Weir Warman Ltd v Research & Development Pty Ltd

JurisdictionSingapore
CourtHigh Court (Singapore)
Judgment Date30 April 2007
Docket NumberOriginating Summons No 513 of 2006
Date30 April 2007

High Court

V K Rajah JA

Originating Summons No 513 of 2006

Weir Warman Ltd
Plaintiff
and
Research & Development Pty Ltd
Defendant

M Ravindran and Adrian Kwong (Ravindran Associates) for the plaintiff

Dedar Singh Gill and Lim Siau Wen (Drew & Napier LLC) for the defendant.

800-Flowers Trade Mark [2002] FSR 12 (folld)

Al Bassam Trade Mark [1995] RPC 511 (refd)

Ansul BV v Ajax Brandbeveiliging BV [2003] RPC 717 (refd)

Blanchard v Hill (1742) 2 ATK 484; 26 ER 692 (refd)

Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long [2003] 4 SLR (R) 92; [2003] 4 SLR 92 (folld)

BOSTITCH Trade Mark [1963] RPC 183 (refd)

Sifco Industries Inc v Dalic SA [1997] 3 SLR (R) 930; [1998] 2 SLR 231 (refd)

Day v Day (1816) Digest 21 (refd)

Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 293 (refd)

Demon Ale Trade Mark [2000] RPC 345 (refd)

ELLE Trade Marks [1997] FSR 529 (folld)

Floris Trade Mark [2001] RPC 329 (folld)

Forefront Medical Technology (Pte) Ltd v Modern-Pak Pte Ltd [2006] 1 SLR (R) 927; [2006] 1 SLR 927 (refd)

Glaxo Group v Dowelhurst Ltd (No 2) [2000] FSR 529 (refd)

Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 (refd)

Laboratoires Goëmar SA v La Mer Technology Inc [2005] EWCA Civ 978 (refd)

Millington v Fox (1838) 3 My & Cr 338;40 ER 956 (refd)

MINERVA Trade Mark [2000] FSR 734 (refd)

National Dairies Ltd v Xie Chun Trading Pte Ltd [1997] 2 SLR (R) 969; [1998] 1 SLR 620 (refd)

Nike International Ltd v Campomar SL [2006] 1 SLR (R) 919; [2006] 1 SLR 919 (distd)

Rainforest Coffee Products Pte Ltd v Rainforest Café, Inc [2000] 1 SLR (R) 725; [2000] 2 SLR 549 (refd)

Reemtsma Cigarettenfabriken GmbH v Hugo Boss AG [2003] 4 SLR (R) 155; [2003] 4 SLR 155 (folld)

Reigate v Union Manufacturing Company (Ramsbottom), Limited and Elton Cop Dyeing Company, Limited [1918] 1 KB 592 (refd)

Rothmans of Pall Mall Ltd v Maycolson International Ltd [2006] 2 SLR (R) 551; [2006] 2 SLR 551 (distd)

Thomson Holidays Ltd v Norwegian Cruise Line Ltd [2003] RPC 586 (refd)

Villanova University v Villanova Alumni Educational Foundation, Inc123 F Supp 2d 293 (refd)

Yomeishu Seizo Co Ltd v Sinma Medical Products (S) Pte Ltd [1991] 1 SLR (R) 246; [1991] SLR 499 (refd)

Trade Marks Act (Cap 332, 1992 Rev Ed)

Trade Marks Act (Cap 332, 2005 Rev Ed)ss 7 (6), 22 (1) (a), 23 (1), 23 (4), 37 (consd);ss 5 (2),22 (6), Third Schedulepara 17 (2)

Trade Marks Act1994 (UK)ss 23,32 (3)

Trade Marks and Trade Names–Invalidity–Bad faith–Two related companies involved in dispute over registration and validity of trade mark–One company registering trade mark in Singapore–Whether proprietorship of mark had been conferred on such company via contractual term in agreements between it and other company–Whether company registering mark operating as trade mark licensee of other company–Whether absence of manufacturing rights in place of registration of trade mark fatal to claim of proprietorship of trade mark–Trade Marks and Trade Names–Invalidity–Bad faith–Two related companies involved in dispute over registration and validity of trade mark–One company registering trade mark in Singapore–Whether proprietorship of mark had been conferred on such company via contractual term in agreements between it and other company–Whether contractual right to register mark in Singapore sufficient to negate allegation of bad faith on part of company registering such mark–Whether company registering mark having duty to disclose contractual relationship with other company to Registrar of Trade Marks at time of registration mark–Trade Marks and Trade Names–Revocation–Company registering trade mark in Class 7 for range of goods including milling equipment and valves–Company using mark on pumps and pump parts only–Whether registration of mark in Class 7 should be partially revoked to limit specification to pumps and pump parts–Section 22 (6) of Trade Marks Act (Cap 332, 2005 Rev Ed)–Trade Marks and Trade Names–Revocation–Genuine use–Company registering trade mark and using mark on pump parts–Whether three sales transaction in relation to pump parts bearing such mark sufficient to constitute “genuine use”–Whether “genuine use” may be established where no evidence of actual sales existing–Section 22 (1) of Trade Marks Act (Cap 332, 2005 Rev Ed)

Charles Harold Warman (“CHW”) was the founder, beneficial owner and director of the defendant. Prior to 1969, CHW and companies in which he had a direct or indirect interest (including the defendant) were in the business of manufacturing and selling pumps and other related products. In connection with this business, a number of intellectual property rights, including trade marks and patents were created and protected by CHW, the defendant and/or their affiliates. Pursuant to several agreements entered over time, CHW's and the defendant's intellectual property rights were transferred to various parties, including the plaintiff's predecessor-in-title, Peko-Wallsend Ltd (“Peko”); it was also agreed that both CHW and Peko were to be bound by certain trade restraints.

