[Singapore Update] Trust but don’t open up BLINDLY!!!

By Thein Thein Win

Navin Trading Pte Ltd Vs. Mahendra Naidu A/L R. Manogaran trading as Sri Sai Traders: Application for invalidation of trademark registration

Trademark infringements occur around the world because there’s so much competition in the market and it is not easy to build a new brand from scratch. For that reason, some people commercially exploit the interests of others by using shortcuts to save money, time and energy rather than investing the same into building a new brand.

Likewise, in Singapore, in a case illustrating the above scenario, the applicant, Mahendra Naidu A/L R. Manogaran trading as Sri Sai Traders, applied for the invalidation of trademarks registered by the registrant, Navin Trading Pte Ltd, in Singapore as similar trademarks were used by the applicant.

The applicant is based in Malaysia and manufactures, packages and sells goods in Malaysia and Singapore under the trademarks “ ” and “ ”. The registrant was incorporated in Singapore in 2016 and applied for the registration of the following marks four days after its incorporation:

Trademark No. 40201606062U in Classes 29 and 30

ii)

Trademark No. 40201606064Y in Classes 29 and 30

One of the directors of the registrant had previously worked as a sales manager in a company that purchased the applicant’s goods. During his tenure as a sales manager from 2012 to 2016, the now director of the registrant directly contacted the sole proprietor of the applicant to purchase the applicant’s goods.

After incorporating the registrant’s company, the said director of the registrant asked the sole proprietor of the applicant to send pictures of the applicant’s goods for him to promote the products in Singapore. The photographs, including those of the “SHREE GOLD” cooking oil, were sent in response. On that fateful day, the registrant filed both trademarks in Singapore – unknown to the applicant. Three months later, the director of the registrant called for a meeting with the sole proprietor of the applicant and expressed his intention to start a new venture in Singapore, selling his own goods along with the applicant’s goods. The former then informed the latter that he had registered “SHRI GOLD” in Singapore. Although the sole proprietor was troubled by this news, he did not object to it.

Soon it became apparent to the applicant’s proprietor that the registrant was selling goods bearing the mark “SHREE GOLD” and upon enquiry, the director of the registrant replied that the trademark belonged to him since he had registered “SHREE GOLD” in Singapore first instead of the applicant.

At this point, the applicant’s solicitors sent a letter demanding the registrant to voluntarily cancel and withdraw the trademarks in question.

However, the registrant did not respond and the applicant filed for a declaration of invalidity in respect of the trademarks on the grounds of bad faith, passing off and fraud or misrepresentation under the Trademark Act of Singapore. Normally, the evidence is filed sequentially in invalidation proceedings – after the party initiating the action submits the evidence, it is the registrant’s turn. In addition to the applicant, the statutory declarations of third party companies, who purchased goods through the applicant or the applicant’s distributors were also taken into account as evidence for the registrant’s bad faith.

The evidence submitted indicated that the applicant had been incorporated in Malaysia in 1995, while its trademarks “SHREE” and “SHREE GOLD” were locally registered in 2008 and 2009. It also showed that the applicant’s “SHREE” and “SHREE GOLD” goods were distributed and sold through various distributors in Singapore since 2010 and 2012, respectively. Thus, it is established that the applicant used “SHREE” and “SHREE GOLD” first.

On the other hand, it was apparent that the registrant’s mark had significant similarities with that of the applicant’s marks and sounded very similar. Hence, there is no room for the probability that all of the marks were accidentally similar. Moreover, the registrant’s failure to file any evidence in defence and to reply when the applicant’s solicitors sent the demand letter to the registrant, only iterates that the registrant had admitted to the applicant’s allegations.

So, it was decided that the trademarks were registered in bad faith and the marks were declared invalid. The Court also ruled that the applicant was awarded the costs of this action.

Through this case, it can be learnt that regardless of your trust in another, you should always be aware that your brand or trademark is a highly valuable asset for your business that can be exploited by others. Therefore, before even pursuing discussions with a potential partner in a foreign country, ensure that you register your trademark(s) thereto secure adequate protection. Secure your market share. Better safe than sorry, as the old adage says!

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.