In Shenzhen Meixixi Catering Management Co., Ltd. v Heetea Pte. Ltd. [2021] SGIPOS 12, the Chinese company Shenzhen Meixixi Catering Management Co., Ltd (Applicant) filed an invalidation action against Singapore-based Heetea Pte Ltd (Proprietor).
This decision provides a useful reminder that enforcement can be taken in Singapore based on both registered and unregistered rights. The Applicant was successful on two of the four grounds of invalidation relied upon, as discussed below.
Ground 1: Earlier registered rights
First, the Applicant sought to rely on their registered rights. They argued that the Registered Mark is identical or similar to their earlier mark registered for similar services, resulting in a likelihood of confusion.
The Hearing Officer held that the marks were identical or at the very least highly similar, and that the goods and services were similar despite being in different classes. Consumers would also be less fastidious when purchasing fast-moving beverage goods.
In view of the above, there was a likelihood of confusion and Ground 1 was successfully established.
Ground 2: Earlier well-known mark
Secondly, the Applicant sought invalidation on the basis that their earlier mark is well known in Singapore and that use of the later Registered Mark in relation to the claimed goods would indicate a connection and be likely to damage their interests.
The critical question was whether the Applicant's registered mark could be considered an earlier well-known mark in Singapore as of the date of registration of the Registered Mark.
In this regard, the Hearing Officer held that evidence post-dating the registration date could not be taken into consideration. She also stressed that evidence of use globally and on the Internet does not necessarily translate into exposure in Singapore.
Based on the evidence lodged, the Hearing Officer held that the Applicant's claim was "simply a bare assertion which is not substantiated". Ground 2 was not established.
Ground 3: Bad faith
Thirdly, Applicant argued that the Registered Mark had been applied for in bad faith. They put forward three key reasons:
i. Identity or similarity of the marks / signs;
ii. Pre-emptive registration to take advantage of their goodwill and reputation; and
iii. "Deceptive" responses and misleading associations.
i. Identity or similarity of marks / signs
The Hearing Officer found that the Proprietor had failed to account for the choice of name "HEYTEA" and the "uncanny resemblance" of their "HEETEA" get up to that of the Applicant.
ii. Pre-emptive registration to take advantage of their goodwill and reputation
The Hearing Officer held that the chronology of events suggested that the Proprietor had registered their mark in bad faith, simply to hold the Applicant ransom or to disrupt their business.
This included the fact that the Proprietor had first incorporated the company Heetea Pte. Ltd. and applied to register HEYTEA before incorporating Heytea Pte Ltd.
iii. "Deceptive" responses and misleading associations
The Applicant lodged evidence that upon receiving queries from the public, the Proprietor responded that "HEYTEA and HEETEA were both [their] registered trade marks". The Proprietor had also claimed to have founded their business in a local alley way in Guangzhou in 2012, despite being incorporated in 2017. This account of origin was similar to an account on the Applicant's website on how they had first opened their shop in a lane in Guangdong.
The Hearing Officer also noted how the Proprietor had requested that the hearing proceed without their attendance or filing written submissions or bundle of authorities, which she considered difficult to understand given the serious allegation of bad faith.
Based on all these findings, the Hearing Officer held that Ground 3 had been established.
Ground 4: Passing off and copyright
Finally, the Applicant argued that the Registered Mark would be in conflict with the laws of passing off and copyright. However, there may have been some lack of clarity in the submissions and evidence. The Hearing Officer simply said that the issues were not fully dealt with, and the Applicant was not successful on Ground 4.
Key Takeaways
Brand owners may have an avenue to protect their marks in Singapore based on unregistered rights, including by claiming bad faith, passing off, or breach of copyright. However, such actions will depend largely on the facts and evidence in each case.
In this case, the Applicant had registered their mark three months before the Proprietor, allowing them to rely on earlier registered rights. This was the most straightforward ground to establish. If there is interest in the Singapore market, investing in registration is advisable for stronger prospects in an opposition or invalidation action.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
