Singapore: Logo War Hots Up As bakkwa Firm’s Appeal Succeeds

A recent Court of Appeal decision has added a twist in the tale of a copyright dispute between two rival bakkwa (barbecued sweetmeat) sellers.

In a half-page notice run in major local newspapers in the lead-up to this year’s Chinese New Year festivities, when bakkwa sales start to peak, Bee Cheng Hiang Hup Chong Foodstuff ("Bee Cheng Hiang") had placed its own logo, the Chinese character for "fragrant", side by side with the logo of Fragrance Foodstuff ("Fragrance"), which includes a stylistic representation of the same Chinese character. The notice had also stated that the two companies were not related.

Fragrance had then obtained summary judgment (that is, on the basis of affidavit evidence, without the benefit of cross-examination) in the High Court (the second-highest court in Singapore, from which appeals proceed to the highest, the Court of Appeal) against Bee Cheng Hiang for infringing the former’s copyright by using its logo, which was also a registered trade mark, without permission. The judge had found that Bee Cheng Hiang’s notice subtly suggested that Fragrance’s bakkwa was inferior to its own. She also found that the notice had given the false impression that Bee Cheng Hiang had first use of the Chinese character "xiang", and that Fragrance was a newcomer to the bakkwa trade.

However, at last month’s appeal, Judge of Appeal Chao Hick Tin and Justice Tan Lee Meng allowed Bee Cheng Hiang unconditional leave to defend the claim of copyright infringement. It had argued that the High Court judge had erred in making certain findings of fact without even hearing witnesses and subjecting them to cross-examination. Therefore, the case should have been determined at a full trial instead because Bee Cheng Hiang has a statutory right to defend such a claim.

The battle between the rival companies is certainly not over yet; Bee Cheng Hiang has counterclaimed that Fragrance had deliberately attempted to pass itself off as Bee Cheng Hiang by adopting a similar logo. On the other hand, Fragrance’s case against Bee Cheng Hiang for trade mark and copyright infringement is still pending.

This case raises some interesting trade mark and copyright issues which have yet to be decided by the courts. The notice run by Bee Cheng Hiang could be seen as a form of comparative advertising, whereby certain (often favourable) comparisons are made between a business and its competition in an attempt to woo customers. Such advertising may be permissible under the Singapore Trade Marks Act provided the use of another’s registered trade mark is "for the purpose of identifying the goods or services as those of a proprietor or a licensee", and is "in accordance with honest practices in industrial or commercial matters". The Trade Marks Act further elaborates that the use shall be treated as infringing if such use "without due cause takes unfair advantage of, or is detrimental to, the distinctive character of the trade mark". On the facts, Fragrance’s mark was indeed used for the purpose of identifying bakkwa products bearing the mark as that of Fragrance. The Court of Appeal took judicial notice of this defence under the Trade Marks Act, but left an interesting issue - whether the same defence could apply to the other claim of infringement of a related right (copyright) - to the trial judge of the pending trade mark and copyright infringement case.

It is hoped that further developments in this on-going saga would provide further direction as to the legal position regarding such species of comparative advertising in Singapore.