Pan-West hits hole-in-one with KATANA infringement claim

Singapore

In Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd ([2003] SGHC 250), the Singapore High Court has upheld an award of summary judgment in favour of the plaintiff - the owner of the Singapore registered KATANA GOLF mark.

Pan-West registered the KATANA GOLF mark and KG logo in Singapore for golfing goods in Class 28 of the Nice Classification. Grand Bigwin started importing a certain type of golf club (known as the 55ATi) bearing the trademark KATANA, which was registered in Japan by Umeda Shokai KK. The golf clubs were not made by Pan-West. Pan-West filed a complaint, alleging that Grand Bigwin's importation and sale of the KATANA-marked clubs infringed its rights in its trademark under Section 27 of the Trademarks Act 1998. Summary judgment was granted in favour of Pan-West and Grand Bigwin appealed.

Grand Bigwin raised defences under Sections 27(6) and 29(1) of the Trademarks Act. It contended that it should be allowed to use the KATANA mark because Section 27(6) notes that mark owners cannot prevent "the use of a registered trademark by any person for the purpose of identifying goods or services as those of the proprietor [...]". It then asserted that pursuant to Section 29(1):

"a registered trademark is not infringed by the use of the trademark in relation to goods, which have been put on the market, whether in Singapore or outside Singapore, under that trademark by the proprietor of the registered trademark or with his express or implied consent (conditional or otherwise)."

Grand Bigwin argued that Pan-West had given implied consent to use the mark in not objecting to the use or registration of the KATANA trademark in Japan by Umeda. Moreover, Pan-West had imported and sold goods bearing Umeda's KATANA trademark in Singapore.

The Singapore High Court rejected Grand Bigwin's defences and upheld the summary judgment award in favour of Pan-West. The court stated that the defence raised under Section 27(6) did not apply as it only relates to the use of a trademark for the purposes of identifying the goods as being those of the trademark owner. On the facts, Grand Bigwin was not using Umeda's KATANA trademark to identify the 55ATi golf club as a club manufactured by Pan-West.

The court also held that Section 29(1) precludes mark owners from using their proprietary rights to prevent (i) parallel imported goods from entering the country, or (ii) the subsequent sale of those goods. It, therefore, only applies where the goods at issue are genuine. Here, the court did not see any triable issue raised under Section 29 to justify the matter going for trial as the relevant products were not parallel imported goods manufactured by Pan-West.

Pearleen Loh, Alban Tay Mahtani & De Silva, Singapore

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