Yomeishu Seizo Co Ltd and Another v Sinma Medical Products (S) Pte Ltd

• Jurisdiction: Singapore
• Judge: Chan Sek Keong J
• Judgment Date: 01 February 1991
• Neutral Citation: [1991] SGHC 21
• Date: 01 February 1991
• Subject Matter: Whether the use of the words 'yang ming jiu' (in Chinese characters) by the defendants to describe their Chinese wines infringed the plaintiffs' registered mark 'yang ming jiu Yomeishu' (bearing the same Chinese characters) for Japanese wine,Passing off,Tort,Whether defendants' mark bore such similarity to first plaintiffs' trade marks that public would be deceived or confused into believing that defendants' business was associated with or connected to first plaintiffs' business,Infringement,Trade Marks and Trade Names
• Docket Number: Suit No 108 of 1990
• Published date: 19 September 2003
• Defendant Counsel: Brian Ghows and Anita Fam (Khattar Wong & Partners)
• Court: High Court (Singapore)
• Plaintiff Counsel: Jimmy Yim and Lau Kok Keng (Donaldson & Burkinshaw)

This is a motion by the plaintiffs for an order to restrain the defendants until trial or further order from selling, offering for sale, importing distributing, or dealing with in any manner wine or medicated wine products bearing the mark or name `` and/or `Yangmingjiu` which have no connection in the course of the plaintiffs` trade, and an ancillary order for delivery up to the plaintiffs for their safe custody any such wine or medicated wine products.

In the statement of claim, the plaintiffs have pleaded that they are the registered proprietors in Singapore of the trade mark (the registered mark) consisting of ` Yomeishu` which is registered as (i) TM No 1400/80 in Part A of the Register from 5 April 1980 in Class 5 in respect of wines, spirits (beverages) and liqueurs, all being medicated, and (ii) TM No 1401/90 in Part A of the Register from 5 April 1980 in respect of wines (with the exception of medicated wines) and spirits (drinks). The registered mark is current and subsisting.

In this action, they claim that the defendants have infringed the registered mark in selling a medicated wine (the Chinese wine) under the name `Chinese Yangmingjiu` or ``. Alternatively, they also claim in passing-off. The second plaintiffs are the sole importer and agent in Singapore of the first plaintiffs in respect of their medicated wine. They claim an interim injunction in terms I have set out.

The material facts are as follows. The first plaintiffs claim that their predecessors in title have been selling since 1602, a unique medicated wine (which I shall refer to as the Japanese wine) known by the Japanese/Chinese written characters as `` or phonetically as `Yomeishu` if the characters are read in Japanese, or known phonetically as `Yangmingjiu` if the characters are read in Mandarin. I shall refer to this wine as `the Japanese wine`. They have produced in evidence a document dated March 1813 which referred to the Japanese wine as ``.

The first plaintiffs say that the Japanese wine has been imported into and sold in Singapore since 1970 and advertised since 1973.

In March 1981, the defendants started importing and selling the Chinese wine under the `Huang He Lou ` (Yellow Crane Tower) brand which was manufactured in China by Huangshi Drink Factory of Hubei Province, and exported to Singapore by an organization known as China National Native Produce and Animal By-Products Import and Export Corp, Hubei Native Produce Branch. The Chinese wine was imported into Singapore in bottles each bearing a label with the English words `Chinese Yangmingjiu` and below them the Chinese characters ``. In between, in smaller letters were the words/characters for the brand name. The bottles were sold in boxes also containing all these features, with the words/characters in gold against a red background.

The defendants obtained exclusive distribution rights to the Chinese wine under an agreement dated 22 September 1981. They then began to advertise the Chinese wine in the Chinese newspapers in Singapore, as a result of which the first plaintiffs came to know of the competition from the Chinese wine.

On 7 July 1981, M/s Donaldson & Burkinshaw (D & B), the first plaintiffs` solicitors, wrote to the defendants and, after stating that the word `Yomeishu` had been registered as a trade mark in Class A since 1970 and that they had pending applications for ` Yomeishu` in Class B for medicated wines, claimed that they had the exclusive right to the use of the characters `` which were the `Chinese phonetic equivalent of our ... registered trade mark `Yomeishu``, and that `these characters have through long use and extensive advertising come to be associated in the mind of the trade and public exclusively with our clients` herbal tonic or wine and none other`. They threatened to institute legal proceedings unless the defendants ceased their business in respect of the Chinese wine.

The defendants replied on 22 July 1981 that the Chinese characters meant `life preserving/prolonging wine` and were therefore ordinary descriptive words which could not have become associated exclusively with the Japanese wine. The defendants refused to comply with the first plaintiffs` demand, saying that they would reserve the right to object to the registration of the said characters as a trade mark. The defendants followed this up with their solicitors` letter of 4 October 1981 repeating the same stand.

