In more detail
Chua Beng Hock ("Applicant") had brought two applications against FM Skincare Pte Ltd ("Respondent") in relation to two trademarks:
- A trademark opposition against an application to register the composite mark
in classes 3 and 44 (40202127857S) ("Composite Mark").
- An application for a declaration of invalidity in respect of the registered word mark
in classes 3 and 44 (40202127856Q) ("Word Mark").
The Applicant's case was on the basis that he enjoyed certain rights to control the registration "Face of Man", as he was a former owner and cofounder of the first "Face of Man" skincare salon and had been involved in the business for several years.
The Applicant's brother was a director and shareholder of the Respondent. The Applicant had also been a director and shareholder of the Respondent but had resigned and sold his shares years prior to the Respondent's application to register the Composite Mark and the Word Mark.
Pleadings
The grounds of invalidation against the Word Mark and the grounds of opposition against the Composite Mark overlapped but were not identical.
The common grounds of challenge for the opposition and invalidation application were "bad faith" and "passing off." These grounds were linked by the contention that the Applicant was primarily or largely responsible for building up goodwill in connection with the "Face of Man" business, such that the Applicant therefore had the right to stop the registration of the Composite Mark and Word Mark, which were applied for without his consent.
The Applicant also raised the ground of copyright in relation to the opposition application and, in relation to the invalidation application, the ground of protecting trademarks well known to the relevant sector of the public in Singapore.
The PAR ultimately found in favor of the Respondent, holding that the Applicant had failed on all grounds.
1. Passing off
For passing off to be found, there must be (a) goodwill, (b) misrepresentation and (c) damage.
In relation to goodwill, the PAR adopted the position in the Chancery Decision of the English High Court in Gromax Plasticulture v. Don & Low Nonwovens Ltd [1999] RPC 367 that co-owners of goodwill could not bring an action of passing off against one another.
Though the Applicant tried to establish himself as the sole owner of the goodwill by asserting that he had been the sole founder of the "Face of Man" business and had retained control and ownership of the brand throughout, the PAR found that the Applicant was at best a joint or co-owner of goodwill.
2. Bad faith
Bad faith examines whether dealings could be considered commercially unacceptable by reasonable and experienced persons in a particular trade.
The Applicant argued that he had developed and owned the goodwill of the "Face of Man" business and the Respondent was attempting to usurp this goodwill for itself in attempting to register the marks. On the grounds of his earlier finding that the goodwill was jointly owned, the PAR found that the Respondent, in attempting to protect its goodwill by registering the marks, was not acting in a manner that was commercially unacceptable and thus dismissed the ground of bad faith.
3. Copyright
The Applicant had asserted the ground of copyright by arguing that he had altered the initial composite mark (which was designed by a graphic designer) to reach the final form of the Composite Mark, which the Respondent was trying to register.
Relying on the principle that copying, enlarging or resizing an artistic work will only make the resulting image a work protected by copyright if the changes made were material, the PAR found that the initial composite mark belonged to the Respondent, and the changes made by the Applicant were insufficient to invoke a copyright in his favor. The PAR hence dismissed this ground.
4. Well-known trade marks
The Applicant also invoked the ground protecting well-known trademarks by asserting that he was the lawful owner of the "Face of Man" mark that was well known in Singapore.
The PAR first noted that invoking this ground in this context was unusual, as the ground is typically used when a well-known mark with some reputation and fame in a business conducted overseas is used by a nonrelated entity in Singapore.
The PAR relied on the principle that the ground can only succeed if the same test for ownership of goodwill applied earlier in the passing off ground was successful, and as the parties were associated there was no danger of inaccurate association.
Key takeaways
The decision addresses a particular question on the rights of co-owners of goodwill against one another. It has been clarified that co-owners, unless they have developed their own independent goodwill, cannot rely on the ground of passing off based on their commonly owned goodwill. The importance of goodwill is also underlined in this decision as the finding of co-ownership of goodwill was a common thread used by the PAR to reject three out of the four grounds raised by the Applicant.
The PAR notably also warned future applicants to join as claimants every company with a plausible claim to the goodwill affected. This is to avoid a situation such as in this case where the PAR found that the rights of FOM Pte Ltd ("FOMPL"), the original business between the brothers, were inappropriately invoked as FOMPL was not a party to the proceedings. In the course of the proceedings, the Applicant had in some instances relied on FOMPL's goodwill to support his position.
