Asia IP

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Back to the present invalidation dispute, there is no law or established practice in Singapore, in the context of trade mark examination, opposition and post-registration challenge, that marks in a non-English language are automatically, necessarily translated into English for their meaning under an inquiry based on the absolute grounds under Section 7(1) or the relative grounds under Section 8 of the Act. Where a non-English word is involved, the starting point is to ask whether its meaning will be understood in Singapore by the average consumer of the relevant goods or services at the relevant date. This is the case whether the non-English language is one of Singapore’s official languages (e.g. Chinese) or not (e.g. French, in the present case).

The Principal Assistant Registrar considered the parties’ evidence, including media features on the Proprietor, business listings and dictionary entries, and concluded that the Applicant has not established that the average consumer in Singapore, being a member of the general public, would understand the Subject Mark (especially the French word element “Patissier”) to have a meaning in Singapore at the Relevant Date. As such, it was found that the Subject Mark was not likely to be understood by the consumer as a descriptor of a characteristic of the goods and services claimed. The ground of invalidation alleging descriptiveness (under Section 7(1)(c) of the Trade Marks Act) therefore failed. Likewise, the ground of invalidation alleging non-distinctiveness (under Section 7(1)(b) of the Trade Marks Act) also failed.

This case relied extensively on the High Court decision in Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd [2018] 5 SLR 312 (“Big Box”), where the trademark “BIG BOX” was also challenged on grounds of descriptiveness and non-distinctiveness. As in Big Box, the present decision also recognised the practical difficulties of proof which arise where the registration of a trade mark is attacked many years after registration on the basis of invalidity at the date of registration.

Notwithstanding this decision on the registrability of the Subject Mark, if the evidence is that the trade mark has become the common name in the trade for the product or service in respect of which it is registered due to the acts or inactivity of the proprietor, the solution would be to seek revocation of the registration under Section 22(1)(c) of the Trade Marks Act instead. The present proceedings are different in nature, involving applications for declarations of invalidity, based on Section 23(1), and the state of affairs at the Relevant Date (almost 14 years ago in 2005) is most relevant. What other traders and businesses adopt as part of their trade or business name after the Relevant Date is a separate matter, and this decision does not go so far as to adjudicate those issues not before the Principal Assistant Registrar.