In a decision rendered by an Assistant Registrar at the Intellectual Property Office of Singapore (IPOS), IPOS invalidated a registered trade mark for its lack of distinctiveness.
(A) Who are the parties involved in this case?
- Eley Trading Sdn Bhd (Applicant)
- Manufacturer and distributor of religious products sold in various countries including Singapore.
- Owner of Singapore Trade Mark No. T0010570B for (“Earlier Mark”) in Class 3 for “Detergents other than for use in manufacturing operation and for medical purposes; incense; incense sticks; incense coils; incense cones; incense sprays; joss sticks; scented oils and scented preparations; soaps in liquid form; soaps for use on a person; all included in Class 3”, registered on 19 June 2000.
2. Kwek Soo Chuan (Proprietor)
- Sole proprietor of business in Singapore called Bodhi Buddhist Products, distributing Buddhist products such as incense, joss sticks and scented oils.
- Owner of Singapore Trade Mark No. T1305626H for “菩提” (the “Mark”) in Class 3 for “Incense; incense sticks; incense coils; incense cones; incense sprays; joss sticks; scented oils; scented preparations” (the “Goods”).
(B) What actually happened?
The Proprietor is the registered proprietor of trade mark “菩提” (a Chinese word pronounced as ‘Pu Ti’ meaning ‘Enlightenment’ or ‘Bodhi’) in respect of incense sticks and various similar products.
The Applicant applied to invalidate the Proprietor’s trade mark registration for “菩提”.
The Applicant relied on the following grounds in support of the its application for a declaration of invalidity:
- That the Mark is not distinctive;
- That the Mark is descriptive of the intended purpose of the Goods;
- That the Mark was applied for in bad faith; and
- That the Mark is confusingly similar to the Applicant’s Earlier Mark.
To avoid invalidation under grounds (a) and (b) above, the Proprietor tried to show that the Mark had in fact acquired distinctiveness as a result of use by the Proprietor. The proprietor argued that his business name is “菩提佛教文物批发中心” (pronounced ‘Pu Ti Fo Jiao Wen Wu Pi Fa Zhong Xin’) and he had used the signage with his business name on his shop signboard, company vehicles, office stationery, calendars and product packaging. The Proprietor also gave evidence to the effect that he has been linked with the words “菩提” and was referred to as such by his customers.
(C) What is/are the issue(s) in dispute?
- Whether the aforementioned grounds of invalidity were proven by the Applicant on the balance of probabilities.
- Whether the Mark had acquired distinctiveness as a result of use by the Proprietor.
(D) Holding
The Mark was not distinctive. The ground of invalidation on the basis that the Mark is not distinctive succeeded.
The ground of invalidation on the basis that the Mark is descriptive of the intended purpose of the Goods failed.
The ground of invalidation on the basis that the Mark was applied for in bad faith failed.
The grounds of invalidation on the basis that the Mark is confusingly similar to the Applicant’s Earlier Mark failed.
The Mark was successfully invalidated on the ground that the Mark was not distinctive.
(E) Rationale for holding
The Mark was not distinctive.
The test for whether a trade mark is devoid of distinctive character is whether it is the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark. This assessment is made by examining the trade mark and its meaning (if any), as will be reasonably perceived and understood at the relevant date by the average discerning consumer of that category of goods/services in the market place and environment that exists again as at the relevant date.
The evidence showed that other traders in Singapore have been calling their incense “菩提香” (“香” pronounced ‘Xiang’ which is a Chinese word meaning fragrance). By virtue of the common use of “菩提香”, the sign “菩提”, without any form of stylization or embellishment, would be incapable of doing the job of distinguishing without first educating the public that it is a trade mark.
Further, bearing in mind that “菩提” is the ultimate goal of Buddhism and the burning of incense is an integral part of Buddhism, the Registrar also found that “菩提” is a term which other traders of the Goods may wish to use for legitimate reasons. Allowing a trader to register and obtain a monopoly on words and phrases which other traders may wish to use in respect of their goods and services for entirely legitimate purposes (including competition) is clearly not in the public interest.
Hence, the Registrar found that the Mark was not capable of distinguishing the goods of one trader from another and for public policy reasons should not be monopolized by a single trader.
The ground of invalidation on the basis that the Mark is descriptive of the intended purpose of the Goods failed.
Applicant’s claim was very specific here. It argued that the Chinese characters “菩提” may serve in trade to designate the intended purpose of incense. It cited a single online article which says that “when Mahayana Buddhists light incense, they are affirming to those who are already enlightened that their purpose is to help others reach enlightenment, too”.
The Registrar was not persuaded by the Applicant’s submission and evidence as:
- A single article from the Internet is not sufficiently persuasive to prove the Applicant’s point;
- Author’s credentials and source of author’s knowledge is unclear;
- Article is published on website called “opposingviews.com”, the name of which suggests that views expressed therein could be controversial in nature; and
- Even if statement in article is true, it nevertheless does not support the Applicant’s claim that “菩提” designates the intended purpose of incense. The article merely indicates that the intended purpose of burning incense is to affirm’s one purpose of helping others reach enlightenment, rather than as an act directly linked to the attainment of enlightenment. “菩提” is at best only the subject matter of what the incense is used to affirm but it is not the purpose of the incense itself.’
