Where 'use as a trade mark' is still required

Singapore IP law firm and patent/trade mark agency Ravindram Associates has sent the IPKat a short note on a long, long Singapore Supreme Court case - Nation Fittings (M) Sdn Bhd v Oystertec Plc. In this case the firm successfully defended two parties in a High Court action based on trade mark infringement and passing off.

Among the important rulings found in the case are the following:

1 It is extremely difficult to use a two-dimensional trade mark to enforce rights in relation to a shape:
"such rights should not be permitted to either blatantly or subtly develop into disguised monopolies which stifle or stymie the general public interest or welfare";
2 In order for there to be infringement, it must be shown that the defendant has used the mark as a trade mark (i.e. there must be 'trade mark use');

3 A mark may be revoked for non-use if it has been used in such a manner that its capacity to distinguish goods or services has been "subsumed" by other elements.

4 It is not enough that the public associates the shape with a particular manufacturer; for a mark to be registrable, it must be shown that it functions as a badge of origin.

The IPKat notes how much European, and UK, case law features in the court's analysis. He also reproduces, without further comment, the 'trade mark use' point made by the judge (Andrew Phang Boon Leong J) after he had reviewed the relevant authorities:
"As I have pointed out above, the requirement that there be use as a trade mark in the context of infringement under the TMA is both logical and fair (see [62] above). Indeed, in the South African Supreme Court of Appeal decision of Triomed (Pty) Ltd v Beecham Group Plc [2003] FSR 27, Harms JA, who delivered the judgment of the court, observed (very pertinently, in my view) thus (at [7]):

The British Trade Marks Act 1994 (Ch.26) had to confirm to the [European] Directive and its interpretation by the ECJ binds the English courts. This does not mean that we are bound to follow these authorities nor does our diluted Dutch legacy require of us to submit meekly to a Philips dynasty [this was a reference to the series of Philips litigation]. The Act remains a South African statute, which must be interpreted and applied in the light of our law and circumstances. Local policy considerations may differ from those applicable in Europe. The application of rules remains, even in Europe, a matter for local courts and they differ occasionally amongst themselves. [emphasis added]

73 As (if not more) importantly, the UK position is itself presently in a state of flux and uncertainty. In this regard, I am glad to note that the reasoning in R v Johnstone (briefly considered above at [63]–[65], and which I have fully endorsed) buttresses the approach which I have mooted. Significantly, I also note that Jacob J himself was, in the English High Court decision of Philips Electronics NV v Remington Consumer Products [1998] RPC 283 at 311–312, at least open to reconsidering the views which he had expressed in the British Sugar case, but did not think that it was necessary in that particular case to decide the point".
Merpel is sure that this decision must have given great comfort to Sir Hugh Laddie (above, usually right ...) whose position on the need for trade mark use provided the impetus that led to the ECJ ruling in Case C-106/01 Arsenal v Reed and, indeed, to the argument that persists in raging beyond it.

The IPKat co-blogmeisters' book on Trade Mark Use here

Keep those limericks rolling in!

It was only a few short wintry days ago that the IPKat announced its limerick competition, the prize being free entry to the CLT Tenth Annual Intellectual Property Law Conference at the Cafe Royal, near Piccadilly Circus in London's West End on Tuesday 24 January. Well, the Kat has received some excellent verses but reminds you that there's still nearly a week till the closing date of Thursday 19 January, so just keep those rhymes rolling in ...

Some entrants from within the professions have commented that the time spent writing limericks has had an adverse impact on their billing. Merpel says, "If you're as creative in your billing as you are in your poetry, you shouldn't have any problem in making good the loss".

CLT conference programme here

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