The Singapore High Court recently clarified the legal position concerning shape marks.
In 2004, a UK-registered company, Oystertec Plc (the plaintiff), secured a search warrant and conducted a raid on the premises of Best Ceramic Pte Ltd. It seized 950 pipe fittings, which were retailed by Best Ceramic and supplied by Nation Fittings (M) Sdn Bhd (collectively the defendants).
Following correspondence from the plaintiff threatening legal action, Nation Fittings initiated legal proceedings alleging a groundless threat. The plaintiff's defence was that the seized pipe fittings had infringed two of its trade marks which were registered in respect of pipe fittings under the repealed Trade Marks Act (the old Act). These marks each consisted of a 2-D plan view drawing of the plaintiff's pipe fittings; one of them also bore the words Conex Sanbra.
The plaintiff subsequently sued Best Ceramic for trade mark infringement and passing off. Best Ceramic refuted these claims and counter-claimed for groundless threat, revocation for non-use and/or invalidation of the plaintiff's registered trade marks.
The issues and arguments dealt with by the Court were manifold. For the sake of brevity, this article focuses on the issue of whether or not the transitional provisions of the Trade Marks Act (the new Act) operated to convert the plaintiff's 2-D marks registered under the old Act into 3-D shape marks under the new Act, without the plaintiff having to file fresh applications.
The Court held in favour of the defendants. Justice Phang determined as an irrefutable fact at the outset that shape marks (here he appears to have used the word "shape" in a narrow sense, given that shapes can be 2-D) were, as the term implied, 3-D in nature. Further, before the new Act (which allows for such 3-D shape marks) came into force in 1999, only 2-D marks could be registered. He went on to hold that the plaintiff's argument that the transitional provisions automatically converted the original 2-D marks into 3-D ones was untenable. However, Justice Phang appeared to leave open the possibility that an "old Act" mark registered with the intention of appropriating a 3-D shape mark (eg by showing depth and perspective, both of which were absent from the plaintiff's marks) could confer an additional right to the latter.
The Court also made the following decisions:
On the facts of the case, the marks in question were neither identical nor confusingly similar. The defendants had therefore not infringed the plaintiff's marks (Justice Phang also commented obiter that there ought to be the requirement that an alleged infringing use must also constitute use as a trade mark).
The plaintiff had made a groundless threat of infringement proceedings. An injunction restraining the plaintiff from continuing such threats was granted, with a further order for an assessment of damages (if any) sustained by the defendants as a result of the plaintiff's groundless threat.
In view of the lack of convincing evidence of use of the plaintiff's marks in, or not substantially differing from, the form in which they were registered, its registrations ought to be revoked for non-use.
The plaintiff's registrations ought to be invalidated as the marks concerned did not satisfy the definition of a trade mark and were devoid of distinctive character.
As the elements of goodwill, misrepresentation and damage required to establish a passing off claim were not made out, there was no basis for the claim that Best Ceramic had passed off Nation Fittings' pipe fittings as those of the plaintiff.
Apart from providing comprehensive guidance on the Court's approach towards trade mark infringement, this case serves as a wake-up call to trade mark owners who have so far only registered their shape marks under the old Act. If trade mark owners seek protection for 3-D shape marks, it is strongly recommended that they rely on the new law by applying for registration of their shape marks (especially those originally registered only in 2-D form without depth or perspective) as 3-D shapes. In doing so, trade mark owners should seek professional advice as there are potential distinctiveness and registrability issues associated with such unconventional marks that may need to be addressed.
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Kevin Wong |
