One case that has cast some light on co-ownership of trade marks in Singapore is Ng Chu Chong (trading as Grand Am Fashion Enterprise) v Ng Swee Choon & Ors (Suit No 1108 of 2001/E). Here the plaintiff and his sister, the first defendant, entered into a partnership called Grand Am Fashion Enterprise (Grand Am) to manufacture and sell fashion apparel under the trademark, McBlue. The trademark was created by the first defendant for the partnership and was registered in their joint names, trading as Grand Am. Subsequently, the first defendant withdrew from the partnership due to an impending bankruptcy but continued to work for the plaintiff as an employee. The plaintiff thereafter discovered that another partnership belonging to the first defendant's sister-in-law, named GA Fashion Apparel (GA) was marketing goods bearing the McBlue trade mark. The plaintiff brought an action against the defendants for trade mark infringement and applied for permanent injunction. The first defendant argued that she was entitled as a joint proprietor to authorize GA to purchase and deal with goods bearing the McBlue trade mark.
The following issues came before the High Court for determination:
-
whether the trade mark was partnership or personal property;
-
consequences of the dissolution of the partnership and its effect on ownership of the trade mark; and
-
whether there was infringement of the trade mark by the defendants.
On the first issue, the court held that the trade mark was the property of the partnership until its dissolution when the first defendant withdrew from it. It was registered under the 1992 Trademarks Act which only allowed registration of a trade mark in joint names if the parties were partners. Furthermore, the first defendant admitted that the trade mark was created for the partnership.
In considering the second issue, the court noted that when the first defendant withdrew from the partnership, the change in the status of business from a partnership to a sole-proprietorship was recorded with the Registry of Businesses. The court further found evidence that there was an agreement between the parties to transfer the defendant's share of the partnership to the plaintiff for a consideration pursuant to which the first defendant had divested her interest in the partnership prior to the bankruptcy order. As for the rights to the trade mark, these should be dealt with in the same way as any other partnership property. Prima facie, the trade mark forming part of the pool of the partnership assets would have to be realized for the benefit of both the partners. However, in view of the agreement between the parties that the first defendant would transfer all her interest in the partnership for a consideration and the promise of continued employment, the ownership rights over the McBlue mark were also transferred to the plaintiff. The court concluded in this way even though the trademark registration certificate was not rectified and continued to show the first defendant as a joint proprietor of the trade mark and there was no assignment transferring the first defendant's rights to the plaintiff. The court attributed these omissions to inadvertence as well as the close familial relations between the parties.
On the essential issue of infringement, having found that the plaintiff had exclusive rights to use and authorize use of the mark, the court had no difficulty concluding that the defendants had infringed the mark by offering for sale under the business of GA, goods and apparel bearing the McBlue trade mark for the account of GA rather than Grand Am. Accordingly, the court granted the injunction and the other orders applied for.
The case is interesting because of the issue of co-ownership that came up for determination. As was noted by the court, under the 1992 Trademarks Act, co-ownership of registered trade marks was closely circumscribed. Trade marks could only be registered in joint names when the parties were in partnership with one another. It is worth remembering now that the position has changed under the 1998 Trademarks Act which has a different scheme for shared ownership. Under the 1998 Trademarks Act, where a trade mark is granted to two or more persons jointly, each is entitled to an equal undivided share in it, although they may modify that arrangement by agreement. It would appear that the new Act has provided for a more liberal approach on co-ownership of trade marks.
|
|
Gladys Mirandah
|