No acquired distinctiveness through use by the Proprietor
The Registrar held that the fact that the Proprietor is referred to as “菩提” by his customers does not necessarily mean that his goods are also distinguished by the sign “菩提”. The purpose of a trade or shop name is not, of itself, to distinguish goods or services, but designate a business which is being carried on. If a Proprietor wants to rely on the use of his trade or shop name as having resulted in the acquired distinctiveness of that name for the purposes of distinguishing goods, this has to be borne out by the evidence and is not a natural consequence.
In the instant case, the signage “菩提佛教文物批发中心” merely designates the distributor or retailer of the Goods. It has never been used to designate the Goods themselves, which bore their own trade marks. The sign may perhaps have been used as a trade mark for wholesale or retail services of incense products, but it was certainly not used as a trade mark for the Goods.
Hence, there was no acquired distinctiveness through use of the Mark by the Proprietor.
The ground of invalidation on the basis that the Mark was applied for in bad faith failed.
Bad faith embraces not only actual dishonesty but also dealings which would be considered as commercially unacceptable by reasonable and experienced persons in a particular trade, even though such dealings may otherwise involve “no breach of any duty, obligation, prohibition or requirement that is legally binding” upon the registrant of the trade mark.
The test for determining bad faith is the combined test of bad faith which contains both a subjective element (what the proprietor knows) and an objective element (what ordinary persons adopting proper standards would think). Bad faith as a concept is context-dependent. Whether bad faith exists or not hinges on the specific factual matrix of each case.
Once a prima facie case of bad faith is made out by the Applicant, the burden of disproving any element of bad faith on the part of the Proprietor would arise.
An allegation of bad faith is a serious claim to make and must be sufficiently supported by the evidence, which will rarely be possible by a process of inference.
Although the Proprietor admitted at that at the time of applying for the Mark, he knew there were many other traders who were already selling incense labelled with the words ““菩提” and that he applied to register the Mark in order to stop other traders from selling incense bearing the words ““菩提”, the Registrar found that this per se is not evidence of bad faith.
Given that the Proprietor had been trading under the name “菩提佛教文物批发中心”, the Registrar accepted the Proprietor’s evidence that the Mark was filed to help him protect his perceived interest (whether rightly or wrongly held) in the words “菩提”. The fact that this was triggered by other traders’ use of “菩提” makes no difference although it explains the timing of the application.
The grounds of invalidation on the basis that the Mark is confusingly similar to the Applicant’s Earlier Mark failed.
The Registrar found that the marks were more dissimilar than similar for the following reasons:
- Although the marks share the common denominator “菩提”, “菩提” is devoid of distinctive character and the Mark has not acquired distinctiveness. The rule that proscribes impermissible similarly cannot be applied in precisely the same manner to a mark that uses common descriptive words as to one that does not. Otherwise, the law would prevent the legitimate use of an unacceptably large spectrum of common words and ideas. Hence, the Registrar was disinclined in finding similarity merely because of the coincidence of the use of the common word “菩提”.
- Visually, the marks are dissimilar. The Applicant’s Earlier Mark is a composite mark containing several components (Chinese characters “菩提” in a rectangular border, the word “PUIDI” and leaf device). The leaf device is unlikely to be overlooked by the average consumer in his imperfect recollection of the mark as the device is outstanding, memorable and bigger in size than any of the other components. Conversely, the Mark consists only of the Chinese characters “菩提” in plain font.
- Aurally, the marks are similar to a low degree. While Chinese-speaking consumers in Singapore are likely to refer to both marks as “Puti” given the overlap in the Chinese characters, English-speaking consumers are likely to pronounce the Applicant’s Earlier Mark with reference to the Romanised word “PUIDI”.
- Conceptually, the marks are dissimilar. The concept behind the Mark is enlightenment. However, the concept behind the Earlier Mark when seen together with the leaf device, connotes the idea of a leaf from a Bodhi tree. For consumers who do not understand the meaning of “菩提”, the Mark will convey no meaning and the Applicant’s Earlier Mark will convey the simple idea of a leaf.
The ground of invalidation on the basis that the Mark is confusingly similar to the Applicant’s Earlier Mark therefore failed.
Commentary:
It may be difficult for trade mark registrations over common words to withstand challenges as to their validity, even if they do successfully get registered. The law generally shies away from granting rights over descriptive phrases or common words. The court, in a similar vein, also takes into account the likelihood that other traders may, without improper motive, desire to use the trade mark in relation to their own goods, and appears disinclined to uphold the validity of such trade mark registrations over common words. On grounds of public policy, a trader should not be allowed a monopoly over words and phrases which other traders may wish to use in respect of their goods and service for entirely legitimate purposes.
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This article is written by Renee Xavier from Alpha & Omega and edited by Rishika Pundrik of Asia Law Network.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.