Wing Joo Loong Ginseng Hong (Singapore) Company Pte Ltd v Qinghai Xinyuan Foreign Trade Company Ltd

• Jurisdiction: Singapore
• Judgment Date: 02 March 2009
• Date: 02 March 2009
• Docket Number: Civil Appeals Nos 58 and 65 of 2008
• Court: Court of Appeal (Singapore)

Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd

Plaintiff

and

Qinghai Xinyuan Foreign Trade Co Ltd and another and another appeal

Defendant

[2009] SGCA 9

Chao Hick Tin JA

,

Andrew Phang Boon Leong JA

and

V K Rajah JA

Civil Appeals Nos 58 and 65 of 2008

Court of Appeal

Civil Procedure–Costs–Principles–Exercise of court's discretion as to costs was that where there were two (or more) co-defendants–General rule that only one set of costs would be payable–Separate costs where reasonable grounds had been shown for severance of defences–Whether reasonable grounds existed for severance of defences–Order 59 r 3 (2) Rules of Court (Cap 322, R 5, 2006 Rev Ed)–Civil Procedure–Declaratory order–Power to grant declaration–Power to grant declaration as to criminal consequences of conduct–Exercise of discretion to grant declaration as to criminal consequences of conduct–General rule that court would be slow to grant declaration unless circumstances were exceptional–Whether or not exceptional circumstances existed–Order 15 r 16 Rules of Court (Cap 322, R 5, 2006 Rev Ed)–Copyright–Declaratory order–Declaration sought that any copyright in various labels did not subsist in favour of defendants and that plaintiff had not infringed any such copyright–Whether declaration ought to have been given–Courts and Jurisdiction–Declaratory order–Jurisdiction of court to grant declaration–Jurisdiction to grant declaration as to criminal consequences of conduct–Exercise of discretion to grant declaration as to criminal consequences of conduct–General rule that court would be slow to grant declaration unless circumstances were exceptional–Whether or not exceptional circumstances existed–Order 15 r 16 Rules of Court (Cap 322, R 5, 2006 Rev Ed)–Trade Marks and Trade Names–Invalidity–Registration criteria–Capable of distinguishing–Whether opposed mark was capable of distinguishing–Customary mark–Whether opposed mark was customary–Bad faith–Whether opposed mark was registered in bad faith–Fraud and misrepresentation–Whether registration of opposed mark had been obtained by fraud or misrepresentation–Residual discretion not to grant relief where grounds for revocation and/or invalidation had been made out–Sections 7 (1) (a), 7 (1) (d), 7 (6), 23 (1) and 23 (4) Trade Marks Act (Cap 332, 2005 Rev Ed)–Trade Marks and Trade Names–Revocation–Genuine use for five years following registration–Whether there had been genuine use of opposed mark–Non-use for uninterrupted period of five years–Whether there had been use of opposed mark–Common name in the trade–Whether opposed mark had become common name in the trade–Residual discretion not to grant relief where grounds for revocation and/or invalidation had been made out–Sections 22 (1) (a), 22 (1) (b) and 22 (1) (c) Trade Marks Act (Cap 332, 2005 Rev Ed)

The First Defendant was the proprietor of two trade marks bearing the “rooster flower”, ie, a picture of a rooster within a stylised flower border (the “Rooster Sign”). One of the trade marks, of which the Second Defendant was the exclusive licensee, was registered in the Registry of Trade Marks, Singapore (“the Opposed Mark”). The other trade mark was registered in the Trade Marks Office of the People's Republic of China (“the China Mark”). On 29 November 2005, search warrants premised on the First Defendant's registration of the Opposed Mark were executed against the Plaintiff. As a result of the raid, cordyceps in the Plaintiff's possession bearing marks identical and/or similar to the Opposed Mark were seized. On 5 May 2006 and 11 May 2006, under the authority of fiats granted by the Attorney-General's Chambers, charges under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the current TMA”) and the Copyright Act (Cap 63, 2006 Rev Ed) were filed against the Plaintiff and some of its directors via private summonses (“the Private Summonses”). Approximately six months later, on 1 November 2006, the Plaintiff applied by way of Originating Summons for the registration of the Opposed Mark to be revoked and/or invalidated. The Plaintiff also sought a declaration that any copyright in various labels relating to the Opposed Mark (“the Labels”) did not subsist in favour of either the First Defendant or the Second Defendant and that the Plaintiff had not infringed any such copyright (“the Declaration”).

