Singapore: Successful invalidation action by Shenzhen Meixixi Catering Management Co., Ltd against Heetea Pte. Ltd.

In brief

The Chinese company Shenzhen Meixixi Catering Management Co., Ltd ("Applicant") filed an invalidation action against the trade mark registration for ' ' in Class 30 ("Registered Mark") owned by Singapore company Heetea Pte. Ltd. ("Proprietor").

The Applicant succeeded on two out of the four grounds of invalidation relied upon, as discussed in more detail below.


Contents

In more detail

The Applicant relied on four grounds of invalidation as follows: 

  1. Earlier registered rights for its ' ' mark in Class 43, which is identical to the Registered Mark. Therefore, there exists a likelihood of confusion on part of the public
  2. Bad faith
  3. Earlier registered rights for its ' ' mark, which is a well-known mark
  4. Passing off and copyright infringement

The Applicant succeeded on grounds (1) and (2).

In summary, the Registrar held that the marks were overall identical, or at the very least highly similar, and that there is a close relationship/similarity between the goods and services. In this regard, the Registrar is satisfied that there is a likelihood of confusion.

In finding that ground (2) has been satisfied, the Registrar took into account the following:

  • The identity or high similarity between the marks and the "uncanny resemblance" between the Proprietor's getup and the Applicant's copyright work as shown below, which may assist in determining the Proprietor's state of mind on the registration date of its mark.
Applicant's copyright work Proprietor's getup

 

  • The sequence of events in the Proprietor's explanation strongly suggests that the Proprietor registered its mark in bad faith to simply hold the Applicant ransom or disrupt the Applicant's business.
  • The "uncanny resemblance" in the references made in the Applicant's and Proprietor's description of their respective business origins suggests that the Proprietor is taking advantage of the Applicant's goodwill and creating confusion among consumers.
  • The Proprietor's request that the hearing proceed without their attendance or filing written submissions or bundle of authorities, given the serious allegation of bad faith.

Given that the Registrar held that the Applicant succeeded on grounds (1) and (2), and the Proprietor made no submissions challenging the Applicant's assertions, the Registrar decided not to make any findings on the remaining two grounds of invalidation. Instead, the Registrar made some brief observations as follows:

  • In relation to ground (3), the Registrar took the view that the Applicant's assertion that evidence of the number of visitors (from Singapore) to China translate into exposure by the relevant public, to suggest that the mark is well-known, was not substantiated. Further, "ready access to the internet" does not necessarily translate into the Applicant's overseas marketing and promotional activities' exposure to the relevant public.
  • In relation to ground (4), it was unclear if the element of misrepresentation in a passing off action, which the Registrar states would entail a comparison between the Registered Mark and the Applicant's getup, will be made out. On this issue, the Applicant only submitted in its written submissions that misrepresentation would be made out on the basis that there is a likelihood of confusion between the marks. The Registrar felt that misrepresentation may not be made out on this basis in the present case, but did not elaborate further on this issue.
  • Further, while the Applicant owns a copyright registration for the '' image in China, the Registrar found it difficult to see how the registration would translate into the Applicant owning the copyright in the '' typeface alone. In order to show this, the Applicant would have to tender evidence to show the date of the creation of the '' typeface itself.

 

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