The Court of Appeal decides

Ravi, Sugu and Vicki appeared and successfully defended the registration of an important Chinese trademark in the Singapore Court of Appeal; the mark was first used in the fifties and spanned China’s transition from a centralised, government-controlled economy to the modern, market-driven economy of today. The mark is reproduced below and was registered in Singapore for cordyceps, a traditional Chinese herbal medicine.

In a 137-page judgment (which may be viewed here), the court of three judges made the following important rulings:

1. The contention that a registered mark does not actually function as a trade mark should not be considered in a revocation based on non-use as it is not relevant to the question of whether or not a mark has been used but pertains instead to the effect of the use of mark.

2. The mere fact that a mark is popular or even the only one in the market does not ipso facto render the mark generic and undeserving of protection.

3. In assessing whether a mark possesses the requisite capacity to distinguish so as to constitute a trade mark, one should look only at the inherent features of the mark, and not the use of it. In this connection, the Court of Appeal expressly adopted the Philips approach [1999] RPC 809 as opposed to the Bach approach [2000] RPC 513 which the lower court had followed.

4. The court adopted the modified Ajit Weekly [2006] RPL 25 combined test for bad faith i.e. not only must the actions of the registered proprietor fall short of the normally accepted standards of commercial behaviour, but the said proprietor knew of facts which would cause an ordinary, honest person to realise that such standards were being breached.

5. Fraud and/or misrepresentation in the registration of an assignment does not invalidate the original registration of the trade mark.

6. Once the grounds of invalidation or revocation are made out, the court does not have any residual discretion not to so invalidate or revoke.

7. A civil court should not exercise its discretion to grant a declaration of non-infringement where criminal proceedings for an offence under the Copyright Act have already been initiated.

The Court of Appeal also took the opportunity to comment on the fact that while the criminal prosecution of offences under the Trade Marks Act takes place in the Subordinate Courts, an attack on the registration by the accused person could only be initiated in separate proceedings in the High Court. This state of affairs under our laws is unsatisfactory as it resulted in a duplicity of proceedings. The court stated that in future such proceedings i.e. the criminal prosecution and the attack on the registration should be consolidated so that both matters could be heard expeditiously by the same judge.

Citation : Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal [2009] SGCA 9