When is my mark not my mark?

Singtel, the biggest telco in Singapore, have been marketing and packaging their telecommunications and TV services under the mark mio since 2007. However, a Taiwanese party, Mitac, had registered a stylised version of the mark at the Singapore Registry earlier. Mio mean "my" in Italian. Mitac sued Singtel for infringement; the case is Mitac International Corporation v Singapore Telecommunications Ltd [2009] SGHC 137.

The Singapore High Court found that there was no infringement and held the following:

1. Mitac stylised mio was not identical to the Singtel mark notwithstanding that phonetically the marks are identical. In this regard, the court placed great weight on the fact that the Mitac mark was "highly stylised and distinctive." In the circumstances, it might be wise for proprietors of trademarks to register the block version of the mark rather than the mark as used otherwise they will face the same issues as Mitac did in this case. The problem, however, is where the block letter version cannot obtain registration for some reason or other.

2. If the court finds that the marks are identical, then there is no need to show a likelihood of confusion. However, where the court as in this case holds that the marks are not identical, then Mitac was weighed with the burden to show that there was a likelihood of confusion. In this regard and on the authority of the Polo case [2006] 2 SLR 690, an inquiry into the marketplace is relevant.

3. The court felt that there was no likelihood of confusion agreeing with the several reasons put forward by Singtel. The court went on to say that: "The marketing expenditure of and number of events [Mitac] participated in paled in comparison to [Singtel's], leading to the conclusion that it was unlikely that an average customer would think of [Mitac] at all when confronted with [Singtel's] trade marks."

4. If it is true that market power can affect the statutory rights afforded under the Trade Marks Act, then we are backing into the tort of passing off. In this case, the pervasiveness of Singtel in Singapore trumped Mitac's prior registration and weak marketing. One wonders what rights would be given to a mark which has not been used at all.

Citation : Mitac International Corp v Singapore Telecommunications Ltd and Another Action[2009] SGHC 137

David sues Goliath

Singapore's national broadcaster MediaCorp has been taken to court by an Internet start-up company RecordTV, for issuing groundless threats of legal action. In its defence, MediaCorp has filed a counterclaim for copyright infringement. Groundless threats are actionable under the Copyright Act, Trade Marks Act, Patents Act and Registered Designs Act.

As its name suggests, RecordTV's 2007-launched website allowed registered users to request recording of MediaCorp's free-to-air television programmes. In its opening statement in court, RecordTV said its service was merely an alternative to more traditional permitted means of recording television programmes at home, such as using a video cassette recorder or digital video recorder. The only difference was that RecordTV recordings were stored outside the user's premises. RecordTV has also contended that the recordings were made by its users, and not itself.

In reply, MediaCorp pointed to evidence gathered by its private investigators, which showed that unlike users of video cassette recorders, users of RecordTV's services had no control over functions such as recording and playback. Further, one of the private investigators had requested a 5-minute recording but received a 26-minute recording instead - this, MediaCorp suggested, was indicative that it was RecordTV and not the user that made the recordings.

Presided over by the Honourable Justice Andrew Ang, the 4-day hearing is slated to end today.

Interestingly, RecordTV stated that it bought the software from RecordTV USA. If this is the same RecordTV USA that the Los Angeles Federal court ruled against in 2001, then things do not look too optimistic for the start-up.

Singin' the Blues

Local singer-songwriter Tanya Chua's application for a declaration of copyright ownership was denied by the High Court in October 2008. The reasons for the judgment were released on 31 March 2009 as Ms. Chua had filed an appeal to the Court of Appeal.

In 2002, Ms. Chua had entered into an agreement with her music publisher, agreeing among other things to "irrevocably and absolutely assign, convey and grant to the Publisher (the music publisher), its successors and assigns all rights and interests of every kind, nature and description in and to the ... Compositions created by the Writer (Ms. Chua) during the term of this Agreement." In return, the music publisher was to exploit the songs composed by Ms. Chua for which she would receive royalty payments.

In 2005, a second agreement was entered into by the parties. This agreement purported to extend the obligations of the parties under the earlier agreement till 17 March 2007. Ms. Chua had an option to extend the validity of this second agreement past 17 March 2007. However, the second agreement also contained clauses that expressly stated that certain terms of the earlier agreement would survive 17 March 2007.

The basis of Ms. Chua's application was that since she had not opted for the extension past 17 March 2007, the copyright in her compositions would revert back to her. She also alleged that the music publisher had continued to exploit the compositions past 17 March 2007 without her consent.

The High Court Judge found that the music publisher was entitled to continue exploiting the compositions past 17 March 2007, as the second agreement specifically stated that this right would survive past the said date. Further, the Judge also noted that Ms. Chua had "appeared to have completely overlooked the fact that she would continue to be paid royalties (in perpetuity) by the defendant for the ... compositions that she had assigned to the company. It was not a situation where she was put into bondage by the defendant without any consideration or benefit to her."

Indeed, it would appear that this reeks a little of biting the hand that feeds. According to the music publisher, it had pulled Ms. Chua out of the realm of anonymity and helped her gain celebrity status. Ms. Chua has won several awards since 2006, including Best Female Singer and Best Album Producer at the Taiwan Golden Melody Awards.

Well, now that an appeal has been filed, I can't help but hear Mr. Kravitz's falsetto ringing in my head, going "it ain't over till (the 3 judges say) it's over".

Citation : Chua Chian Ya v. Music & Movements (S) Pte Ltd. [2009] SGHC 75

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