Agreements were entered into by, inter alia, CHW, the defendant and Peko, in 1969 and 1971. By virtue of these agreements, various trade restraints were imposed on the parties but they were both free to sell relevant products under the “Warman” trade mark in “Non-Exclusive Territories”, including Singapore, subject to mutual restraints as to the place of manufacture of the goods.

In 1996 and 1997, the defendant registered the trade mark “Warman” in Singapore in Class 7, Class 37 and Class 42. It was common ground that the defendant had not used the “Warman” mark in Singapore prior to registration - the defendant and/or its subsidiaries had actually commenced using the mark in Singapore only in 2001. The plaintiff, however, had allegedly been selling “Warman”-marked equipment in Singapore since the early 1960s, with the first recorded sale into Singapore in August 1984.

The only evidence adduced of the defendant's use of the “Warman” trade mark in Singapore was in relation to some of the Class 7 goods, specifically, pump parts and pumps. There were three sales transactions by the defendant involving “Warman”-marked pump parts, e-mail enquiries from Singapore companies to the defendant on pumps and pump parts, and a fax sent by the defendant to a Singapore company offering its service as a manufacturer of “Warman” pumps and pump parts. Further, there was a meeting held in Singapore on 12 November 2001 between the defendant and a representative from a Singapore-based business in relation to the potential supply of “Warman” pumps by the defendant and the promotion of “Warman” pumps to various mining houses and consultants in Singapore.

Originating Summons No 513 of 2006 was filed by the plaintiff on 8 March 2006 seeking both the invalidation and the revocation of the trade mark “Warman” registered by the defendant. The plaintiff asserted that it was the sole legitimate proprietor of the “Warman” mark in Singapore and the mark was registered by the defendant in breach of s 23 (1) read with s 7 (6) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) in that the applications were made in bad faith; and/or the registered mark had breached s 23 (4) of the TMA because the registration was procured by fraud or misrepresentation. The application to revoke was made pursuant to s 22 (1) (a) of the TMA. The plaintiff alleged that the registered marks had not been put to genuine use in the course of trade in Singapore in the course of the five-year periods commencing from the respective dates of their registrations and/or for uninterrupted five-year periods to date; further, there were no proper reasons for non-use.

Held, dismissing the application to invalidate and partially allowing the application to revoke:

(1) There seemed to be an understanding between the parties that the plaintiff was the only proprietor of the trade mark in its exclusive territories and the defendant was the only proprietor of the trade mark in its only exclusive territory, Africa. Thus, it stood to reason that with respect to the Non-Exclusive Territories, wherein both parties had the right to sell “Warman”-marked products, both parties had the right to protect and register the “Warman” trade mark. Since the right to sell was unfettered, the corresponding right to protect the trade mark should be equally so, and it was only the statutory trade mark regime that could offer such unqualified protection. Further, the plaintiff's suggested interpretation of the 1971 Agreement - that the plaintiff was the exclusive proprietor of the “Warman” mark - was commercially implausible and unviable in the light of the rights apportioned to both parties through the 1971 Agreement. It was clear that the 1971 Agreement must have contemplated that both the plaintiff and the defendant should be entitled to individually and independently avail themselves of the protection afforded by the trade mark registration regime apropos the “Warman” mark under which each of them traded: at [59] to [62].

(2) A trade mark licence arrangement between the plaintiff and the defendant may only be established if the plaintiff exerted some manner or form of control or supervision over the defendant's goods. From the undisputed facts, the plaintiff and the defendant were in fact two entities trading separately and entirely independently of each other, albeit in goods having a common heritage and affixed with an identical trade mark. As such, neither party could control or supervise the other's goods and use of the trade mark in the Non-Exclusive Territories. There was no trade connection between the plaintiff and the defendant's goods and, accordingly, there could be no basis for asserting that the plaintiff or its predecessors had merely conferred a trade mark licence on the defendant: at [68].

(3) Manufacturing rights were...

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    ...at [32]]. The policy of s 8 [TMA] is to protect the public against deception. In Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR (R) 1073, V K Rajah JA observed that (at [41]): It is plain that the trade mark register is intended to be a comprehensive and accurate record o......
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    ...The policy of s 8 of the Act is to protect the public against deception. In Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR(R) 1073 , V K Rajah JA observed that (at [41]): It is plain that the trade mark register is intended to be a comprehensive and accurate record of tra......
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1 books & journal articles
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review Nbr. 2011, December 2011
    • 1 December 2011
    ...function has previously been acknowledged by the Singapore courts. For example, in Weir Warman Ltd v Research & Development Pty Ltd[2007] 2 SLR(R) 1073 (Weir Warman), when V K Rajah JA had to decide whether the court had the discretion to allow a registered trade mark to remain on the regis......

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