TIFFANY’S SERVES UP MORE THAN BREAKFAST

AuthorDAVINDER SINGH S.C. & DEDAR SINGH GILL
Date01 December 1999
Published date01 December 1999
Citation(1999) 11 SAcLJ 463

With the recent landmark decision in Tiffany & Company v Fabriques de Tabac Reunies by the Court of Appeal, as well as the enactment of the new Singapore Trade Marks Act 1998, foreign proprietors of marks with extensive reputation in Singapore, but who have yet to commence “use” in Singapore, have much cause to celebrate. Singapore law now recognises and accords due weight to “reputation” as a source of deception or confusion to the public.

This article seeks to examine the impact and relevance of the decision in Tiffany on the protection of such marks in Singapore under the Trade Marks Act 1998 and the law of passing-off.

This article will also briefly discuss the Court of Appeal’s practical approach to events occurring after the application date of the mark in assessing the likelihood of deception or confusion.

I. TIFFANY & COMPANY V FABRIQUES DE TABAC REUNIES — THE LITIGATION HISTORY
II.
A. Facts

The opponents, the world-renowned Tiffany & Co. (“Tiffany”), were founded by Charles Lewis Tiffany in New York City in 1837, and incorporated as Tiffany and Company in 1868. Over the years, Tiffany had built up a formidable reputation worldwide for designing, manufacturing and selling high quality luxury consumer goods such as jewellery, and household and personal items.

The applicants of the mark, Fabriques de Tabac Reunies S.A. (“Fabriques”), are a wholly owned subsidiary of Philip Morris Holland B.V. Fabriques had obtained the mark through Philip Morris Holland B.V. as a result of Philip Morris Holland B.V.’s corporate acquisition of a Dutch company in 1970. This mark was first registered in Netherlands for cigarettes, cigars and tobacco on 23 March 1963 and subsequently registered in many other countries. On 20 November 1989, Fabriques filed a trade mark application for “Tiffany” in Class 34 in respect of cigarettes in Singapore.

The application was opposed by Tiffany, which filed opposition proceedings on 23 December 1991 to prevent the registration of the “Tiffany” mark. The opposition found its way to the Court of Appeal whose decision is the subject of this article.

B. The Hearing Before the Registrar

At the hearing before the Registrar on 11 November 1997, Tiffany, inter alia, argued that Fabriques were not the “proprietor” of the trade mark under section 121 of the Trade Marks Act 19922 (“the 1992 Act”); and that it would not be lawful, under section 15 of the 1992 Act, to register the “Tiffany” mark as its use was likely to deceive or cause confusion, and would therefore be disentitled to protection in a court of justice.

The Registrar rejected Tiffany’s arguments, finding, in relation to section 15, that while Tiffany had registered trade marks elsewhere in the world, as well as extensive reputation in the United States of America and other parts of the world, it had not used its mark in Singapore at the date of the application (20 November 1989). Tiffany commenced trading in Singapore in September 1991.

Applying Lord Upjohn’s “use” test3 in BALI Trade Mark4, the Registrar concluded that Tiffany was unable to satisfy the requirements under section 15.5 Fabriques’“Tiffany” mark was registered.

C. The Appeal to the High Court

Tiffany appealed to the High Court where the same issues were re-visited.6

Kan Ting Chiu J was not persuaded by Lord Upjohn’s test of “use” in BALI7. He found that “use within jurisdiction” was not a requirement under section 15 of the 1992 Act. The judge preferred the approach in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd8 where the New

Zealand Court of Appeal found that it is not necessary to show “use” of the mark within jurisdiction in order to invoke section 16 of the New Zealand Trade Marks Act 1953.9 According to the New Zealand Court of Appeal, “reputation” alone, if it could result in a likelihood of deception and confusion, was sufficient to invoke section 16.

Kan J had this to say:

“As an illustration, the Viagra tablet has in the recent months received wide publicity here although the tablets are not on sale pending approval by the health authorities. Nevertheless there can be no doubt that if a party other than the producers of the tablet is allowed to register the “Viagra” mark for pharmaceutical preparations here, the public is as likely to confuse that with the original mark. The public needs protection in such a situation whether or not the original mark in used here.” 10

On the facts, however, the learned judge concluded that there was no likelihood of deception or confusion and dismissed the appeal.

D. The Appeal to the Court of Appeal

Tiffany appealed from the judge’s decision to the Court of Appeal.11

The Court of Appeal endorsed Kan J’s interpretation of section 15 — that “use” within the jurisdiction was not a necessary element to establish a “likelihood of deception or confusion” under section 15 of the 1992 Act. The Court of Appeal, in a judgment delivered by Yong Pung How CJ, rejected the “use” test as propounded by Lord Upjohn in BALI12, and adopted, instead, the “reputation” test in Pioneer13.

