Wonton Tussle: Who is the Real Owner Post-Mortem?

By Danush Sinnan

Eng’s Char Siew Wantan Mee Pte. Ltd. v Pauline New Ping Ping [2022] SGIPOS 10

Awareness of the ownership of trademarks is important, especially if relationships between business partners sour or if the main shareholder of the business passes away. In the recent case of Eng’s Char Siew Wantan Mee Pte. Ltd. v Pauline New Ping Ping [2022] SGIPOS 10, this principle was exemplified. The Intellectual Property Office of Singapore (IPOS) rejected an opposition to three marks that were claimed to be existing marks owned by another party in the Register.

Background

Sometime in the 1980s, Mr. Ng operated his wantan mee (egg noodle and dumpling dish) business under the trademark ” ” and the trade name “Eng’s Hawker Business”. Around 2012, Jason Sim, a businessman customer, approached Mr. Ng and his son Desmond and proposed a collaboration with the “Eng’s Hawker Business” (It should be important to note that Jason Sim is the opponent’s husband). Eventually, Eng’s Noodle House Pte. Ltd. (“ENHPL”) was formed in February 2012 as a result of the collaboration. ENHPL operated successfully from 27 February 2012 to 28 February 2018. However, the relationship between Jason and Desmond started failing around 2017, and ENHPL would cease business operations on 28 February 2018 and become dormant (no business whatsoever).

On 17 June 2013, Mr. Ng passed away. In light of Mr. Ng’s death and the souring relationship between Desmond and Jason, Ng Mui Hong (“NMH”), a daughter of Mr. Ng, registered a sole proprietorship as “Eng’s Char Siew” on 8 February 2017. In or around May 2018, the sole proprietorship “Eng’s Char Siew Wantan Mee Pte. Ltd.” (formerly Eng’s Char Siew) began operation. With the establishment of this new business, there were now two main competing businesses in Singapore selling wantan mee under the “ ” trademark. The first, Eng’s Char Siew Wantan Mee Pte. Ltd., is operated by the Applicant (and the Ng family). The second, Eng’s Wantan Noodle Pte. Ltd., is operated by Jason, his wife (the Opponent), and their business associates.

Opposition

Pauline New Ping Ping (the Opponent) opposed the trademark application “ENG’s” by Eng’s Char Siew Wantan Mee Pte. Ltd. in class 43. The first ground for opposition is that the trademark application should be prevented by virtue of the laws of passing off, which essentially means a party is attempting “pass off” another’s goods or services as their own. The second ground for opposition is that the application was made in bad faith.

To succeed on the first ground, the opposition needed to establish three classical elements of passing off:

Goodwill: The reputation amassed from the Applicant’s trademark is rightfully ENHPL’s.
Misrepresentation: The Applicant has made a misrepresentation to the public (whether intentional or otherwise) leading the public to believe that the goods/services offered by the Applicant are ENHPL’s.
Damage: ENHPL suffers damage because of the Applicant’s misrepresentation.

To succeed on the second ground, the opposition needed to prove the test for bad faith, which involves:

An objective element: The conduct of the Applicant fell short of the appropriate standard, namely acceptable commercial behaviour observed by reasonable and experienced persons in the particular commercial area being examined;
A subjective element: The Applicant knew of facts which, to an ordinary honest person, would have made the latter realise that what the Applicant was doing would be regarded as breaching those standards.

Decision

The Principal Assistant Registrar rejected the opposition that the marks were considered passing off or that the marks were made in bad faith.

The first element for passing off, goodwill, was not met. ENHPL was dormant during the dates of application for the trademarks “ ”, “ ”, and “ ”, so no goodwill was attached to ENHPL because there was no business carried on by ENHPL to speak of. Furthermore, the Registrar held that the goodwill of the original “ ” brand was determined to be owned by Mr. Ng and was licensed to ENHPL.

The second element for passing off, misrepresentation, was also not met. ENHPL only used “ ” and other relevant trademarks for six years (2012-2018), which is insignificant compared to the time Mr. Ng previously used the aforementioned marks. Both this fact and Mr. Ng and Desmond’s presence at ENHPL and Desmond’s current presence with the Applicant, would likely result in the public associating the trademarks with the Ng family instead of ENHPL. Thus, the Registrar determined that there was no misrepresentation.

Lastly, the third element for passing off, damage, was not met. This was because any “real tangible risk” ENHPL faced was inconsequential if there was evidence that ENHPL never actually faced damages. Considering ENHPL became a dormant business, they were never damaged in reality. Therefore, the Opponent failed to establish the third element of “passing off.” So, overall, the first ground of the opposition collapsed.

Since bad faith is a serious allegation, it requires substantial evidence and a heavy burden of proof on the part of the accuser. In this case, the Opponent’s arguments were based on inference and resulted in the failure of the second ground of the opposition. As such, the opposition failed on all grounds.

Key Takeaway Tips

Owners should remember to keep track of the ownership of their trademarks. If there are any business collaborations with third parties, clear written agreements should be drafted. Additionally, the ownership and licensing of the trademarks in that business collaboration should be expressly written out. If you require more information on the grounds of opposition or similarity of your mark with an existing mark in the market, please get in contact with us at kass@kass.asia.

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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.