Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal

• Judge: Chao Hick Tin JA
• Judgment Date: 02 March 2009
• Neutral Citation: [2009] SGCA 9
• Citation: [2009] SGCA 9
• Published date: 13 March 2009
• Court: Court of Appeal (Singapore)
• Plaintiff Counsel: Tan Tee Jim SC, Christopher de Souza, Ng Guan Zhen and Zheng Shaokai (Lee & Lee)
• Defendant Counsel: M Ravindran, Heng Su Lin Vicki and Sukumar Karuppiah (Ravindran Associates),Lau Kok Keng and Low Wei Ling Wendy (Rajah & Tann LLP)
• Subject Matter: 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),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,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,Jurisdiction of court to grant declaration,Jurisdiction to grant declaration as to criminal consequences of conduct,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),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,Sections 22(1)(a), 22(1)(b) and 22(1)(c) Trade Marks Act (Cap 332, 2005 Rev Ed)

2 March 2009 Judgment reserved.

Chao Hick Tin JA (delivering the judgment of the court):

Introduction

1 This judgment relates to an appeal (viz, Civil Appeal No 58 of 2008 (“the Appeal”)) and a cross-appeal (viz, Civil Appeal No 65 of 2008 (“the Cross-Appeal”)) against the decision of the High Court judge (“the Judge”) in Originating Summons No 2038 of 2006 (“the Originating Summons”) (see Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd [2008] 3 SLR 296 (“the Judgment”)).

2 The appellant in the Appeal was the plaintiff in the Originating Summons (“the Plaintiff”). The first respondent in the Appeal was the first defendant in that action (“the First Defendant”); it is also the proprietor of two trade marks bearing the “rooster flower” (ie, a picture of a rooster within a stylised flower border). Both trade marks are registered in respect of, inter alia, cordyceps. One of the trade marks is registered in the Registry of Trade Marks, Singapore (“the Opposed Mark”). The other trade mark is registered in the Trade Marks Office of the People’s Republic of China (“the China Mark”). The second respondent in the Appeal was the second defendant in the Originating Summons (“the Second Defendant”); it is also the exclusive licensee of the Opposed Mark in Singapore. As will be seen (at, inter alia, [16] below), marks bearing the “rooster flower” have been used in the cordyceps trade even before the registration of the China Mark and the Opposed Mark. To avoid confusion, we shall in this judgment use the term “the Rooster Sign” to refer generically to any sign or mark featuring the “rooster flower” (whether or not registered as a trade mark) other than the China Mark and the Opposed Mark.

3 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 (“the Plaintiff’s directors”) via private summonses (“the Private Summonses”).

4 Approximately six months later, on 1 November 2006, the Plaintiff applied by way of the 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”).

5 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 Plaintiff has appealed to this court (via the Appeal) against the Judge’s dismissal of the prayers for revocation and invalidation, while the First Defendant has appealed to this court (via the Cross-Appeal) against the Judge’s grant of the Declaration. To facilitate the reading of this judgment, we set out below the schematic arrangement of its contents:

INTRODUCTION.....................................................................................	1
THE FACTUAL MATRIX.........................................................................	5
THE PLAINTIFF’S SUBMISSIONS IN THE HIGH COURT..................	9
THE DECISION OF THE JUDGE.............................................................	15
THE ISSUES BEFORE THIS COURT......................................................	20
The issues raised in the Appeal...........................................................	20
The issues raised in the Cross-Appeal.................................................	21
Our approach to the issues raised by the parties.................................	22
REVOCATION AND INVALIDATION OF THE REGISTRATION; OF THE OPPOSED MARK.....................................................................	24
The burden of proof...........................................................................	24
Revocation of the registration of the Opposed Mark...........................	24
Sections 22(1)(a) and 22(1)(b): Lack of genuine use; and non-use of the impugned trade mark..................................	25
(1) The requirement of “genuine use”...............................	26
(2) Whether there was genuine use of the Opposed; Mark during the Relevant Period.....................................	31
Section 22(1)(c): The impugned trade mark has become; a common name in the trade due to the registered; proprietor’s acts or inactivity....................................................	35
(1) The requirement that the impugned trade mark; has become a “common name in the trade”......................	35
(2) Whether the Opposed Mark has become a; common name in the cordyceps trade.............................	40
Our decision on revocation.......................................................	47
Invalidation of the registration of the Opposed Mark...........................	48
Section 7(1)(d): The impugned trade mark is a sign which; has become customary in the trade...........................................	49
(1) The requirement of customariness..............................	49
(2) Whether the Rooster Sign has become customary; in the cordyceps trade....................................................	52
Section 7(1)(a): The impugned trade mark does not satisfy; the definition of a trade mark....................................................	57
(1) The requirement that a trade mark must have; the requisite capacity to distinguish..................................	59
(2) Whether the Rooster Sign has the requisite capacity; to distinguish..................................................................	70
Section 7(6): The application to register the impugned; trade mark was made in bad faith.............................................	72
(1) What constitutes “bad faith” for the purposes; of section 7(6).................................................................	72
(2) Whether there was bad faith in Qinghai Meheco’s; application for registration...............................................	75
Section 23(4): The registration of the impugned trade mark; was procured by fraud and/or misrepresentation.......................	84
(1) The requirement of fraud or misrepresentation............	84
(2) Whether section 23(4) of the current TMA; is applicable in the present case........................................	86
(3) The Plaintiff’s case on fraud and/or misrepresentation..	92
Our decision on invalidation......................................................	95
Whether the court has a residual discretion not to grant relief where; the grounds for revocation and/or invalidation have been made out.......	96
The position under the 1992 TMA...........................................	96
The position under the current TMA.........................................	97
(1) Parliament’s intention................................................	98
(2) Case law..................................................................	106
(3) Academic works......................................................	110
(4) Our preliminary opinion on whether there is a residual; discretion not to revoke or invalidate the registration of a; trade mark.....................................................................	112
Our decision on revocation and invalidation of the registration of; the Opposed Mark............................................................................	113
THE DECLARATORY ORDER SOUGHT BY THE PLAINTIFF............	113
The Plaintiff’s preliminary point: Res judicata.......................................	114
Whether the Judge was right to grant the Declaration..........................	121
The court’s power to grant declaratory orders...........................	121
(1) The discretionary nature of the power........................	122
(2) The exercise of the power.........................................	123
The grant of the Declaration in the present case.........................	132
Our conclusion on the grant of the Declaration....................................	133
THE COSTS ORDER MADE BY THE JUDGE.........................................	133
SUMMARY OF THE DECISION OF THIS COURT...............................	135
CODA........................................................................................................	135

The factual matrix

6 The dramatis personae in the Originating Summons are companies involved in the business of traditional Chinese medicines in general and cordyceps in particular. The Plaintiff and the Second Defendant are companies registered in Singapore. The First Defendant is a company registered in the People’s Republic of China (“the PRC”), and it has described itself as the PRC’s largest producer and exporter of cordyceps, accounting for 80% of the exports of the product.

7 The First Defendant is the owner of the Opposed Mark and the China Mark, which, as mentioned earlier (see [2] above), are registered in Singapore and the PRC respectively for cordyceps (amongst other products). According to the First Defendant, this was how it derived proprietorship of the Opposed Mark and the China Mark:

(a) After trade mark registration was introduced in the PRC on 1 March 1983, the Qinghai branch of China National Cereals, Oils & Foodstuffs Corp (“Qinghai Cofco”) applied on 29 October...