To fully appreciate the impact of Tiffany, a brief discussion of opposition proceedings in Singapore is necessary.

III. GENERAL OVERVIEW OF OPPOSITION PROCEEDINGS IN SINGAPORE

Generally, any person14 may oppose the registration of the mark.

A. The Position Under the Trade Marks Act 1992

Section 19 of the 1992 Act regulates the procedure for opposing a mark.

The grounds of opposition commonly invoked by an opponent are:

  1. (i) that the mark is not distinctive15 or (for a mark registered in Part B) is not capable of distinguishing [Sections 10 and 11];

  2. (ii) that the applicant is not entitled to claim to be the proprietor16 of the mark under Section 12(1);

  3. (iii) that by reason of the reputation acquired by some mark, use of the mark will be likely to deceive or cause confusion and be disentitled to protection in a court of justice [Section 15];

  4. (iv) that in some other respects, use of the mark will be contrary to law17 or morality [Section 15]; and

  5. (v) that the mark applied for is identical with or nearly resembles18 a mark already on the register in respect of the same or similar goods/services [Section 23].

B. The Position Under Trade Marks Act 1998

The provisions under which opposition proceedings may be brought under the Trade Marks Act 199819 (“the 1998 Act”) are neatly divided into two groups.

Opposition proceedings under the 1998 Act are governed by section 13 of the 1998 Act.20 An opponent must rely on at least one of the substantive grounds of objection now categorised into two broad groups, absolute and relative.

Generally, absolute grounds21 relate to inherent objections to distinctiveness and public interest.22 Such grounds, as the name suggests, cannot be waived by another person, unlike the relative grounds.

Relative grounds of refusal23 are invoked, not on account of the intrinsic nature of the mark itself, but because some other trader or proprietor has an earlier mark or right.

Sections 8(1), (2) and (3) allow the owner of an “earlier trade mark”24 to invoke the relative grounds by prohibiting registration of an identical or similar mark in the following situations:

Section

Mark

Goods or Services

Additional Requirements

8(1)

Identical

Identical

None

8(2)(a)

Identical

Similar

Likelihood of confusion

8(2)(b)

Similar

Identical

Likelihood of confusion

8(2)(b)

Similar

Similar

Likelihood of confusion

8(3)

Identical/ Similar

Dissimilar

Well known Indication of connection

Likelihood of confusion

Likelihood of damage

An “earlier right” entitles the owner:

  1. (i) to protect an unregistered trade mark or sign used in the course of trade (in particular passing off) [Section 8(4)(a)]; and

  2. (ii) to object, in particular by virtue of the law of copyright or any law with regard to the protection of designs [Section 8(4)(b)].

C. Transitional Provisions

The Third Schedule of the 1998 Act governs transitional matters after the commencement of the 1998 Act. Paragraph 10 of the Third Schedule provides that a pending application for registration under the 1992 Act

shall be dealt with under the 1992 Act. Paragraph 1(2) of the Third Schedule clarifies that an application for a mark which is not “fully determined” before commencement shall be treated as pending.

Consequently, opposition proceedings brought against marks accepted and advertised under the 1992 Act will be governed by the 1992 Act.

Tiffany was decided under the 1992 Act. The 1998 Act is now in force. As most opposition proceedings are founded on the similarities between the application mark and the opponent’s mark, Tiffany will continue to remain relevant for opposition proceedings filed against marks examined under the 1992 Act, and, as we will show, opposition proceedings initiated under the 1998 Act.

IV. THE DEVELOPMENT OF “REPUTATION” UNDER THE TRADE MARKS ACT 1992
A. The Position Under Section 15 “Pre-Tiffany”

Before the decision of the Court of Appeal in Tiffany, an opponent relying on section 15 of the 1992 Act had to show “use” in order to establish “likelihood of deception or confusion” from the public’s perspective. He had to prove that his mark had been “used” within the jurisdiction: BALI25.

“Reputation”, while relevant and useful, was only a factor in determining whether there was a “likelihood of deception or confusion”. But it could not replace “use” as a requirement under section 15.26

It was not too difficult to see that inflexible insistence on “use” would result in an unjust and unfair result for proprietors of famous, well-known marks, who have extensive international reputation in the mark extending to Singapore, but have yet to commence any “use” in Singapore. These proprietors could not avail themselves of section 15 simply because they lacked “use” of the mark in...

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