APAA 54th COUNCIL MEETING NOVEMBER 18th2007ADELAIDE, AUSTRALIA

RECOGNISED SINGAPORE GROUP
TRADE MARKS COMMITTEE REPORT
By Teresa O’Connor and Michael Kraal

IP DEVELOPMENTS IN SINGAPORE

  1. Trade mark practice developments in Singapore
  1. Trade Marks Registry Circulars and Practice Directions

TM Registry Circular No. 17/2007, dated 7 May 2007

  • Translation of non-English words

Where the mark consists of non-English words, it is not necessary to lodge a certified translation by a qualified translator. Copies of relevant extracts from dictionaries in the relevant language showing the meaning of each word and the words as a whole in English will be generally be accepted by the Registry. However, it remains necessary to indicate on the application form that the mark consists of non-English word/words. If this is not done at the point of filing, the application form will have to be rectified by the filing of amendment with the requisite fee.

Registry Practice Direction No. 3 of 2006

  • Saturdays as excluded days

The Registry has now made Saturdays an excluded day for all purposes under the Act and Rules. The Registry will continue to be open and operate public service counters on Saturdays. The change means that any deadlines falling on a Saturday will now be carried over to the next working day i.e. Monday (unless the following Monday is also a public holiday).

B. Trade Marks Registry Examination Practice

Trade Marks (Amendment) Act 2007

The above Acthas been passed by Parliament on 22 January 2007 and introduced several key amendments:

Multi Class Registrations

Previously, a trade mark in each class is treated as a separate application and given a separate application number.

With the introduction of the new amendments, multiple class applications are now permitted. Only one trade mark number will be allocated to each multiple class application and the application will be examined as a single application. Each time an examination report is issued, it will pertain collectively to all the classes of goods and/ or services designated under the multiple class application. The trade mark applicant will be given a single deadline by which to respond to the examination report issued on all the classes designated. The entire multiple class application will be held back if objection or opposition is encountered against any class of goods and/ or services.

For multiple class registrations obtained pursuant to applications filed on or after 2 July 2007, renewal may be made against all the classes of goods and/or services for which the mark is registered, or only against some of the classes.

Applications and registrations existing before 2 July 2007 may not be consolidated under the multi-class system.

Division of an Application for Registration

Related to the introduction of multiple class applications, it is now possible to divide an application into two or more applications so that those classes of goods or services that do not face opposition or objection can proceed to registration first. Such an avenue for division is intended to complement the multiple class system.

A request to divide an application may be made to the Registry in prescribed form upon payment of a prescribed fee (currently set at S$280.00) at any time after the allocation of a trade mark number, but before the registration of the trade mark. The original priority date claim, if any, and the original filing date of the application are preserved.

It should be noted that such option to divide an application does not apply to international registrations designating Singapore.

Relief Measures for Procedural Oversight

As part of the relief measures put in place for alleviation of procedural mistakes (most notably those relating to expired time limits), it is generally possible to reinstate any lost rights pursuant to an expired time limit for any action to be taken before the IPOS, provided the following conditions are satisfied: -

  • the request for reinstatement ismade in prescribed form within 6 months from the date of expiration of the time limit;
  • such request is accompanied by the completedact which was omitted earlier; and
  • the failure to comply with the time limit is unintentional.

Where there is an error or omission in the Singapore Trade Marks Register, the proprietor of a registered trademark or any other person may apply in prescribed form to the Registry for rectification of the error or omission.

Registration of Licence of Pending Trademarks

With effect from 2 July 2007, applications may now be made to record on the Singapore Trade Marks Register, any licence granted in respect of trade marks which are pending registration. Previously, only licences relating to registered trademarks can be recorded.

For the avoidance of doubt, such applications for recordal may also be made in respect of pending trade mark applications which were filed before 2 July 2007.

2.Significant Legal Decisions in the courts
  • Future Enterprises Pte Ltd v McDonald's Corp [2007] SGCA 18

In this case before the Court of Appeal in Singapore, the Appellants, Future Enterprises Pte Ltd (“Future”) had applied to register the word mark “MacCoffee” in Class 30 for “instant coffee mix”. The application was opposed by the Respondents, McDonald’s Corporation (“McDonald’s”), owners of the trade mark “McCAFẾ“ in Class 30 for coffee and coffee substitutes, among other goods. McDonald’s succeeded both in the first instance before the Principal Assistant Registrar of Trade Marks (“PAR”) and in the appeal to the High Court from that decision. At the hearing before the Court of Appeal, the issues to be determined were:

(a)whether the “MacCoffee” mark was similar to the “MacCAFẾ” mark;

(b)whether the goods under the “MacCoffee” specification were similar to those under the “MacCAFẾ” such that a likelihood of confusion would exist on the part of the public; and

(c)whether the rights conferred by the registration of the “MacCAFẾ” mark were statutorily restricted and made inoperative by certain provisions in the Trade Marks Act (“the Act”), because of Future’s prior unregistered right to proprietorship of the “MacCoffee” mark for instant coffee mix.

Findings of the Court of Appeal

Issues (a) and (b) – Appeal failed

The Court of Appeal affirmed the findings of the PAR and the trial judge that the marks and the goods covered in the two specifications were similar. In declining to differ from the two previous decisions, the Court noted that an appellate court should not disturb the findings of fact of a trade mark tribunal in the absence of “a distinct and material error of principle”.