On 22 May 1982, the first plaintiffs` solicitors informed the defendants that their clients were the registered proprietors of the mark in Part A in respect of the characters `` in Class 5 (Reg No 1101071) and Class 33 (Reg No 1101072) in the United Kingdom (UK), and that accordingly the mark would be treated as a distinctive mark and would be accepted for registration under the Trade Marks Act (Cap 332) (the Act). After pointing out that their clients had registered the phonetic equivalents of `YO` and `MEI` in Japan, Korea, Taiwan, Sarawak, Canada and the United States, they reiterated the threat of legal proceedings.

However, after obtaining registration in Singapore, the first plaintiffs ceased and desisted from threatening the defendants for a period of more than seven years. It was not until 15 August 1989 that D & B sent another `cease and desist` letter to the defendants in respect of the sale by them of the Chinese wine. The first plaintiffs have given a number of reasons for the period of inaction. I shall comment on it later when dealing with the balance of convenience. At this juncture, it may be convenient to consider how the first plaintiffs came to register `` as a trade mark in Part A of the United Kingdom Register.

Registration of `

` in the United Kingdom

On 29 August 1978, the first plaintiffs` trade mark agents, Wenping & Co (Wenping) instructed trade mark agents in Glasgow, M/s Fitzpatricks, to file applications to register the word `Yomeishu` in its transliterated form, `` in Class 5 and Class 33 under Part A of the Trade Marks Register. The word `Yomeishu` had already been registered as a UK mark in 1975. The applications were duly filed on 5 September 1978 and on 13 December 1978, the registrar requested a transliteration of the characters and the meaning thereof. On 18 December 1978, Fitzpatricks passed this request on to Wenping but omitted to ask the meaning of the characters. On 11 January 1979, Wenping replied that the Chinese characters were a phonetic equivalent of `Yomeishu`, but did not say whether they had any meaning. Fitzpatricks relayed the information to the registrar on 1 February 1979. On 16 May 1979, the registrar notified Fitzpatricks that the applications, if they proceeded, should be treated as associated trade marks with the mark `Yomeishu` already registered under Reg Nos 1034710 and 1034709, that the applications be amended as indicated (in the reply) and the registrations be endorsed (the endorsement) with the following clause:

The transliteration of the Japanese characters of which the mark consists is `Yomeishu` which has no meaning.

By a letter dated 18 May 1979, Fitzpatricks notified Wenping of the registrar`s conditions and said that they would proceed to confirm the acceptability of the amendments. They however appeared to have, again, omitted informing Wenping of the terms of the endorsement. Eventually, on 6 September 1979, Fitzpatricks forwarded to Wenping photocopies of the advertisements of the marks in the O fficial Journal of 5 September 1979, which advertisements contained the endorsement required by the registrar.

Registration of `

Yomeishu` in Singapore

On 14 March 1980, Wenping instructed D & B to register the words ` Yomeishu` in Singapore in Part B of the register for wines in Class 5 and Class 33. The following specific instructions were given:

These new applications are to be filed in Part B of register. Our clients are now preparing evidences of use to establish the distinctiveness of the marks, which will be sent to you when the registrar requires. Points to bear in mind that our clients do want to avoid the deletion of Chinese equivalent like their pending applications` case.

The applications were duly filed on 5 April 1980. On 14 November 1981, D & B informed Wenping that the registrar had requested the filing of evidence of long and substantial use of the mark in Singapore. Such evidence was never filed, as on 8 January 1982, D & B informed the registrar that `` had been registered in Part A of the Register of Trade Marks in the United Kingdom and requested that the application be amended to Part A. On 16 October 1982, D & B informed the first plaintiffs that the registrar had accepted the mark for advertisement on the following terms:

In accepting the mark for advertisement, the registrar has imposed the following disclaimer:

`The transliteration of the Japanese characters appearing in the mark in `Yomeishu` which has no meaning.`

In addition, this mark is to be associated with No 77516 and others.

Kindly confirm that the afore-mentioned conditions are acceptable to you.

As the registrations were advertised in the Government Gazette on 29 April 1983 (Class 5) and on 5 August 1983 (Class 33), the presumption must be that the first plaintiffs did accept the registrar`s conditions.

Action for infringement

The plaintiffs` case in infringement is based on the registered mark. As registration gives prima facie validity (s 47 of the Act), they should be entitled to an interim injunction to restrain the defendants from infringing their mark in using and continuing to use the works `` to describe the Chinese wine. They also rely on s 48 which gives, after seven years, conclusive validity to the mark `in all respects`. The defendants` case, in so far as this motion is concerned, is that, inter alia, the first plaintiffs` original UK registration was obtained by fraud, and therefore the registration in Singapore was not conclusive against the...