BLUE STAR revocation action fails

As recently reported by World Trademark Law Report, the case of Polykwan Trading Co v BlueStar Exchange (Singapore) Pte Ltd (PSS 687 & 689 2002) was stayed by the Magistrates' Court pending the outcome of the defendant's action in the High Court to revoke the trademark at the centre of the criminal prosecution (see Criminal proceedings halted by revocation action). The criminal trial has now resumed because the High Court has rejected the defendant's application for revocation (Case 2003 SGHC 169).

Polykwan commenced criminal proceedings in the Magistrates' Court against BlueStar, a subsidiary of Giordano International Ltd, for the alleged criminal infringement of Polykwan's BLUE STAR mark and star device. In the course of the criminal proceedings, BlueStar applied to the High Court to revoke the BLUE STAR mark and device on the grounds of non-use pursuant to Section 22 of the Trademarks Act 1998.

BlueStar was selling apparel under the marks BLUESTAR and BLUESTAR EXCHANGE. Both marks usually featured a star device. There was undisputed evidence that while Polykwan had not used the mark in its registered form, (which showed the star device above the term 'Blue Star'), it had used variants of the mark. It had, for example, used a variant of the mark where the star device was next to, and not above, the term 'Blue Star', and where the star device was smaller than that in the registered mark.

The critical issue before the High Court was whether such variant use fell within Section 22(2) of the act, which provides that use of a mark includes "use in a form differing in elements, which do not alter the distinctive character of the mark in the form in which it was registered".

BlueStar sought to rely on In re Anheuser-Busch Inc ([2002] RPC 38), a decision from the UK High Court. In that case, the UK equivalent of Section 22(2) of the Singapore Trademarks Act (Section 46(1) of the UK Trademarks Act 1994) was interpreted narrowly. The UK High Court held that it was first necessary to determine the distinctive character of a mark before deciding if any alteration to the elements making up that mark (which, in combination, contribute to its distinctive character) were sufficiently immaterial so as not to alter its overall distinctive character. BlueStar argued that the distinctiveness of Polykwan's mark was based on the exact layout of the registered mark and logo (ie, the star above the term 'Blue Star') and the size of the registered star device. Polykwan's variant use, said Blue Star, could not be described as 'use' pursuant to Section 22(2).

The High Court rejected BlueStar's argument and dismissed its application for revocation. It found that the distinctive character of Polykwan's mark lay in the combination of the words 'Blue' and 'Star', and not the star device. Thus, alterations in the use of the star device (eg, use of a smaller star device or its use in a different location) did not alter the distinctive character of the mark.

Penny Leng, Drew & Napier LLC, Singapore