Yitai (Shanghai) Plastic Company, Ltd v Charlotte Pipe and Foundry Company

• Jurisdiction: Singapore
• Judge: Dedar Singh Gill J
• Judgment Date: 24 August 2021
• Court: High Court (Singapore)
• Docket Number: Tribunal Appeal No 2 of 2021 (Summons No 1081 of 2021)

Yitai (Shanghai) Plastic Co, Ltd

and

Charlotte Pipe and Foundry Co

[2021] SGHC 198

Dedar Singh Gill J

Tribunal Appeal No 2 of 2021 (Summons No 1081 of 2021)

General Division of the High Court

Civil Procedure — Appeals — Appeal of decision of Intellectual Property Office of Singapore — Opposition to registration of trade mark — Test to be applied to determine if leave should be granted under O 87 r 4(2) Rules of Court (2014 Rev Ed) to adduce further evidence on appeal in trade mark disputes — Order 87 r 4(2) Rules of Court (2014 Rev Ed)

Held, dismissing the application:

(1) To determine whether to admit further evidence on appeal in trade mark proceedings under O 87 r 4(2) of the ROC, the Ladd v Marshall[1954] 1 WLR 1489 (“Ladd v Marshall”) test should not be applied strictly. Just because the applicant had not satisfied all the Ladd v Marshall conditions did not mean that its application had to necessarily fail. The court should go further to consider whether there were any other compelling factors which made it just to admit the further evidence. In this regard, the other considerations stated by Laddie J in Hunt-Wesson Inc's Trade Mark Application[1996] RPC 233 (“Hunt-Wesson”) (“the Hunt-Wesson factors”), while non-exhaustive, were relevant: at [32] and [33].

(2) However, given the policy objectives of finality in litigation and the expeditious resolution of other cases pending before the Registrar of Trade Marks, the admission of further evidence should be the exception, rather than the norm. Parties should not take the position that because opposition proceedings concerned the registration of trade marks, leave would always be granted by the High Court to adduce further evidence in an appeal. Parties ought to produce all relevant evidence for opposition proceedings before the Registrar of Trade Marks: at [89] and [114(a)].

(3) Although the photographs and their metadata in the Import Evidence benefited from a prima facie presumption under s 116A of the Evidence Act (Cap 97, 1997 Rev Ed) that the relevant device accurately communicated the electronic record, the court had several reservations about the credibility of the evidence. Due to these reservations, the third Ladd v Marshall condition, that the further evidence be apparently credible, was not fulfilled: at [53] and [67].

(4) Under the Hunt-Wesson factors, in relation to the Import Evidence, the respondent would have suffered prejudice which could not have been compensated by costs if the application was allowed. One form of prejudice was that the possible delay in resolving the matter would prolong the likelihood of confusion in the market, if the opposition founded on s 8(7)(a) of the TMA was subsequently upheld in TA 2/2021: at [71].

(5) The final resolution of this matter would possibly be delayed because the General Division of the High Court had the power to remit the matter to the Adjudicator under O 55 r 6(5) of the ROC or its inherent power. The court further found that the matter should be remitted if the respondent wanted to test the authenticity of the Import Evidence under cross-examination: at [72], [76], [77] and [82].

(6) Under the Hunt-Wesson factors, in relation to the Import Evidence, the public interest in deterring parties from presenting a partial or incomplete case at first instance weighed against allowing the application: at [96].

(7) Further, the party asserting a proprietary right in a trade mark had the responsibility to put forth its entire case, including all relevant material in support thereof. Less leeway might be granted to such parties to adduce further evidence after failing to obtain registration at first instance: at [91].

[Observation: For the purpose of registration proceedings before the Registrar of Trade Marks, a Notice of Opposition and Counter-statement were in effect pleadings. Parties had to exercise discipline in drafting these pleadings clearly and concisely. Each party's pleadings had to also be full in the sense that they outlined each of the grounds relied upon and stated the case relied upon in support of those grounds. These practices would allow the real issues in dispute to be brought to light and the right evidence adduced. In particular, all trade marks relied on (whether registered or unregistered) had to be specifically stated with the relevant details: at [100(a)], [100(b)] and [114(b)].]

Case(s) referred to

Anan Group (Singapore) Pte Ltd v VTB Bank (Public Joint Stock Co) [2019] 2 SLR 341 (folld)

Charlotte Pipe and Foundry Co v Yitai (Shanghai) Plastic Co, Ltd [2020] SGIPOS 14 (refd)

CLUB EUROPE Trade Mark [2000] RPC 329 (folld)

Consolidated Developments Ltd v Cooper [2018] EWHC 1727 (Ch) (folld)

DEMON ALE Trade Mark [2000] RPC 345 (folld)

Dreamersclub Ltd's Trade Mark Application [2019] RPC 16 (refd)

F (R), Re [1970] 1 QB 385 (folld)

Formula One Licensing BV v Idea Marketing SA [2015] 5 SLR 1349 (refd)

Hunt-Wesson Inc's Trade Mark Application [1996] RPC 233 (folld)

