On June 2022 the Intellectual Property Office of Singapore (IPOS) issued the first instance decision for a trademark dispute related to the name of a famous noodle shop in Singapore. The IPOS adjudicator ruled that the late noodle shop operator's children had a right to register trademarks pertaining to the name of their father's noodle shop, despite opposition from the late operator's former business partners.

The trademark dispute involved a wonton noodles hawker stall family business.

Two sisters, Ng Mui Hong and Ng Mei Ling, filed an application for their place Char Siew Wantan Mee in 2018. The idea came from the father, Ng Ba Eng, operator of Eng's wonton noodles hawker stall in Singapore.

Previously, their brother Desmond Ng made a business partnership with a third, Pauline New, who invested in their father's wonton noodles business, allowing it to expand and relocate to 287 Tanjong Katong Road in 2012. They called Eng's Noodles House.

The partnership failed and Eng's Noodles House closed shop in February 2018.

The following month, the Ng sisters opened their own wonton noodles eatery together with their brother.

The former partner of Desmond Ng opposed the sisters' application which apply for three trademarks for their new place: "ENG'S," two Chinese characters meaning "glory" and "high" and a third mark composed of the Chinese characters and the words.

1244042a.jpg, 1244042b.jpg, 1244042c.jpg (the ENG'S Marks).

Components of these marks appeared at the signboard of their father's old hawker stall.

In particular, New requested that the three applications should not be registered because (a) there was passing off; and (b) the applicants were in bad faith.

According to Singaporean trademark law, for the opposition to the applications to succeed on the ground of passing off, the opponent had to establish the three classical elements of passing off: goodwill, misrepresentation, and damage.

New claimed, among other things, that there was goodwill because (a) the ENG'S Marks were continuously and exclusively used in the noodle store business from 2012 to 2018; and (b) the opponent and her company continued to perpetuate the store goodwill in these marks after its closure.

These first claims were rejected since the restaurant ceased operations on February 28, 2018, no goodwill attached to ENHPL as at dates of the filings of the ENG'S Marks.

New also claimed that the applicant's actions of (a) operating an identical restaurant in the same area as the opponent's restaurant; (b) choosing an identical trade name; (c) using the ENG'S Marks in the applicant's restaurant and advertisement materials; and (d) adopting a similar "get up" constituted a misrepresentation.

This claim was rejected as well, since New did not prove that the ENG'S Marks were associated exclusively with the noodle store. Moreover, New used the ENG'S marks only from 2012 to 2018 while the public associated the ENG'S marks with the late Ng and Ng's son Desmond, and Desmond worked for the applicant, the public would be more likely to associate the ENG'S Marks with the applicant, instead of the noodle store. Therefore, there was no misrepresentation by the applicant.

The court noted that since the noodle store was a closed business, there was no real risk of damage.

The opponent argued that the applicant's application to register the ENG'S Marks were made in bad faith.

The Court replied that the knowledge that a third party is using an identical and/or similar mark in relation to identical and/or similar goods and services does not ipso facto constitute bad faith. An applicant might believe that he has a superior right to registration and/or use of the mark, or that he is entitled to registration, nonetheless. The opponent's pleading of the applications being made in bad faith therefore failed too. The court ruled in favor of the Ng sisters, ordering the opponent's three applications for the ENG'S Marks to proceed to registration. In October 2022, New has appealed the adjudicator's decision to the High Court. We look forward to seeing the length of this story.

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