10

Singapore's Trade Marks Act turned 10 in January this year.

On 15 January 1999, an overhauled Act had come into force, enabling Singapore to meet the requirements of the TRIPS Agreement as well as the Paris Convention.

In celebration of this momentous occasion, the IP Academy is holding a discussion cum workshop conducted by Associate Professor Ng-Loy Wee Loon, law lecturer and author of "Law of Intellectual Property of Singapore". The issue du jour : distinctiveness in trade mark law. Happy for the opportunity for trade mark professionals to share, discuss and mingle, this writer has penciled this event (yes, the old-fashioned way) into her appointment book.

In the press

The cordyceps case was reported in the Lianhe Zaobao (联合早报) on Sunday.



For the uninitiated, "cordyceps" as defined by Wikipedia, is a genus of ascomycete fungi. What basically happens is this fungi (the most famous species out of about 400 others is called cordyceps sinensis) parasitizes ghost moth larvae in the winter. By summer, these larvae are completely killed and take on the appearance of dried herbs. Cordyceps have long been considered a precious ingredient in Chinese traditional medicines. It is believed that the benefits of consumption (usually boiled in soup) include improved lung and respiratory function. The Chinese name for the product is 冬 虫 夏 草 which literally means “winter worm summer grass”.

Ladies who lunch (and then some)

I am pleased to report that the franchising and licensing scene in Singapore is very much alive and kicking. Last week, I met Ms. Terry Wong, General Manager of the Franchising and Licensing Association (Singapore). Amidst talk about career histories and kids (always a great ice-breaker), Terry shed some light on the activities of the FLA and its tireless efforts in expanding and growing local businesses through franchising and licensing.

Over lunch at Ministry of Food, which Terry proudly announced was one of FLA's 170 members, I learnt that the government has been dishing out attractive subsidies to potential entrepreneurs. As a result, the FLA has never been busier; their courses are subscribed to the limit, and they now take more overseas trips to match their members with suitable foreign partners. All this over and above their participation in trade shows all over the world and of course the annual Singapore FLAsia Show in October 2009 (which I will be attending).

Terry's enthusiasm for what the FLA does was undeniable. And I suppose it is only natural, seeing that her work revolves around people driven enough to turn their dreams into reality. As we parted, I assured her of our firm's commitment to assist wherever we can ... at which point I remembered that we hadn't renewed our membership (!). No prizes for guessing what I did the minute I returned to the office!

MYCHEW not similar to HI-CHEW

Vicki represented a Korean company, Crown Confectionery Co., Ltd. in their application to register the mark MYCHEW in relation to inter alia “chewing candy” in Class 30, and succeeded in resisting an opposition on all grounds canvassed by Japanese competitors Morinaga Ltd. based on their series of marks consisting of the word HI-CHEW. The marks are reproduced below :-

The crux of parties’ arguments revolved around comparison of the marks. In applying the established principles that marks must be compared as wholes, and that visual, aural and conceptual aspects must be considered, the Registrar found that the marks were overall not similar :-

1. MYCHEW is not visually similar to HI-CHEW. The presence of the hyphen in HI-CHEW, the different beginnings in both marks (MY and HI-), the slant in MYCHEW all contributed to the "sea of visual differences" that virtually drowned out the common ending (CHEW) in the marks.
2. MYCHEW is marginally similar to HI-CHEW aurally. The Registrar veered away from the oft-cited “first syllable” principle, and instead considered where the natural stress falls in both marks. She also found that the vowel sounds and vowel order in the marks (AI-EW) were strikingly similar.
3. MYCHEW is not conceptually similar to HI-CHEW. The Registrar first identified the distinctive portion of the marks. Given that “chewing candy” was claimed by both marks, the Registrar found that the word “CHEW” was not likely to be taken as a distinctive feature. It was therefore the words “MY” and “HI” that consumers would pay attention to. As these simple English words had different meanings discernable to the general Singapore public, different conceptual impressions would be formed between MYCHEW and HI-CHEW.

Citation :
Crown Confectionery Co Ltd v Morinaga & Co Ltd [2008] SGIPOS 12

Panasonic defeats Pensonic

Sugu and Vicki represented Panasonic Corporation of Japan (formerly known as Matsushita Electric Industrial Co., Ltd) in an opposition in Class 9 and invalidation in Classes 7 & 11 of the mark set out below (“the PENSONIC mark”):

The PENSONIC mark was applied/registered in relation to household electronic goods, by Pensonic Corporation Sdn Bhd of Malaysia, and was not in use in Singapore. Panasonic Corporation had prior registrations for PANASONIC in classes 9, 7 and 11 for, inter alia, household electronic goods.

The opposition and invalidation succeeded.

The Registrar found PANASONIC to be well-known in Singapore based on the evidence presented. The PENSONIC mark was held to be similar to the PANASONIC mark owned by Panasonic Corporation and therefore, confusion would occur should the PENSONIC mark enter the Singapore market for identical goods.

An additional ground on which Panasonic Corporation prevailed in the opposition of the PENSONIC mark in class 9 was based on a then untested provision of the law, introduced on 1 July 2004, section 8(4)(a)(b)(i) of the Trade Marks Act which is applicable to well known marks. The Registrar held that since PANASONIC is a well-known mark to the relevant sector of the public and that a connection would be made between PENSONIC goods and PANASONIC goods, there would be a likelihood of damage to occur if PENSONIC was allowed to proceed to registration.

This is the first reported case where an opposition based on this new provision of the law succeeded.

Citations :

(i) Pensonic Corporation Sdn Bhd v Matsushita Electric Industrial Co. Ltd [2008] SGIPOS 9 (Opposition)

(ii) Matsushita Electric Industrial Co. Ltd v Pensonic Corporation Sdn Bhd [2008] SGIPOS 10 (Invalidation)

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