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The following is based on the case of Redsun Singapore Pte Ltd v Tsung-Tse Hsieh  SGIPOS 1
A Taiwanese chain of bubble tea shops owned by Tsung-Tse Hsieh
("Tsung") was planning to expand to Singapore and
registered a "Red Sun Tea Shop " logo as a trade mark in
Singapore. This was registered in Class 30 in respect of various
types of beverages.
Unfortunately for him, Redsun Pte. Ltd. ("Redsun"), a local company that sells green tea and health supplements, had an earlier "Red Sun" trade mark registered in Class 5 for food supplements etc.
Invalidating a Trade Mark
Redsun first sought to have Tsung's registration declared
invalid on various grounds, including that it was confusingly
similar to the Redsun's earlier trade mark. It was found that
the parties' respective specifications of goods for the trade
mark were not similar and Redsun did not succeed on this
However, Redsun succeeded in invalidating Tsung's registration under a separate ground of passing off.
Redsun managed to prove that it had already established goodwill in its business under "Red Sun" by selling tea and health supplements, and that allowing Tsung to use his trade mark would likely lead the public to believe that Tsung's goods were the goods of Redsun.
To support its point of possible misrepresentation, Redsun showed that the two businesses were not so far apart in scope. Its evidence was that bubble tea outlets also sold unprepared forms of tea on its premises. For example, "Each A Cup" bubble tea outlets sold tea bags of honey red oolong tea. Conversely, businesses that started out selling beverages in unprepared form also expanded to open shops, examples being Old Town White Coffee, TWG, etc.
Redsun succeeded in showing the elements for passing off and in obtaining a declaration that Tsung's trade mark was invalid.
What can we learn from this?
Primarily, this case shows that in doing due diligence for the registration of trade marks, it is not sufficient to look only at existing trade marks in the specific goods and services classification, or at well-known trade marks. Care must also be taken to anticipate possible scenarios of passing off in order to avoid future disputes.
Originally published on February 6, 2015
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