For its contention that the registration of the Opposed Mark should be revoked, the Plaintiff relied on ss 22 (1) (a), 22 (1) (b) and 22 (1) (c) of the current TMA,viz, that there had been no “genuine use” of the mark for a period of “5 years following the date of completion of the registration procedure” (per s 22 (1) (a)), “non-use” of the mark for “an uninterrupted period of 5 years … [with] no proper reasons for non-use” (per s 22 (1) (b)), and the mark had due to the “acts or inactivity of the proprietor” become a “common name in the trade” (per s 22 (1) (c)). For its contention that the registration of the Opposed Mark should be invalidated, the Plaintiff relied on ss 7 (1) (a), 7 (1) (d) and 7 (6) read with s 23 (1), and s 23 (4) of the current TMA, viz, that the mark did not satisfy the definition of a trade mark in that the mark was not “capable of distinguishing” (per s 7 (1) (a) read with s 23 (1)), the mark was “customary” (per s 7 (1) (d) read with s 23 (1)), the mark was registered in bad faith (per s 7 (6) read with s 23 (1)), and the registration of the mark had been obtained by fraud or misrepresentation (per s 23 (4)). As regards the Declaration, the Plaintiff submitted that there was no evidence that copyright in the Labels subsisted in Singapore in favour of the First Defendant and/or the Second Defendant.

The High Court judge (“the Judge”) dismissed the prayers for revocation and invalidation of the registration of the Opposed Mark, but granted the Declaration (albeit limited to the First Defendant). The Judge held that none of the grounds for revocation and invalidation were made out, save for the ground set out under s 7 (1) (a) read with s 23 (1) of the current TMA, viz, the mark was not “capable of distinguishing”. The Judge felt, however, that the current TMA did not deprive the court of the discretion to not revoke or invalidate the registration of a trade mark, even where the grounds for revocation or invalidation were made out. After reviewing the relevant facts and balancing the different interests, the Judge held that the status quo should be maintained and the registration of the Opposed Mark should be allowed to remain.

The Plaintiff appealed (via Civil Appeal No 58 of 2008) against the Judge's dismissal of the prayers for revocation and invalidation (“the Appeal”), while the First Defendant appealed (via Civil Appeal No 65 of 2008) against the Judge's grant of the Declaration (“the Cross-Appeal”). The issues raised by the parties were: (a) whether the Judge erred in holding that the registration of the Opposed Mark could not be revoked under ss 22 (1) (a), 22 (1) (b) and 22 (1) (c) of the current TMA; (b) whether the Judge erred in holding that the registration of the Opposed Mark could not be invalidated under s 23 (1) read with s 7 (1) (d), s 23 (1) read with s 7 (1) (a), s 23 (1) read with s 7 (6), and s 23 (4) of the current TMA; (c) whether the court had a residual discretion under ss 22 (1) and 23 (1) of the current TMA not to revoke or invalidate the registration of a registered trade mark even though one or more of the grounds for revocation or invalidation set out in those provisions had been made out; (d) whether the First Defendant was prevented by the doctrine of res judicatafrom raising in the Cross-Appeal arguments on whether the court should grant the Declaration; (e) whether the Declaration should have been granted; and (f) whether a separate set of costs should be paid by the Plaintiff to the Second Defendant in relation to the prayers on which it was successful.

Held, dismissing the appeal in Civil Appeal No 58 of 2008 and allowing the appeal in Civil Appeal No 65 of 2008:

(1) It was trite law that the legal burden of proof to substantiate an action for revocation and/or invalidation of the registration of a trade mark lay throughout on the plaintiff. An exception to this rule, ie,a reversal of the burden, would be where the use of a registered trade mark was in question, as provided in s 105 of the current TMA: at [33] and [34].

(2) For the purposes of determining whether use of a trade mark was genuine, while there was no rule barring de minimis use from being regarded as genuine use, no one single objective formula which applied to all situations could be laid down; much would depend on the fact situation in each individual case. In the present case, there was clear objective evidence that, during the material period, the Second Defendant's related company sold cordyceps bearing the Opposed Mark. Accordingly, there was no basis whatsoever to revoke the registration of the Opposed Mark for either lack of genuine use for a period of “5 years following the date of completion of the registration procedure” (per s 22 (1) (a) of the current TMA) or “non-use” for “an uninterrupted period of 5 years … [with] no proper reasons for non-use” (per s 22 (1) (b) of the current TMA): at [43], [45], [50] and [68].

(3) A trade mark which was considered to have become a common name in the trade could be described as, inter alia, being generic or so well known that it passed into the language as being the name by which a type of product was referred to, although it need not be the only such name. It would not be sufficient to establish that the trade mark was a popular mark. The expression “in the trade” would include both consumers and end-users of the product or service for which the trade mark was registered. Accordingly, the Plaintiff had to show that the word “Rooster” had become common to, inter alia, consumers and end-users of cordyceps. The burden of proof which the Plaintiff had...