Case Summary: Charlotte Pipe Casting Company v. Yitai (Shanghai) Plastics Co., Ltd. [2020] SGIPOS 14-Lexology

2021-11-24 06:05:19 By : Mr. Mr. SDGH

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In the case of two companies in the pipeline industry, the intellectual property arbitrator clearly pointed out the importance of providing sufficient relevant evidence to support the argument of trademark opposition. Arguments that are not supported by relevant evidence are leaked at best, and even large companies cannot let their reputation speak for themselves when they claim to be well-known.

Essentially, in order to ensure that their arguments do not fall into the sewers, practitioners should ensure that the evidence they use:

Yitai (Shanghai) Plastics Co., Ltd. (the "Applicant") is a company headquartered in Shanghai, China, engaged in the manufacturing and supply of plastic valves, fittings and other products, as well as the production, design and development of industrial piping systems. The applicant applied for the 17, 19 and 20 trademarks for its pipeline products. The trademark application is for the trademark "" ("application for trademark").

Charlotte Pipe and Foundry Company ("Opponent") is a company headquartered in Charlotte, North Carolina, USA, engaged in the manufacturing of pipes and industrial system pipes and fittings. The company was founded in 1901 and its products are sold and distributed globally to Latin America, the Middle East, Oceania and Asia, including Singapore. The dissident has registered the trademark "" in category 06, designating cast iron pipes and pipe fittings ("the registered trademark of the dissident").

The opponent also claimed that it was the common law owner of various related trademarks that were not registered in Singapore, including the following trademarks covering category 6 (cast iron pipes and fittings) and category 17 (plastic pipes and fittings) ("Opponent" Unregistered trademark ") Score"):

The opponent objected to the application for trademark registration based on the following reasons:

(a) According to Article 8(2)(b) of the Trademark Law ("TMA"), the trademark applied for is similar to the registered trademark of the earlier opponent and is used for the same or similar goods and services;

(b) According to Article 8(4)(b)(i) read together with Article 8(4)(a) of the TMA, the opponent’s unregistered trademark is well known in Singapore, and the use of the applied And the other party may harm the other party's interests; and

(c) According to Article 8(7)(a) of the TMA, the use of the applied trademark may be blocked under the counterfeiting law that protects the opponent’s unregistered trademark.

(a) s 8(2)(b) TMA: The applied trademark is similar to the registered trademark of the earlier opponent, and is used for the same or similar goods and services

The opponent initially seemed to rely on the opponent’s registered trademark as the prior trademark in the statutory declaration submitted by him, claiming that the opponent’s registered trademark was an early trademark under Article 2(1) of the TMA because it was registered in Singapore with a trademark registration date of June 9, 2017, earlier than the date of publication on October 6, 2017, pending applications for trademarks.

However, the application date for the international registration of the registered trademark in Singapore is October 7, 2015. In this regard, the intellectual property reviewer fully agrees with the applicant's position that the relevant priority date for the trademark application should be 7 October 2015. Since it was before the opponent's registered trademark entered the trademark register, the opponent's registered trademark was not the "prior trademark" specified in Article 2(1) of the TMA. Therefore, the grounds for objection raised under Article 8(2)(b) of the TMA are not valid.

(b) s 8(4)(b)(i) read together with Article 8(4)(a) of TMA: the opponent’s unregistered trademark is well known in Singapore, and the use of the applied trademark will indicate that there is a connection between the applicants And the other party that may harm the other party's interests

The opponent also tried to treat the opponent's unregistered trademark as a "well-known trademark", according to Article 2(1) of the TMA, read together with ss 2(7) and 2(8). To this end, the opponent needs to prove that at least one of his unregistered trademarks was a well-known trademark on October 7, 2015 (the "relevant date").

The opponent claimed that the opponent's unregistered trademark has been widely used. Although the dissident provided a large amount of evidence to support its position, the intellectual property arbitrator believed that the only evidence supporting the dissident’s well-known argument about the dissenter’s unregistered trademark was some sample invoices they provided.

Generally speaking, the remaining evidence of the opponent does not help support its well-known argument about the opponent's unregistered trademark:

Since the only evidence supporting the opponent’s well-known argument about his unregistered trademark is some sample invoices, which show some sales of products using the opponent’s "" trademark in Singapore, the intellectual property adjudicator believes that the opponent’s future cannot be determined. Registered trademarks are widely known in Singapore. Therefore, the objections read under Article 8(4)(b)(i) of the TMA are not valid.

(c) s 8(7)(a) TMA: According to the counterfeiting law that protects the counterparty's unregistered trademark, the use of the applied trademark may be blocked

In order to succeed on the basis of this opposition, the adversary must establish the classic trinity of counterfeiting: goodwill, misrepresentation, and damage.

The Intellectual Property Adjudicator decided that the date for determining the goodwill of the opponent was the filing date of the application for international registration of a trademark designated Singapore, that is, October 7, 2015. This is because the applicant failed to submit any conclusive evidence to use the application mark in Singapore before that date. Based on the evidence of the other party’s sales income in Singapore, the intellectual property arbitrator determined that the other party has the necessary goodwill in Singapore.

Although there is no direct evidence that the applicant deliberately misled or deceived consumers, because the applicant did not explain how its trademark was generated and the trademark applied for is similar to the opponent’s "" trademark, it is inferred that the applicant deliberately copied the opponent's "" mark . Therefore, the possibility of confusion was determined, and the elements of false statements were discovered.

The intellectual property adjudicator further believes that, given that both parties are competitors supplying the same series of products, it is indisputable that the applicant's deliberate misrepresentation will adversely affect the opponent's goodwill through customary transfer. Therefore, according to Article 8(7)(a) of the Trademark Law, the opposing party won the case on the grounds of opposition.

(a) The importance of providing sufficient and relevant evidence

The decision emphasized the importance of providing sufficient and relevant evidence to support the arguments made in respect of trademark opposition matters. Although the other party argued that their trademark was well-known, their argument failed due to lack of relevant evidence to support their claim. This reminds us that even large companies cannot let their reputation speak for themselves without providing relevant evidence that they are indeed well known.

Essentially, in order to ensure that their arguments do not fall into the sewers, practitioners should ensure that the evidence they use:

(b) The importance of pleadings

A preliminary question in this case is which signs the opponent can rely on as his objection. The applicant objected to the dissenter's reliance on the dissenter's unregistered trademark on the grounds that it was not part of the case sued by the dissenter. The dissenting party did not mention its unregistered trademark in its grounds for dissent, but only mentioned it for the first time in the written statement submitted for the dissenting party.

Although the intellectual property adjudicator accepted the opponent's argument based on its unregistered trademark, because there were sufficient references in his complaint and the evidence of common law rights in the opponent's unregistered trademark, although it was reluctant to do so. In doing so, the intellectual property adjudicator pointed out that “there are still many shortcomings in the petition of the opponent because the opponent did not fully list all the marks that he clearly intended to use for his opposition” and “the opponent’s case It might be better and more clearly defended."

(c) Reconsider the approach taken: How many reasons should be presented in a trademark opposition case?

Under this circumstance, the intellectual property adjudicator decided that among the three grounds for objecting, after the opponent wins, he is entitled to one-third of the fees. Therefore, practitioners should be aware of the potential cost consequences when proposing untenable reasons that are not supported by evidence. Practitioners should consider whether they should adopt the "arguing everything" approach, or choose their arguments wisely to exclude arguments that leak evidence at best. 

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