High Court uses discretion to maintain registration of ROOSTER

In Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd ([2008] SGHC 51, April 9 2008), the High Court has dismissed Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd's action for invalidation of the trademark ROOSTER for cordyceps (medicinal fungi).
Qinghai Xinyuan Foreign Trade Co Ltd owned the registered trademark ROOSTER for cordyceps in Singapore. In 2005 Qinghai Xinyuan, through its exclusive licensee in Singapore, applied for search warrants to seize Wing Joo's ROOSTER-branded goods on the grounds that the goods were counterfeit.
In response, Wing Joo sought to have the ROOSTER mark removed from the register under Sections 22(1) and 23(1) of the Trademarks Act. Wing Joo alleged, among other things, that ROOSTER was incapable of distinguishing Qinghai Xinyuan's goods from those of other traders at the time of application for registration. 
Section 23(1) provides that "the registration of a trademark may be declared invalid on the grounds that the trademark was registered in breach of Section 7".
Section 7(1) of the act reads as follows:
"The following shall not be registered:
 (a) signs which do not satisfy the definition of a 'trademark' in Section 2(1);
 (b) trademarks which are devoid of any distinctive character;
 (c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; or
(d) trademarks 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."
Section 2(1) of the act defines a ‘trademark’ as follows:
"any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”
The court held that the ROOSTER mark fell foul of Section 7(1)(a), as there was evidence that at the time of the application for registration, ROOSTER was used in Singapore on cordyceps of other suppliers. Therefore, ROOSTER was not a trademark, as it did not distinguish Qinghai Xinyuan's goods from those of other suppliers using the same mark.
However, departing from earlier authority, the court held that the word 'may' in Section 23(1) gave the court a discretion as to whether to invalidate a mark. On reviewing the facts and balancing the different interests of the parties, the court held that the status quo should be maintained and the registration of the ROOSTER mark should be continued.
Dedar Singh Gill and Paul Teo, Drew & Napier LLC, Singapore

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