Singapore Court of Appeal Considers Revocation and Invalidation Provisions in the Trade Marks Act

In the recent case of Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another and Another Appeal [2009] SGCA 9, the Singapore Court of Appeal had to decide on various issues surrounding trade mark revocation and invalidation.

The Appellant argued that a “Rooster” device trade mark registered for inter alia, cordyceps (the “Rooster” Mark”) was liable for revocation on grounds that it had become a common name in the trade due to the registered proprietor’s acts or inactivity (section 22(1)(c) of the Singapore Trade Marks Act). The Court of Appeal found that there was no evidence to show that the word “Rooster” has become commonly used for denoting cordyceps from the People’s Republic of China (PRC), regardless if the cordyceps bear the Rooster Mark. Hence, the Appellant had not discharged its burden of showing that the “Rooster” Mark was a generic mark in the trade for cordyceps from the PRC.

The Court further expounded that it is insufficient for the Appellant to show that the “Rooster” Mark was a popular mark used to denote cordyceps from the PRC. “The mere fact that a mark is popular or even the only brand used to market a particular product or service does not ipso facto render the mark a generic mark and thus undeserving of protection.” (at [65])

Despite its finding that the basis for revocation under section 22(1)(c) was not made out, the Court went on to consider whether the Registrar of Trade Marks and the Court, in trade mark revocation and invalidation proceedings, have a residual discretion not to revoke or invalidate the registration of a registered trade mark even though one or more of the grounds for revocation or the grounds for invalidation have been made out. The Court of Appeal overruled the lower court’s finding that discretion was conferred by the word “may” in the relevant provisions in the Trade Mark Act. It opined that the correct interpretation of the word “may” in the relevant provisions does not confer any such residual discretion on the part of the Registrar or Court.

The Court of Appeal’s views on the correct interpretation of “may” in the relevant revocation and invalidation provisions in the Trade marks Act is significant as this is the first time a final appellate court has the opportunity to consider the issue.

Joyce Ang
Associate
Intellectual Property and Technology Group
ATMD Bird & Bird LLP
Phone +65 6428 9422
Email:  joyce.ang@twobirds.com