Rothmans v Maycolson: Trade Mark Registration Opposition & Bad Faith
Rothmans of Pall Mall Limited appealed against the decision of the Principal Assistant Registrar of Trade Marks, which allowed Maycolson International Ltd's trade mark application to proceed to registration. Rothmans opposed the registration based on similarity to their existing trademarks, passing off, copyright infringement, and bad faith. The High Court allowed Rothmans' appeal, finding that Maycolson acted in bad faith by attempting to capitalize on Rothmans' goodwill and reputation.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Rothmans opposed Maycolson's trade mark registration. The court allowed the appeal, finding Maycolson acted in bad faith by attempting to capitalize on Rothmans' goodwill.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Rothmans of Pall Mall Limited | Applicant | Corporation | Appeal Allowed | Won | |
| Maycolson International Ltd | Respondent | Corporation | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lai Siu Chiu | Judge | Yes |
4. Counsels
4. Facts
- Applicant is the registered proprietor of numerous trade marks in Class 34.
- Respondent filed a trade mark application for a mark containing the word “Fairlight”.
- Applicant commenced opposition proceedings against the Respondent’s application.
- The Hertlein brothers, licensors of the Respondent, were involved in prior litigation with the Applicant.
- The Respondent is a company incorporated in the British Virgin Islands with a 'care of' address in Singapore.
- The Hertlein brothers placed online advertisements claiming that “Fairlight” cigarettes were similar in taste and packaging to “Rothmans” cigarettes.
5. Formal Citations
- Rothmans of Pall Mall Limited v Maycolson International Ltd, OM 40/2005, [2006] SGHC 51
6. Timeline
| Date | Event |
|---|---|
| Respondent filed Trade Mark Application No T03/00663B | |
| Applicant commenced opposition proceedings | |
| Applicant filed Notice of Motion No 40 of 2005 | |
| Judgment reserved |
7. Legal Issues
- Bad Faith
- Outcome: The court found that the Respondent acted in bad faith by attempting to capitalize on the Applicant's goodwill and failing to inquire into the origins of the mark.
- Category: Substantive
- Sub-Issues:
- Failure to inquire into bona fides of mark
- Attempt to capitalize on goodwill
- Wilful blindness
- Opposition to Registration of Trade Mark
- Outcome: The court found that the marks were not similar enough to cause confusion, but the application was rejected due to bad faith.
- Category: Substantive
- Sub-Issues:
- Similarity of marks
- Likelihood of confusion
8. Remedies Sought
- Reversal of Registrar's decision
- Disallowance of trade mark registration
- Costs
9. Cause of Actions
- Opposition to trade mark registration
10. Practice Areas
- Trade Mark Registration
- Intellectual Property Litigation
11. Industries
- Tobacco
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Harrison v Teton Valley Trading Co Ltd | English Court of Appeal | Yes | [2004] 1 WLR 2577 | England and Wales | Cited to determine the appropriate test for bad faith in trade mark registration, emphasizing the importance of an applicant's mental state and the duty to inquire into the bona fides of a mark. |
| Kundry SA’s Application: Opposition by the President and Fellows of Harvard College | N/A | Yes | [1998] ETMR 178 | N/A | Cited as authority for the view that an application would be tainted with bad faith if an applicant knew of the opponent and its concern about the possibility of confusion, and did not respond to the allegations. |
| PT Permona v Shanghai Tobacco Group | High Court | Yes | [2001] SGHC 359 | Singapore | Cited for the principle that the court attached significant weight to the existence of misconduct by the parties and their motives for registration. |
| Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd | N/A | Yes | [1999] RPC 367 | N/A | Cited for the formulation of bad faith, including dishonesty and dealings falling short of acceptable commercial behavior. |
| Twinsectra Ltd v Yardley | N/A | Yes | [2002] 2 AC 164 | N/A | Cited for the combined test for dishonesty, drawing guidance from precedents in trust law. |
| Royal Brunei Airlines Sdn Bhd v Tan | N/A | Yes | [1995] 2 AC 378 | N/A | Cited for the principle that honest people would not deliberately close their eyes and ears and refrain from asking questions, lest they obtain information they would rather not know. |
| McDonald’s Corp v Future Enterprises Pte Ltd | High Court | Yes | [2005] 1 SLR 177 | Singapore | Cited for the principle that an allegation of bad faith is a serious matter and should not be lightly inferred. |
| Demon Ale Trade Mark | N/A | Yes | [2000] RPC 345 | N/A | Cited for the principle that the expression “bad faith” has moral overtones which appear to make it possible for an application for registration to be rendered invalid by behaviour which otherwise involves no breach of any legally binding duty. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) Section 7(6) | Singapore |
| Trade Marks Act (Cap 332, 1999 Rev Ed) Section 8(2)(b) | Singapore |
| Trade Marks Act (Cap 332, 1999 Rev Ed) Section 8(4) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Registration
- Opposition
- Bad faith
- Likelihood of confusion
- Goodwill
- Passing off
- Injunction
- Commercial behaviour
15.2 Keywords
- Trade mark registration
- Bad faith
- Rothmans
- Fairlight
- Opposition
- Singapore
- Intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Trade names | 80 |
| Intellectual Property Law | 70 |
| Contract Law | 30 |
16. Subjects
- Trade Marks
- Intellectual Property
- Commercial Law