The Court referred to Robert Walker LJ’s decision in Reef Trade Mark [2003] RPC 5, where it was held that “an appellate court should…show a real reluctance…to interfere in the absence of a distinct and material error of principle.” It then found the same sentiments expressed by Laddie J in SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch), and the same approach unequivocally endorsed in the recent UK case of Sunrider Corporation v Vitasoy International Holdings [2007] EWHC 37 (Ch).

Accordingly, and also in light of the highly subjective nature of assessing similarity and likelihood of confusion, the Court did not overturn the findings of the lower court and tribunal that the marks and goods covered in the specifications were similar.

Issue (c) – Appeal failed

Future also argued that it had a common law right to the “MacCoffee” mark by reason of its use of the mark in Singapore and/or its international reputation. It submitted that because of this right, McDonald’s was statutorily restricted from asserting its rights under its prior “McCAFẾ” mark in the opposition proceedings.

On the facts, the Court of Appeal found insufficient evidence to show that Future had used the “MacCoffee” mark in Singapore. It also disagreed with Future’s argument that its common law right to use the “MacCoffee” mark overrode McDonald’s right to oppose its registration. The Court of Appeal found that the Trade Marks Act provided ample avenues for proprietors of unregistered marks to clarify such prior rights against the opposition mark through opposition, invalidation and revocation procedures. The express terms of the provisions relied on by Future, however, had no application to the opposition proceedings in question. The court stressed the paramount importance of following the legislative framework in order to maintain “conceptual clarity…transparency…and certainty.” The Court also pointed out that the correct approach for Future was to have opposed McDonald’s “McCAFE” at the time it was advertised, or to invalidate the mark on the basis of passing-off, rather than to rely on its rights in the “MacCoffee” mark as a “side door” defence in the opposition proceedings.

The appeal was accordingly dismissed.

3.Decisions of Registrar of Trade Marks
  • In The Matter Of Trade Mark Registration T04/12796D In The Name Of Tan Yueh Han Trading as SCC Square (“the Registered Proprietor”) and Application for Invalidation thereof by Singapore Street Festival Ltd (“the Applicant”)

In this case before the Principal Assistant Registrar, the Registered Proprietor obtained registration for the word “Cosplay” in Class 41 of the Nice Classification, in respect of “arranging and conducting of workshops; books (publication of books); club services (entertainment or education); competitions (organisation of entertainment activities); exhibitions for cultural or educational purposes; planning party (entertainment); trainings (demonstration); studios (movie)”.

The word “Cosplay” is widely used to describe a particular hobby, culture or activity, in which people dress up in costumes to resemble fictional or movie characters. It is used in relation to courses, performances, exhibitions, videos and the like, but not in connection with a single source.

The Applicant applied to declare the registration invalid, on the basis that it breached Section 7 of the Trade Marks Act (Cap. 332, 2005 Rev. Ed. Sing.) (“TMA”), namely:-

Section 7(1)(a) – the mark does not satisfy the definition of a trade mark;

Section 7(1)(b) – the mark is devoid of distinctive character;

Section 7(1)(d) – the mark consists exclusively of a word that has become customary in the current language

In her Judgement, the Principal Assistant Registrar held that the registration of the word “Cosplay” violates sections 7(1)(a), 7(1)(b) and 7(1)(d) of the TMA and the registration was invalidated.

Section 7(1)(a) requires that the mark is “capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by another person”. The requirement of being capable is a positive requirement, namely that the mark must possess of distinctive character or must fulfil its primary function as a badge of origin. This positive requirement is to be assessed in light of the negative requirements in subsections 1(b), (c) and (d). If the trade mark runs foul of the latter subsections, it would be a fortiori be in breach of Section 7(1)(a).

The approach taken by the Principal Assistant Registrar therefore was to examine whether the registration runs foul of Section 7(1)(b) and (d).

Evidence was led as to the meaning of “cosplay” found from inter alia, Google searches, entries in Wikipedia, Reference.com and Urban Dictionary. The Principal Assistant Registrar stated that although she had doubts in putting too much weight on such evidence as it is not clear whether the online resources are widely accepted as authoritative, she did accept that viewed as a whole, the evidence pointed to the fact that “cosplay” is used by a number of online users and does not point to the connection with a single source. She also considered articles in the newspaper which referred to “cosplay”, and concluded that “cosplay” means a particular type of subculture or activity whereby people dress up in costumes mostly to look like some fictional or movie, particularly anime characters.

Having determined the meaning, she then considered whether the trade mark would have a descriptive meaning in relation to the services, having regard to the notional and fair use of the word in question across the specification of goods/services. Since the services registered under the mark “Cosplay” are related to the activities one would fairly use the word “cosplay” to describe, the reasonable consumer would see the word as a description of the services, not an indication of their source. The mark was thus devoid of distinctive character, and incapable of distinguishing the Registered Proprietor’s services.

A word becomes customary under section 7(1)(d) when it has become generic and no longer serves to indicate the origin of the goods/services in question.

  • The phrase “the trade” in section 7(1)(d) refers to trade in the general sense, not the specific trade.
  • The phrase “such signs or indications” in section 7(1)(d) include those which connote the goods/services in question to the average consumer.
  • The purpose of section 7(1)(d) is to make available these “signs or indications” for general use. The question is thus whether registration of the mark would inhibit such general use.

Since the word “cosplay” is widely used descriptively, and connotes services related to “cosplay”, registration of the mark “Cosplay” would inhibit the general use of the word by consumers and other traders in the normal course of business. The registration of the mark therefore was in breach of section 7(1)(d).

1

APAA-TM-2007-FULL (2)