Indtex Trading Ltd v The Otago Rugby Football Union (10 October 2001, HC) (NZ) (refd)

Julian Higgins' Trade Mark Application [2000] RPC 321 (folld)

Ladd v Marshall [1954] 1 WLR 1489 (folld)

Martek Biosciences Corp v Cargill International Trading Pte Ltd [2011] 1 SLR 1287 (folld)

Norris v Government of the United States of America [2008] 1 AC 920 (folld)

PP v Mohd Ariffan bin Mohd Hassan [2018] 1 SLR 544 (folld)

Wee Soon Kim Anthony v Law Society of Singapore [2001] 2 SLR(R) 821; [2001] 4 SLR 25 (folld)

Facts

The applicant filed an international registration for a trade mark (“the Application Mark”), designating Singapore. The respondent successfully opposed the registration of the Application Mark. The intellectual property adjudicator (“the Adjudicator”) had allowed the opposition under s 8(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) on the ground that the use of the Application Mark would result in passing off. After filing the appeal, HC/TA 2/2021 (“TA 2/2021”), the applicant sought to adduce further evidence under O 87 r 4(2) of the Rules of Court (2014 Rev Ed) (“ROC”).

Two categories of evidence were sought to be adduced. The first category was the “Import Evidence”. The Import Evidence aimed to prove use of the Application Mark in Singapore prior to the earliest date on which the respondent's goodwill was recognised by the Adjudicator. The applicant highlighted that the photographs of the goods it exported from China to Singapore in 2012 and a pipe with the Application Mark affixed on it installed in the Hyflux Tuaspring water desalination plant in Singapore were of particular significance. The second category of evidence was the “SCH 80 Evidence”. The SCH 80 Evidence was intended to prove that certain invoices did not evidence sales of the respondent's goods, by its Singapore distributor Agru Technology Pte Ltd, to consumers in Singapore.

Legislation referred to

Evidence Act (Cap 97, 1997 Rev Ed) s 116A(1) (consd); s 116A

Rules of Court (2006 Rev Ed) O 57 r 13(2)

Rules of Court (2014 Rev Ed) O 55 r 6(5), O 87 r 4(2), O 92 r 4 (consd); O 55, O 55 r 1(1), O 55 r 6, O 55D r 11(1), O 57 r 13(1), O 87 r 4, O 87A r 13(2)

Trade Marks Act (Cap 332, 2005 Rev Ed) ss 8(2)(b), 8(4)(a), 8(4)(b)(i), 8(7)(a), 27, 75(2), 75(2)(a)

Trade Marks Rules (2008 Rev Ed) rr 69(1), 69(3), 81B

Lauw Yu An Nicholas Lynwood and Quek Yi Liang Daniel (Guo Yiliang Daniel) (Rajah & Tann Singapore LLP) for the applicant;

Chew Lixian Ashley (Ella Cheong LLC) for the respondent.

24 August 2021

Judgment reserved.

Dedar Singh Gill J:

1 HC/SUM 1081/2021 (“SUM 1081”) is an application under O 87 r 4(2) of the Rules of Court (2014 Rev Ed) (“ROC”) to adduce further evidence in HC/TA 2/2021 (“TA 2/2021”). The applicant is the appellant in TA 2/2021, and is appealing the decision of the intellectual property adjudicator (“the Adjudicator”) to refuse registration of the application mark under s 8(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”). The Adjudicator's grounds of decision issued on 30 December 2020 may be found in Charlotte Pipe and Foundry Company v Yitai (Shanghai) Plastic Co, Ltd[2020] SGIPOS 14 (“the GD”).

Background to SUM 1081

Parties and the genesis of the opposition proceedings below

2 The applicant is a company based in Shanghai, in the People's Republic of China (“China”), and has been established since 2001. It is in the business of manufacturing and supplying products such as plastic valves and fittings, and the production, design and development of industrial piping systems for both domestic and international markets. Since around January 2011, the applicant claims to have been exporting its products into Singapore.

3 On 7 October 2015, the applicant filed its International Registration No 1292448 (the “International Registration”) for the application mark (“the Application Mark”), designating Singapore. The Application Mark is as follows:

4 On 17 March 2016, the Intellectual Property Office of Singapore (“IPOS”) was notified of the applicant's International Registration designating Singapore. The applicant's Singapore application under Trade Mark No 40201605065Y is in Classes 17, 19 and 20 in respect of the following goods:

(a) Class 17: Sealing rings; casings for pipes, not of metal; junctions for pipes, not of metal; plastic pipes; plastic board; plastic poles; plastic strips; flexible tubes, not of metal; clack valves of rubber;

(b) Class 19: Rigid pipes, not of metal; water-pipes, not of metal; rigid pipes for building, not of metal; plastic ducts used in construction; drain traps or valves, not of metal or plastic; water pipes, not of metal; water-pipe valves, not of plastic or metal; building materials, not of metal; reinforcing materials, not of metal, for building; and

(c) Class 20: Clips for cables and pipes, not of metal; valves, not of metal, other than parts of machines; water-pipe valves of plastic; drain valves of plastic; fiber reinforced plastic...