Singapore: N.V. Sumatra Tobacco Trading Co. v. Thai Boon Roong Co. Ltd.

The Honourable Justice Rajendran recently gave his ruling on two originating motions (in which the same parties, Sumatra Tobacco Trading Co. ("STTC") and Thai Boon Roong Co. Ltd. ("TBR") were involved. The dispute in both motions revolved around two registered trade marks : "JET" (TM No. 2111/85) and "Lion Head Device" (TM No. 4440/88) which were used together on cigarette packets under the name JET.

STTC sought the following orders :

(a) that the "Lion Head Device" was an entry wrongfully remaining on the Register and

(b) that the Trade Marks Register be rectified by the removal of TBR as the proprietor of the "Lion Head Device".

The grounds relied on by STTC were :

(a) that at the time of application to register its trade mark, TBR had no bona fide intention to use the said mark in relation to the goods covered by the registration; and there had in fact been no bona fide use of the mark by TBR up to one month before the date of STTC’s application for cancellation of the mark; and

(b) that there had been no bona fide use of the trade mark for a continuous period of at least 5 years up to one month before the date of STTC’s application.

TBR also sought similar orders with regard to STTC’s "JET" trade mark. It is pertinent to note that this trade mark had previously belonged to one R.J. Reynolds Tobacco Company ("RJR") and was subsequently assigned to STTC.

TBR relied on the following grounds in its application :

(a) there had been no bona fide use of the trade mark by STTC or RJR (while they were the registered proprietors of the mark) for a continuous period of 5 years up to one month before the date of TBR’s application;

(b) when RJR purportedly assigned "JET" to STTC, the former had already abandoned the mark; and

(c) the trade mark was likely to cause confusion and/or deception by reason of STTC obtaining a purported assignment of the trade mark from RJR at a time when STTC were contract manufacturers for TBR cigarettes bearing inter alia the "JET" trade mark.

In allowing STTC’s application and dismissing TBR’s application, the judge held that;

(a) The "Lion Head Device" was to be taken off the register as TBR’s activities did not constitute "use" of their mark. TBR also did not use or attempt to use their "Lion Head Device" in Singapore thereby failing to have any reputation or goodwill in the mark.

(b) STTC had manufactured and marketed in various countries the cigarettes bearing the mark in question. Further, coupled with the fact that STTC had obtained the necessary permits to trade in Singapore, STTC had expressed a clear intention of using the mark in Singapore.

(c) Although the number of cigarettes sold was small, the court was satisfied that these sales were genuine and not merely "token sales frantically entered in order only to protect the trade mark from attack". Accordingly, TBR’s first ground failed.

(d) Upon considering the evidence adduced, the court was not satisfied that RJR had abandoned its rights to the trade mark.

(e) With regard to TBR’s third ground i.e. that STTC’s mark, if left on the Register would cause confusion or deception vis-à-vis the public, the court held that there was no evidence that TBR was selling any cigarettes in Singapore bearing the name JET at the time the "JET" trade mark was registered by RJR. As such, there was no evidence of confusion or deception at the time of first registration. Similarly, there was no evidence of any confusion or deception arising out of the assignment of the mark to STTC.

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