Singapore Court of Appeal Considers Revocation and Invalidation Provisions in the Trade Marks Act

03 July 2009

Ankur Gupta

The Court of Appeal (“CA”) in the recent case of Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Anr [2009] SGCA 9 decided on various issues surrounding trade mark revocation and invalidation.

The case involved a tussle over a mark bearing a picture of a rooster within a stylised flower border, registered in Singapore, in respect of cordyceps (“Registered Mark”). Qinghai Medicines & Health Products Import and Export Corp of Qinghai, China (“Qinghai Meheco”) was the proprietor of the Registered Mark since 1995. In 2003, Qinghai Meheco assigned ownership of the Registered Mark to Qinghai Xinyuan Foreign Trader Co (“First Defendant”).

The current action was commenced in the High Court (“HC”) by Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd (“Plaintiff”). This action was a counterstrike to a raid conducted on the Plaintiff’s premises by the 1st Defendant’s exclusive licensee, where cordyceps bearing alleged counterfeits of the Registered Mark were seized. 

The Plaintiff argued, inter alia, that:

  • the Registered Mark should be revoked because it had become a common name in the trade due to the proprietor’s acts or inactivity;

or

  • the Registered Mark ought to be invalidated because it had become customary in the current language or in the bona fide and established practices of the trade. 

Criminal proceedings were concurrently underway against the Plaintiff in the subordinate courts for copyright infringement. Before the HC and the CA, the Plaintiff sought a declaration that the copyright in labels bearing the Registered Mark, which was the subject matter of the charges in the criminal proceedings, was not owned by the First Defendant. The question arose before the CA as to whether the Plaintiff was entitled to such a declaratory order. The concern was whether criminal proceedings could be prejudiced by the civil court deciding on a matter forming the subject matter of criminal proceedings. 

Revocation

In the HC, the Plaintiff argued that the Registered Mark ought to be revoked because it had become a common name in trade for the product for which it was registered.  Their assertion was that by virtue of long use of the Registered Mark in China it had become commonly known by both traders as well as customers in Singapore as denoting cordyceps from China and thus could not serve as an indicator of any particular trader or source.  Under the Trade Marks Act, a party may apply for revocation of a registered trade mark if it can satisfy any of the several grounds under Section 22. In the present case, the Plaintiff relied on Section 22(1)(c) of the TMA which reads as follows: 

Section 22(1)(c):

22—(1) The registration of a trade mark may be revoked on any of the following grounds:

  • that, in consequence of acts or inactivity of the proprietor, it has become the  common name in the trade for the product or service for which it is registered;”   

The HC refused to revoke the Registered Mark. It held that section 22(1)(c) would  only apply if the trade mark had become a household name in trade after the registration and that the cause of it becoming so must be an action or omission of the proprietor. If it was already customary in trade prior to registration then that could not be attributed to any action or inaction of the proprietor.

The CA arrived at the same conclusion as the HC, but adopted different reasoning in doing so. The CA examined the evidence adduced by the Plaintiff and concluded that it was insufficient to establish that the Registered Mark had become customary in trade. Several examples of “generic” marks were cited and analysed. The CA opined that the mere fact that a mark was popular for a particular product did not automatically imply that it was generic.  The CA examined numerous English common law authorities to ascertain the meaning of the term “customary”, and arrived at the conclusion that each case turned on its own facts. The CA highlighted examples of registered and long subsisting trade marks such as Xerox, Kleenex, Kiwi and Perrier, all of which had become household names for certain types of goods, but nonetheless retained their capability to distinguish and were not generic. The challenge was for a plaintiff to compile a sufficiently convincing body of evidence to bolster its case, which the Plaintiff had failed to do so in the present case.

Invalidation

The Plaintiff also argued that the Registered Mark ought to be invalidated as it should not have been registered under section 7(1)(d) of the TMA, and therefore could be invalidated under section 23(1) of the TMA. Sections 23(1) and 7(1)(d) of the TMA, provide, in relevant part, as follows: 

Section 23(1):

23. —(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 7.” 

Section 7(1)(d):

7 —(1) The following shall not be registered:

  • trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.”

As regards the requirement of customariness, the CA found little authoritative guidance on what the phrase “customary in the current language or in the bona fide and established practices of the trade” in section 7(1)(d) of the TMA meant. It analysed whether the Registered Mark was capable of distinguishing the Plaintiff’s cordyceps from other undertakings.  

The CA reviewed the UK authorities on the meaning of “customary”, and concluded that the word “customary” meant that the mark had become generic amongst the general public or amongst the trade. The CA found that in the instant case, the Registered Mark had not become generic. Even though the words “rooster brand cordyceps”, “rooster mark cordyceps” or “rooster cordyceps” were understood to refer to Chinese cordyceps (supplied by the First Defendant or other Chinese sources), the “Rooster” device by itself did not have that effect.

Discretion to Revoke and/or Invalidate

The CA also considered the issue of whether there was any discretion under TMA not to revoke or invalidate a registration if the criteria for revocation or invalidation had been met.

The HC judge arrived at the conclusion that such discretion lay with the court because the language of relevant provisions under the TMA was such that it could be read as bestowing discretion.

Disagreeing with the HC, the CA’s view on this issue was that no residual discretion could be interpreted from the language of the relevant sections of the TMA. They arrived at this conclusion by considering the legislative intent of the TMA.

Concurrent criminal and civil proceedings

Criminal proceedings were concurrently underway against the Plaintiff in the subordinate courts for copyright infringement. Before the HC and the CA, the Plaintiff sought a declaration that the copyright in labels bearing the Registered Mark, which was the subject matter of the charges in the criminal proceedings, was not owned by the First Defendant. 

The CA considered whether a civil court had jurisdiction to grant a declaration in respect of criminal consequences of conduct. The CA observed that a civil court did have such jurisdiction, although it would normally be slow to do so unless the circumstances were exceptional.  

Elaborating on the meaning of “exceptional circumstances”, the CA said that such exceptional circumstances would arise, inter alia, where the criminal proceedings had not been properly brought or were vexatious or amounted to an abuse of process, in that the facts alleged by the prosecution did not in law prove the offence charged. The CA therefore did not grant the Plaintiff the declaratory order it sought.

The CA added that for future cases, parties ought to agree to consolidate all concurrent related proceedings in the HC so that those proceedings may be heard expeditiously by the same judge. The prosecuting party in such cases ought to have requested that the criminal proceedings be moved to the HC because the subordinate courts were not empowered to hear applications for revocation and/or invalidation of the trade mark registrations.

Conclusion

Set out below is a summary of some points to take away from this case:

  • It is not easy to establish that a mark has become “customary in trade”. The fact that a mark is popular does not mean that it is generic.

  • There is no discretion under the TMA not to grant relief where the grounds for revocation and/or invalidation have been made out.

  • If there are concurrent civil and criminal proceedings in the subordinate courts and the HC, parties ought to agree to consolidate both sets of proceedings in the HC.