Region: Singapore

Plaintiff obtains cancellation of competitor’s mark, but fails to establish goodwill

In <I>Al Mahamid v Global Tobacco Manufacturers (International) Sdn Bhd</I>, the High Court has held that a trademark for cigarettes was invalid on the ground that it was similar to an earlier mark registered for identical goods. An interesting aspect of the decision was the court's comments in relation to passing off, as there is some concern that the court may have raised the test for proving goodwill to a level that is unduly onerous for potential plaintiffs.

30 April 2015

Health supplements company invalidates tea shop chain's mark based on passing off

Health supplements company Redsun Singapore Pte Ltd, the owner of the trademark RED SUN in Class 5, has successfully obtained the invalidation of the mark RED SUN TEA SHOP in Class 30 based on passing off. Among other things, the registrar found that Redsun’s goodwill in the RED SUN mark extended to tea products.

11 February 2015

Nestlé's two and four-finger Kit Kat shape marks held to be invalid

In <I>Société des Produits Nestlé SA v Petra Foods Ltd</I>, the High Court has held that Nestlé’s trademark registrations for the shape of its two and four-finger Kit Kat bars were invalid. Among other things, the court found that the average consumer would not assume that the shapes indicated trade origin without being educated that they were of trademark significance.

05 February 2015

Lower degree of protection for trademarks consisting of common names

In <I>Taylor, Fladgate & Yeatman Limited v Taylors Wines Pty Ltd</I>, the IPOS has dismissed an opposition against the registration of two TAYLORS WAKEFIELD marks for wines in Class 33, finding that there was no likelihood of confusion with the earlier mark TAYLOR'S for identical goods. The decision reiterates the principle that trademarks consisting of common names and/or words of low distinctiveness are conferred a lower degree of protection.

24 November 2014

Unprecedented amount of statutory damages for trademark infringement awarded

In <I>Converse Inc v Ramchandani</I>, the High Court has awarded Converse an unprecedented sum of S$100,000 - the maximum amount of statutory damages under Section 31(5) of the Trademarks Act - for infringement of its CONVERSE mark. There seems to be an inherent tension in the decision: on the one hand, it requires plaintiffs to adduce sufficient evidence of their loss, while on the other, it accepts that plaintiffs may be unable to provide such evidence.

15 September 2014

New Geographical Indications Act passed by Parliament

The Geographical Indications Act has been passed by Parliament. The new act will repeal and re-enact with amendments the existing act, and amendments will be made to the Trademarks Act. The new act will introduce the following features into the GI regime: a registration system; the extension of the enhanced level of protection currently available only for wine and spirits to all registered GIs; and access to enhanced border enforcement measures for owners of registered GIs.

12 June 2014

Registrar allows cross-examination of witness in cancellation proceedings

In <I>PT Eigerindo Multi Produk Industri v Sports Connection Pte Ltd</I>, the registrar has deviated from the default rule and allowed an application for cross-examination of the applicant's witness in cancellation proceedings. The registrar held that, in view of the serious nature of the applicant’s bad-faith claim, the prejudice to the mark owner justified the exercise of her discretion to allow the cross-examination of the applicant’s deponent.

11 April 2014

Good-faith mistake may not be sufficient for registrar to grant extension of time

In <I>V Hotel Pte Ltd v Jelco Properties Ltd</I>, the registrar has rejected a request for restoration of a trademark application and extension of time to file evidence in opposition proceedings. The registrar held that a good-faith mistake, <I>per se</I>, may not be sufficient for the registrar to exercise his discretion to grant an extension of time. There must be some extenuating circumstances to explain the oversight or delay.

28 March 2014

How Singapore’s PTO is harnessing art to take pro-IP message to the masses

This week <i>World Trademark Review</i> was the first media outlet to receive a sneak preview of the Intellectual Property Office of Singapore’s (IPOS) new service centre, which opens next month and is designed to serve both IP novices and experts. To attract the former, it has placed an emphasis on artistic creation and will use art installations, band performances and photography exhibits to entice the public to learn more.

27 March 2014

Court of Appeal issues landmark decision on likelihood of confusion assessment

The Court of Appeal has released its ruling in <i>Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts</i>, which is probably the most important IP decision of 2013. The court considered two key issues in relation to the assessment of the likelihood of confusion – namely, whether there is a difference in approach between opposition proceedings and infringement proceedings, and whether extraneous factors are relevant.

07 January 2014

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