The Singapore High Court has recently delivered a judgement clarifying, among other things, the legal position concerning shape marks.

In a recent case, a UK-registered company, Oystertec Plc ("the plaintiff"), secured a search warrant and conducted a raid on the premises of Best Ceramic Pte Ltd in 2004. 950 pipe fittings, which were retailed and supplied by Best Ceramic and Nation Fittings (M) Sdn Bhd ("the defendants") respectively, were seized by the plaintiff.

Following correspondence from the plaintiff threatening legal action, Nation Fittings initiated legal proceedings alleging groundless threat. The plaintiff's defence was that the seized pipe fittings had infringed two of its trade marks which were registered in respect of "pipe fittings" under the repealed Trade Marks Act ("the old Act"). These marks each consisted of a 2-D plan view drawing of the plaintiff's pipe fittings, one of which also bore the words "CONEX SANBRA".

The plaintiff subsequently sued Best Ceramic for trade mark infringement and passing off. Best Ceramic refuted these claims and counter-claimed for groundless threat, revocation for non-use and/or invalidation of the plaintiff's registered trade marks.

The issues and arguments dealt with by the Court were manifold. For the sake of brevity, this article focuses is on the following issue raised in the plaintiff's infringement case:

  • Whether or not the transitional provisions of the current Trade Marks Act ("the current Act") operated to "convert" the plaintiff’s 2-D marks registered under the old Act into 3-D shape marks under the present Act, without the plaintiff having to file fresh applications under the current Act.

Considering the applicable law, the Court held in favour of the defendants. The hearing judge, Phang J, determined as an irrefutable fact at the outset that shape marks (here Phang J appears to have interpreted "shape" narrowly to exclude 2-D shapes) were, as the term implied, 3-D in nature. Further, prior to the coming into force of the current Act in 1999 (which allows for such 3-D shape marks), only 2-D marks could be registered. He went on to hold that the plaintiff's argument that the transitional provisions automatically "converted" the original 2-D marks into 3-D ones was untenable.

The Court also made the following other findings and orders in relation to the remaining claims and counter-claims by the parties:

  1. On the facts of the case, the marks in question were neither identical nor confusingly similar. The defendants had therefore not infringed the plaintiff's marks (Notably, Phang J also commented obiter that there ought to be the requirement that an alleged infringing use must also constitute use as a trade mark).

  2. In light of the findings in relation to the alleged trade mark infringement, the plaintiff had made a groundless threat of infringement proceedings. An injunction restraining the plaintiff from continuing such threats was granted, with a further order for an assessment of damages (if any) sustained by the defendants as a result of the plaintiff's groundless threat.

  3. In view of the lack of convincing evidence of use of the plaintiff’s marks in, or not substantially differing from, the form in which they were registered, its registrations ought to be revoked for non-use.

  4. The plaintiff’s registrations ought to be invalidated as the marks concerned did not satisfy the definition of a trade mark and were devoid of distinctive character.

  5. As the elements of goodwill, misrepresentation and damage required to establish a passing off claim were not made out, there was no basis for the claim that Best Ceramic had passed off Nation Fittings’ pipe fittings as those of the plaintiff.

Apart from providing comprehensive guidance on the Court's approach in relation to trade mark infringement, this case serves as a wake-up call to trade mark owners who have so far only registered their "shape" marks under the old Act. If 3-D shape mark protection is indeed sought for such marks, it is strongly recommended that trade mark owners rely on the current law by now applying for registration of their "shape" marks (especially those originally registered only in 2-D form without depth or perspective) as 3-D shapes. In doing so, trade mark owners would be well-advised to seek professional advice as there are potential distinctiveness and registrability issues associated with such "unconventional" marks that may need to be addressed.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.