PT Permona v Shanghai Tobacco: Trade Mark Dispute over CHUNG HWA Brand

PT Permona, an Indonesian company, applied to register the trade mark CHUNG HWA for cigarettes. Shanghai Tobacco Group and China Tobacco Import and Export Shanghai Corporation opposed the application. The Principal Assistant Registrar allowed the opposition, and Permona appealed. The High Court dismissed the appeal, with Judicial Commissioner Woo Bih Li finding that Permona was not a bona fide proprietor of the mark and that there was a likelihood of deception and confusion among the public.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

PT Permona's trade mark application for CHUNG HWA for cigarettes was opposed by Shanghai Tobacco Group. The High Court dismissed Permona's appeal, finding an attempt to misappropriate the opponent's mark.

1.7 Decision Date

29 November 2001

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
PT Permona	Applicant, Appellant	Corporation	Appeal Dismissed	Lost	Paul Teo Kwan Soon of Drew & Napier LLC
Shanghai Tobacco Group	Opponent, Respondent	Corporation	Opposition Allowed	Won	Anjali Iyer of Haq Namazie & Selvam Farah Namazie of Haq Namazie & Selvam Johnny Yom of Haq Namazie & Selvam
China Import and Export Shanghai Corporation	Opponent, Respondent	Corporation	Opposition Allowed	Won	Anjali Iyer of Haq Namazie & Selvam Farah Namazie of Haq Namazie & Selvam Johnny Yom of Haq Namazie & Selvam

3. Judges

Judge Name	Title	Delivered Judgment
Woo Bih Li	Judicial Commissioner	Yes

4. Counsels

Counsel Name	Organization
Paul Teo Kwan Soon	Drew & Napier LLC
Anjali Iyer	Haq Namazie & Selvam
Farah Namazie	Haq Namazie & Selvam
Johnny Yom	Haq Namazie & Selvam

4. Facts

PT Permona applied to register the trade mark CHUNG HWA for cigarettes.
Shanghai Tobacco Group opposed the application, claiming prior use of the CHUNGHWA mark.
The Opponents had been manufacturing and marketing tobacco products under the CHUNGHWA brand since 1985.
The Opponents sold CHUNGHWA cigarettes through duty-free shops in Singapore.
Permona's CHUNG HWA mark was similar to the Opponents' CHUNGHWA mark.
Permona claimed its mark was derived from Chinese characters meaning Chinese culture.
The court found that the Chinese characters used by Permona had no meaning when combined.

5. Formal Citations

PT Permona v Shanghai Tobacco Group, OM No 600024 of 2001, [2001] SGHC 359

6. Timeline

Date	Event
1996-01-29	PT Permona filed a trade mark application for CHUNG HWA.
1998-04-03	The application was advertised in Gazette Notification 12/98.
1998-06-26	Notice of Opposition was lodged by Shanghai Tobacco Group and CTIESC.
1998-11-11	Pleadings were deemed closed.
1999-04-12	Xu Hu Lie's statutory declaration was dated.
1999-08-21	Ratna Tanuwidjaja declared a statutory declaration.
2001-04-26	Parties appeared before Ms Lee Li Choon.
2001-06-05	Opposition proceedings resumed.
2001-08-10	Ms Lee allowed the opposition.
2001-10-22	Appeal was dismissed by Woo Bih Li JC.
2001-11-30	Decision Date

7. Legal Issues

Trade Mark Infringement
- Outcome: The court found a likelihood of deception and confusion, leading to the dismissal of the appeal.
- Category: Substantive
- Sub-Issues:
  - Likelihood of confusion
  - Misappropriation of mark
- Related Cases:
  - [1999] 3 SLR 147
Proprietary Right to Trade Mark
- Outcome: The court concluded that Permona was not a bona fide proprietor of the mark.
- Category: Substantive
- Sub-Issues:
  - Bona fide proprietor
  - Prior use of mark
- Related Cases:
  - [1951] RPC 1
  - [1959] RPC 29

8. Remedies Sought

Registration of Trade Mark

9. Cause of Actions

Trade Mark Opposition

10. Practice Areas

Trade Mark Opposition
Intellectual Property Litigation

11. Industries

Tobacco

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Tiffany & Co v Fabriques de Tabac Reunies SA	Court of Appeal	Yes	[1999] 3 SLR 147	Singapore	Cited for the principle that use of the opposing mark is not required within the jurisdiction to establish likelihood of confusion or deception.
Vitamins Application	N/A	Yes	[1951] RPC 1	N/A	Cited for the principle that withdrawal of a prior application does not necessarily negate proprietary right.
Brown Shoes Application	N/A	Yes	[1959] RPC 29	N/A	Cited with approval of Vitamins Application for the principle that withdrawal of a prior application does not constitute complete abandonment of rights.
Future Enterprises Pte Ltd v Tong Seng Produce Pte Ltd	N/A	No	[1998] 1 SLR 1012	Singapore	Distinguished on the facts as the coffee products were produced in Singapore for export to Russia.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332)	Singapore
Trade Marks Act (Cap 332) s 12(1)	Singapore
Trade Marks Act (Cap 332) s 15(1)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

CHUNG HWA
Trade mark
Proprietor
Deception
Confusion
Duty-free shops
Chinese characters
Pagoda device

15.2 Keywords

Trade mark
CHUNG HWA
Opposition
Singapore
Intellectual property

17. Areas of Law

Area Name	Relevance Score
Trademarks	95
Trademark Infringement	90
Commercial Disputes	30
Contract Law	20

16. Subjects

Trade Mark Law
Intellectual Property