Weir Warman Ltd v Research & Development Pty Ltd

JurisdictionSingapore
Judgment Date30 April 2007
Date30 April 2007
Docket NumberOriginating Summons No 513 of 2006
CourtHigh Court (Singapore)
Weir Warman Ltd
Plaintiff
and
Research & Development Pty Ltd
Defendant

V K Rajah JA

Originating Summons No 513 of 2006

High Court

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 irrelevant to the purposes that a trade mark served. As such, since the trade mark register had to protect the public against deception by only keeping on record trade marks that served their function, the absence of any manufacturing rights in, or change of any place of manufacture from, the place of registration should not be a basis to refuse to register or remove a trade mark from the register. It was not the essence of trade mark registration for the registrant to have the right to manufacture in the place of registration. So long as the registrant had a legitimate right to use that mark in the place of registration in respect of its goods and services, then that registrant should prima facie have the right to register the mark: at [73].

(4) The common law proposition that the first user of the mark in Singapore was the true owner of the mark was merely the default position that applied in the absence of any contractual agreements between parties assigning or stipulating for the right to register a trade mark. Since the 1971 Agreement was interpreted as having implicitly accorded both the plaintiff and the defendant the right to register the “Warman” trade mark in Non-Exclusive Territories, the defendant was entitled to “dislodge” the plaintiff's claim of common law proprietorship based on prior use: at [76] to [78].

(5) Where one did not deny awareness of material facts surrounding the registration of a trade mark, and relied instead on an independent right to register, as in the present case, there should not be any basis for creating a broad and general “duty to disclose” on the registrant. Such a duty, besides being difficult to define, would create uncertainty as to the relevant circumstances that had to be disclosed on registration. Thus, so long as the facts and circumstances required by the trade mark registration form were disclosed fully and accurately, and where one had the right to register the trade mark, it went too far to require the registrant to additionally disclose any other circumstances that may be relevant: at [89].

(6) There was no untrue representation on the part of the defendant - the defendant represented that it had the right to register the “Warman” mark in Singapore and it did indeed have such right. The requirement that a registrant states its trading nature on...

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