Criminal proceedings halted by revocation action

Singapore

In Polykwan Trading Co v BlueStar Exchange (Singapore) Pte Ltd (PSS 687 & 689 2002), the Magistrates' Court has allowed the defendant's application to stay criminal proceedings pending the outcome of its action to revoke the trademark at the centre of the criminal prosecution. The case highlights the potential complications faced by trademark owners wishing to initiate criminal prosecution proceedings against a suspected infringer.

Polykwan commenced criminal proceedings in the Magistrates' Court against BlueStar for the alleged criminal infringement of Polykwan's BLUE STAR mark and logo. In the course of the criminal proceedings, BlueStar applied to the High Court to revoke the BLUE STAR mark and logo pursuant to Section 22 of the Trademarks Act 1998. As revocation proceedings under Section 22 may only be heard by the High Court or the registrar of trademarks, BlueStar made an application to the Magistrates' Court to stay the criminal proceedings pending the outcome of its revocation action.

The Magistrates' Court noted that there was no precedent in Singapore that dealt with the question of whether a stay could be granted in such circumstances. It therefore referred to Regina v Johnstone from the UK Court of Appeal (for background information, see Crown to prove civil infringement before criminal offences). In that case, the court stated that in principle there should be no objection to staying criminal proceedings where the validity of a mark was challenged since it was likely that such a challenge would be launched very early in the life of the prosecution. However, it also noted that the criminal court should have a discretion "to refuse an adjournment where the challenge was proceeding slowly or had been started late or on obviously frivolous grounds".

Having taken the UK court's ruling into consideration, the Magistrates' Court decided to grant the application to stay the criminal proceedings.

Jeffrey Lim, Shook Lin & Bok, Singapore

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