SINGAPORE / TRADE MARKS / OWNERSHIP - CONFUSION

Hijacking thwarted on appeal

Managing IP, Issue 120, June 2002

Farah Namazie

Some interesting issues are discussed in this brief article, based on the Singapore Appeal Court's decision in Shanghai Tobacco Group (STG) v PT Permona. Although STG had failed in 1967 to secure the registration of its trade mark, Chung Hwa, on the grounds that in Chinese characters this was a common name for "China", the Group sold cigarettes under that name for many years. In 1996 an Indonesian company, PT Permona, filed an application in Singapore for the trade mark Chung Hwa for cigarettes. STG opposed the application on the grounds that an expression meaning "China" was inherently unregistrable; that PT Permona did not have a claim to ownership; and that PT Permona's mark would cause confusion, in view of STG's earlier use of the mark. The second and third grounds were, in the even, the mainstays of the case. On the question of ownership, "the principle is that the applicant must be either the user or the author of the mark; and where, as in the present case, the applicant has neither used nor created the mark, the applicant's to proprietorship must fail". On the question of confusion, the Court was willing to impute to STG a commercial reputation in relation to the Chung Hwa mark, notwithstanding the lack of registration of the mark, and applied the principles of the Tiffany case to protect the public from the likelihood of confusion "which would ensue from the Indonesian company's registration of the Chung Hwa mark, in view of the prior use, reputation and goodwill of STG's Chung Hwa cigarettes". The author, who represented STG in the proceedings, concludes that the outcome of the case "boosts the legal position of foreign trade marks which, although not registered in Singapore, would be protected against attempts to register similar marks by non-related parties …" [20074]