}

29 May 2019

N.V. Sumatra Tobacco Trading Company v CTBAT International Co. Limited [2019] SGIPOS 8

In N.V. Sumatra Tobacco Trading Company v CTBAT International Co. Limited, NV Sumatra Tobacco Trading Company (“Applicant”) applied for a trade mark for tobacco products in Class 34 (“Trade Mark Application”). The Trade Mark Application was for a mark which comprised several elements including the English words “TRI HAPPINESS”, “PROSPERITY”, “WISDOM” and “LONGEVITY”, the Chinese characters “福”, “禄” and “寿”, and the fanciful and invented Chinese character “喜喜喜” (“Tri-Happiness Mark”).

CTBAT International Co. Limited (“Opponent”) had registered trade marks for the word mark “SHUANGXI” for tobacco products in Class 34, and opposed the registration of the Trade Mark Application on the sole ground that the Trade Mark Application was applied for in bad faith under section 7(6) of the Trade Marks Act. Section 7(6) of the Trade Marks Act provides that “A trade mark shall not be registered if or to the extent that the application is made in bad faith”.

The Applicant had an earlier trade mark registration for a mark which comprised the English words “TRI HAPPINESS” and the invented Chinese character
“喜喜喜” (“previous Tri-Happiness Mark”). The previous Tri-Happiness Mark was registered on 1 November 2007 and revoked in 2015 after the Applicant failed to defend a non-use revocation action commenced by the Opponent.

Facts

The Applicant and the Opponent had no prior business dealings with each other. The Opponent’s claim of bad faith was premised on several assertions. First, the Opponent alleged that the Applicant had a “track record” of applying for or registering other trade marks (unrelated to the Tri-Happiness Mark) in various jurisdictions for trade marks of other tobacco proprietors. The Opponent alleged that, by inference, the Applicant had also applied for the registration of the Trade Mark Application in bad faith. Second, the Opponent alleged that Applicant had failed to discharge its duty to make inquiries into the bona fides of the Tri-Happiness Mark before seeking registration, and that the Applicant had knowledge of third party registrations and use of similar marks in other jurisdictions. Third, the Opponent alleged that the Applicant did not have any present or fixed intention to use the Tri-Happiness Mark in Singapore, and had registered the Tri-Happiness Mark simply to “stockpile” it for use at some indeterminate time in the future.

Decision

The Principal Assistant Registrar (“PAR”) dismissed the opposition and allowed the Trade Mark Application to proceed to registration.

The PAR held that the Opponent had not made out a prima facie case of bad faith on the part of the Applicant by reason of the Applicant’s alleged “track record of applying to register other tobacco proprietors’ trade marks”. There was no evidence to support the Opponent’s allegation that the Applicant’s other trade mark applications were unauthorised, and even if there was evidence that the Applicant acted in bad faith in relation to other trade marks, it did not mean that the application for the Trade Mark Application was likewise made in bad faith. The PAR emphasised the importance of looking at the facts of the present case and the circumstances surrounding the Trade Mark Application before deciding what weight, if any, ought to be accorded to evidence of past behaviour.

The PAR rejected the allegation that the Applicant had not discharged its duty to investigate the bona fides of the Tri-Happiness Mark before seeking registration on the basis that the Applicant was relying on its independent right to register the Trade Mark Application. Hence, no duty was imposed on the Applicant to conduct trade mark searches before applying to register the Trade Mark Application. The argument that the Applicant had knowledge of third party registrations and use of similar marks in other jurisdictions, and had thus applied for the registration of the Trade Mark Application with that knowledge in bad faith, was also rejected.

The PAR was satisfied on the evidence that the Applicant had been using the Tri-Happiness Mark in Indonesia since 2011, and that the Applicant had a reasonable commercial justification for applying to register the Trade Mark Application in Singapore. The PAR was not prepared to make a finding of bad faith based purely on the fact that the Trade Mark Application was filed just after the Old Tri-Happiness Mark was revoked for non-use.

While the Opponent had argued that the evidence given by the Applicant’s witness in cross-examination ought to be accorded little weight as the witness appeared to be evasive and inconsistent in his responses, the PAR cited the Court of Appeal’s decision in Sanz Solutions (Singapore) Pte Ltd & Ors v Strategic Worldwide Assets Ltd & Ors [2014] SGCA 27 and stated that observations as to a witness’ demeanour and behaviour on the witness stand should seldom be the sole basis upon which his credibility and the veracity of his evidence is determined. It is ultimately more important to look at the independent objective evidence rather than just the demeanour of the witness.

Comment

This decision underscores the long held position that an allegation that a trade mark has been applied for in bad faith is a serious one, and a party who alleges bad faith has a correspondingly high standard of proof to satisfy.

This opposition was premised almost entirely on an inference of bad faith by virtue of the Applicant having applied for or registered trade marks (unrelated to the Tri-Happiness Mark) in other countries that are similar to those used by other tobacco companies. This case is understood to be one of the first opposition cases before the Singapore Trade Mark Registry where the Opponent sought to rely on similar fact evidence to invite the Registry to draw an inference of bad faith.

The PAR’s decision suggests that bad faith is unlikely to be proven where the opponent’s evidence largely relies on similar fact evidence, with little other evidence of actual bad faith on the applicant’s part, and the Registry will not lightly draw inferences of bad faith.

Allen & Gledhill Partner Gloria Goh represented the successful Applicant.

 

Download PDF