Key takeaways

Importance of proper pleadings

• A preliminary issue in dispute was the issue of the marks that the opponent could rely on in the opposition. The opponent intended to rely on its registered and unregistered trademarks, but its pleadings referred only to its registered trademark in Singapore.
• The hearing officer eventually allowed the opponent to rely on its common law rights in its unregistered marks. The saving grace was that the opponent had made some reference to its unregistered marks in its statutory declarations.
• Nonetheless, the hearing officer commented that "there was much left to be desired in the manner of the opponent's pleadings", and that the "opponent's case could probably have been better and more clearly pleaded."
• This is a timely reminder for all parties, whether opponent or applicant, to ensure that pleadings are properly particularised. Should there be any ambiguity, parties should err on the side of caution and consider applying to amend one's pleadings, to avoid having one's case defeated on a technicality.

Importance of proper evidence

• One of the opponent's grounds of opposition was that its unregistered trademarks are well known in Singapore, and use of the Applicant's mark would indicate a connection between the applicant's goods and the opponent, and is likely to damage the opponent's interests.
• The opponent argued that its unregistered marks are well known in Singapore based on the opponent's duration, extent, geographical area of use and promotion of its marks, as well as the worldwide registrations of the marks.
• The hearing officer found several gaps in the opponent's evidence such as, for example, that "there was often a generic reference by the opponent to its various Charlotte related marks, without clearly distinguishing which specific mark the evidence related to"; that photographs adduced were undated; that it was not clear whether promotional materials adduced were used in Singapore at all; and that it was not clear how sales figures were derived.
• Eventually, the hearing officer found that the evidence adduced was insufficient to establish that the trademarks are well known in Singapore, and that ground of opposition failed.

In more detail

The opponent, Charlotte Pipe and Foundry Company, is an American company founded in 1901 and in the business of manufacturing pipes and fittings for plumbing and industrial systems. It owns the registered trade mark "CHARLOTTE PIPE" in Singapore in Class 6, covering cast iron pipes and fittings therefor. It also claims to be the owner at common law of various unregistered "Charlotte" related trade marks, including "CHARLOTTE" and " ".

The applicant, Yitai (Shanghai) Plastic Co., Ltd., is a company based in China and established in 2001. It is in the business of manufacturing and supplying products such as plastic valves, fittings, production, design and development of industrial piping systems for both domestic and international markets. The applicant asserts that it has been using the mark and has obtained registrations for the mark in various countries, including China, South Korea and Vietnam.

The opponent put forward three grounds of opposition:

• The applicant's mark is similar to the opponent's earlier trademark, which is to be registered for identical or similar goods, and there exists a likelihood of confusion on the part of the public.
• The Applicant's mark is identical with or similar to the Opponent's earlier trademark, which is well known in Singapore. Any use of the Applicant's mark would indicate a connection between the Applicant's goods and the Opponent, and is likely to damage the Opponent's interests.
• Use of the Applicant's mark in Singapore is liable to be prevented by virtue of the law of passing off.

The opposition succeeded only on the final ground.

• The hearing officer was satisfied that the evidence adduced was sufficient to demonstrate that the opponent had goodwill to seek relief in Singapore for the tort of passing off, even though the same evidence was insufficient to establish that the opponent's marks were well known in Singapore at that time. The hearing officer made such a finding on the basis of the opponent's sales revenue in Singapore, which, although it "may not have been very large", was "not insignificant and definitely not negligible".
• The hearing officer also found that the element of misrepresentation was made out, drawing an inference that the applicant had deliberately copied from the opponent's unregistered mark. The applicant had offered no explanation, although it had an opportunity to, on how it derived its mark independently. The hearing officer found this "curious as the lack of explanation offered no insight as to why a China-based company would use an English word for its products and which word had no similarity with or bearing on the Applicant, or why the design of the Applicant’s mark came to be so similar to part of a trade mark used by the Opponent."
• The hearing officer also found that with the applicant's deliberate misrepresentation, the opponent's goodwill would be adversely affected through a diversion of custom.

Baker McKenzie Wong & Leow is a member firm of Baker & McKenzie International, a global law firm with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a "partner" means a person who is a partner or equivalent in such a law firm. Similarly, reference to an "office" means an office of any such law firm. This may qualify as "Attorney Advertising" requiring notice in some jurisdictions. Prior results do not guarantee a similar outcome.