confusion however it may arise, whether by use, reputation, awareness, cognisance, knowledge or otherwise.

8.The judge nonetheless went on to consider whether there had been use of the `Tiffany` mark by the appellants in Singapore and found that the several receipts of sales to Singapore customers tendered provided insufficient evidence of the appellants` use of the mark.

9.However, the judge`s main reason for dismissing the appeal was that there was no likelihood of deception or confusion between the respondents and the appellants` mark in this case. Although Tiffany & Company was a well-known company, the judge felt that `to be known to everyone is not to be known for everything`; Harrods v Harrodian School [1996] RPC 697. His impression was that, while the appellants` store sold smokers` articles, these did not play a significant part in its activities. Thus, while a significant number of Singaporeans knew of the Tiffany name through publicity generated for Tiffany products, they did not associate it with tobacco products and would be unlikely to be deceived or confused into thinking that Tiffany cigarettes were connected with the appellants.

10.The judge went on to hold that the relevant time for consideration of the issues was the time the application for registration was made, despite the comments of the editors of Kerly`s Law of Trade Marks and Trade Names (12th Ed, 1986). There were no authorities that said otherwise. There were in fact numerous authorities which stated that the rights of the parties were to be determined as at the date of application.

11.Finally, the judge found no reason to deny registration of the mark on the ground of public policy. The appellants had argued in the court below that it was against public policy for cigarettes to be sold under well-known brand names to circumvent the prohibition of cigarette advertisements. As there was evidently no prohibition against this practice, the judge did not refuse registration on this ground. The appellants did not appeal on this issue.

12. The appeal

The appellants raised the following issues in their appeal against the judge`s decision. In relation to s 12(1) of the Act, they contended that the judge erred in finding that the respondents were the proprietors of the `Tiffany` mark.

13.With regard to s 15 of the Act, the appellants submitted that the judge was correct in holding that `use` was not required under this provision. However, the appellants asserted that the judge had erred in finding that the appellants had not used the `Tiffany` mark in Singapore prior to the application and that no confusion or deception was likely under s 15. Finally, the appellants also submitted that the judge had failed to exercise his discretion correctly in holding that the relevant date for considering this issue was the date of the respondents` application to register the mark, therefore allowing the respondents` mark to be registered.

14. Whether the respondents satisfied the requirements of s 12(1)

Section 12(1) of the Act reads as follows:

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for registration in Part A or B of the register.

This section is essentially the same as s 17(1) of the English Trade Marks Act 1938. According to Kerly`s , the words in the section mean no more than the applicant `claiming that he is entitled to be registered as the proprietor` and that this claim must in some sense be a justified one. Basically, it is difficult to object to registration on this ground as long as the claim of proprietorship is made in good faith and is not rebuttable on the ground that in fact someone else was the proprietor. Kerly`s goes on to say that:

In particular, it is difficult to see what objection there can be to a claim to proprietorship of a mark which is not in use and has no reputation in this country, whoever makes it, provided at least that he genuinely means to use it. There has, nevertheless, been a tendency in recent years to disqualify on this ground applications for the registration in the United Kingdom of marks which do have a reputation (in some other proprietor) elsewhere. With the growth of international trade and of international publicity, it may well be that our law ought to make greater provision than it does for safeguarding the rights of owners of foreign marks. It does not follow however, that s 17(1) [the local Act`s s 12(1)] is the right tool for the purpose.

15.In connection with this issue, the cases of Vitamins Ltd`s Application , Application by Brown Shoe Co Inc , Genette TM [1968] RPC 148, Rawhide TM [1962] RPC 133 and Al Bassam TM [1995] RPC 511 have to be considered. In the Vitamins case, R had applied to register in the United Kingdom a mark that they were using in the United States. V objected, citing similarity to its own mark. R then withdrew its application. Subsequently, V sought to register R`s trade mark immediately after that. The application was refused in the Registrar`s discretion and also because V could not claim to be proprietors of the unused mark. The court suggested that apart from an intention to assume ownership when registration is granted, in order for a...