Bluestar Exchange v Teoh Keng Long: Trade Mark Revocation & Use of Variants
Bluestar Exchange (Singapore) Pte Ltd applied to the High Court of Singapore to revoke the registered trade mark of Teoh Keng Long and others (trading as Polykwan Trading Co). The trade mark consisted of a star device and the words 'BLUE STAR'. Bluestar Exchange argued that Polykwan Trading had not genuinely used the trade mark in Singapore within the five-year period following registration. The court, presided over by Justice Woo Bih Li, dismissed the application, finding that Polykwan Trading's use of variants of the trade mark constituted genuine use and that partial revocation was not warranted. The court ordered Bluestar Exchange to pay costs.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Application dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Bluestar Exchange sought to revoke Polykwan Trading's trade mark. The court dismissed the application, finding genuine use despite variants.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Bluestar Exchange (Singapore) Pte Ltd | Applicant | Corporation | Application Dismissed | Lost | Wong Siew Hong, Tay Sock Kheng |
| Teoh Keng Long | Respondent | Individual | Application Dismissed | Won | Dedar Singh Gill, Paul Teo |
| Teo King Ann | Respondent | Individual | Application Dismissed | Won | Dedar Singh Gill, Paul Teo |
| Wong Sin Chong | Respondent | Individual | Application Dismissed | Won | Dedar Singh Gill, Paul Teo |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Woo Bih Li | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Wong Siew Hong | Infinitus Law Corporation |
| Tay Sock Kheng | Infinitus Law Corporation |
| Dedar Singh Gill | Drew & Napier LLC |
| Paul Teo | Drew & Napier LLC |
4. Facts
- Bluestar Exchange sought to revoke Polykwan Trading's registered trade mark consisting of a star device and the words 'BLUE STAR'.
- Polykwan Trading had registered the trade mark for men's undergarments, sports clothing, knitwear, and swimwear.
- Polykwan Trading used variants of the trade mark with different placements and sizes of the star device.
- Bluestar Exchange argued that the variants did not constitute genuine use of the registered trade mark.
- Bluestar Exchange also argued for partial revocation, claiming the registration was too broad.
- Polykwan Trading presented evidence of sales of products bearing the trade mark in Singapore.
- Bluestar Exchange was aware of the Registered Trade Mark before commencing business in Singapore.
5. Formal Citations
- Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long and others (trading as Polykwan Trading Co), OM 6/2003, [2003] SGHC 169
6. Timeline
| Date | Event |
|---|---|
| Respondents became registered proprietors of the Registered Trade Mark | |
| Respondents began using a variant of the Registered Trade Mark | |
| Hawthorne Enterprises Ltd applied to register the Bluestar Exchange mark in classes 18, 25 and 35 in Singapore | |
| Bluestar Exchange (Singapore) Pte Ltd was incorporated | |
| Bluestar Exchange commenced business in Singapore | |
| Lee & Lee, solicitors of Exclusive Garments Manufacturing Sdn Bhd and the Respondents, wrote to the Applicant alleging trade mark infringement | |
| Complaint made against the Applicant at the Subordinate Courts and a search warrant was obtained | |
| Execution of the search warrant at the Applicant’s retail outlet at Jurong Point Shopping Centre was halted by a magistrate | |
| Respondents filed an action in the High Court against the Applicant alleging infringement of the Registered Trade Mark | |
| Hearing held regarding the validity of the search warrant; no order was made | |
| Clothing sold by the Applicant that might have infringed the Registered Trade Mark was delivered to the Criminal Investigation Department Intellectual Property Rights Branch | |
| Respondents obtained another search warrant | |
| Second search warrant executed and clothing seized | |
| Applicant filed the present application by way of Originating Motion | |
| Applicant sought and obtained an adjournment of the hearing of the charges pending the outcome of the application | |
| The application was dismissed | |
| Decision Date |
7. Legal Issues
- Trade Mark Revocation
- Outcome: The court held that the use of variants of the trade mark did not alter its distinctive character and constituted genuine use, thus denying the revocation.
- Category: Substantive
- Sub-Issues:
- Non-use of trade mark
- Use of variants of trade mark
- Distinctive Character of Trade Mark
- Outcome: The court found that the distinctive character of the trade mark was the combination of the words 'BLUE' and 'STAR', not the specific location or size of the star device.
- Category: Substantive
- Sub-Issues:
- Dominant elements of trade mark
- Impact of alterations on distinctive character
- Partial Revocation of Trade Mark
- Outcome: The court determined that the existing registration was not unduly wide and declined to order partial revocation.
- Category: Substantive
- Sub-Issues:
- Scope of goods and services covered by trade mark
- Fairness to proprietor and public
8. Remedies Sought
- Revocation of Registered Trade Mark
- Partial Revocation of Registered Trade Mark
9. Cause of Actions
- Revocation of Registered Trade Mark
10. Practice Areas
- Trade Marks
- Intellectual Property Litigation
11. Industries
- Fashion
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Bud and Budweiser Budbrau Trade Marks | High Court | Yes | [2002] RPC 38 | United Kingdom | Cited regarding the interpretation of Section 46(2) of the UK Trade Marks Act 1994, concerning alterations to a trade mark's distinctive character. |
| ELLE Trade Marks | N/A | Yes | [1997] FSR 529 | N/A | Cited for the principle that it is not necessary to consider the UK equivalent of Section 17 (on a series of trade marks) when considering whether the use of a mark was in a form which altered the distinctive character of the mark in question. |
| Decon Laboratories Ltd v Fred Baker Scientific Ltd | N/A | Yes | [2001] RPC 17 | N/A | Cited regarding partial revocation of a trade mark under Section 46(5) of the UK Trade Marks Act and how the specification of goods should be narrowed to reflect non-use. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 1992 Ed) s 22(1)(a) | Singapore |
| Trade Marks Act (Cap 332, 1992 Ed) s 22(2) | Singapore |
| Trade Marks Act (Cap 332, 1992 Ed) s 22(7) | Singapore |
| Trade Marks Act s 27(1) | Singapore |
| Trade Marks Act s 27(4)(c) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Revocation
- Distinctive Character
- Genuine Use
- Variants
- Partial Revocation
- Trade Marks Act
- Registration
- Infringement
15.2 Keywords
- trade mark
- revocation
- distinctive character
- genuine use
- variants
- partial revocation
- Bluestar Exchange
- Polykwan Trading
16. Subjects
- Trade Mark Revocation
- Intellectual Property
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law