Weir Warman v Research & Development: Trade Mark Invalidity & Revocation Dispute

Weir Warman Ltd sought to invalidate and revoke trade marks registered by Research & Development Pty Ltd in Singapore. The High Court of Singapore, presided over by V K Rajah JA, dismissed the application to invalidate the trade marks, finding no bad faith or misrepresentation. The court revoked trade marks T97/13163J and T96/05662G due to lack of genuine use. Trade mark T96/0566I was partially revoked, limited to pumps and pump parts.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Application to invalidate the trade marks dismissed. Registration of trade marks T97/13163J and T96/05662G revoked. Trade mark T96/0566I partially revoked.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Dispute over 'WARMAN' trade mark registration in Singapore. Court addressed invalidity, bad faith, and revocation claims, focusing on proprietorship and genuine use.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Weir Warman LtdPlaintiffCorporationApplication to invalidate the trade marks dismissed. Registration of trade marks T97/13163J and T96/05662G revoked. Trade mark T96/0566I partially revoked.Partial
Research & Development Pty LtdDefendantCorporationTrade mark T96/0566I partially revokedPartial

3. Judges

Judge NameTitleDelivered Judgment
V K RajahJustice of the Court of AppealYes

4. Counsels

Counsel NameOrganization
M. RavindranRavindran Associates
Adrian KwongRavindran Associates
Dedar Singh GillDrew & Napier LLC
Lim Siau WenDrew & Napier LLC

4. Facts

  1. Plaintiff and defendant are Australian firms trading in products with the same name and common heritage.
  2. Defendant is the registered proprietor of three 'WARMAN' trade marks in Singapore.
  3. Plaintiff sought to invalidate and/or revoke the trade marks registered by the defendant.
  4. Charles Harold Warman (CHW) is the founder, beneficial owner, and director of the defendant.
  5. CHW's and the defendant's intellectual property rights were transferred to various parties, including the plaintiff's predecessor-in-title, Peko-Wallsend Ltd (Peko).
  6. The 1971 Agreement granted Peko the right to make and sell Products and Licensed Items anywhere in the world, except in Japan and Africa.
  7. Singapore is a Non-Exclusive Territory where both parties were free to sell relevant products under the ‘WARMAN’ trade mark.

5. Formal Citations

  1. Weir Warman Ltd v Research & Development Pty Ltd, OS 513/2006, [2007] SGHC 59

6. Timeline

DateEvent
1969 Agreement signed between CHW, Warman Investments Pty Ltd, related parties, and Peko-Wallsend Ltd.
1971 Agreement signed between CHW, the defendant, and Peko-Wallsend Ltd.
1981 Agreement signed between the parties and/or their predecessors.
First recorded sale into Singapore by the plaintiff.
Plaintiff appointed Warman Wil as Malaysian licensee and distributor with rights to sell into Singapore.
Defendant wrote to the plaintiff to formalise trade mark registration arrangements in Non-Exclusive Territories.
Plaintiff replied objecting to the defendant’s proposal to use the ‘WARMAN’ trade mark in the Non-Exclusive Territories.
Defendant registered the 'WARMAN' trade mark in Singapore for Classes 7 and 42.
Defendant registered the 'WARMAN' trade mark in Singapore for Class 37 goods and services.
Registration certificate issued for Class 37 goods and services.
Registration certificate issued for Class 7 goods.
Registration certificate issued for Class 42 goods.
Defendant and/or its subsidiaries commenced using the ‘WARMAN’ trade mark in Singapore.
Defendant sent fax to Rio Tinto Asia Pty Limited.
Meeting held in Singapore between the defendant and Andrew Tan from Hytrade.
One of the sales transactions was made with a Singapore company, Technochem Pte Ltd.
Defendant sent a letter to Leighton Contractors (Singapore) Pte Ltd.
Remaining two sales transactions were with another Singapore company, Arena International Pte Ltd.
Remaining two sales transactions were with another Singapore company, Arena International Pte Ltd.
Originating Summons No 513 of 2006 filed by the plaintiff.
Judgment reserved.

7. Legal Issues

  1. Trade Mark Invalidity
    • Outcome: The court dismissed the plaintiff's application to invalidate the trade marks, finding no bad faith, fraud, or misrepresentation.
    • Category: Substantive
    • Sub-Issues:
      • Bad faith in trade mark registration
      • Fraud in trade mark registration
      • Misrepresentation in trade mark registration
  2. Trade Mark Revocation
    • Outcome: The court revoked trade marks T97/13163J and T96/05662G. Trade mark T96/0566I was partially revoked, limited to pumps and pump parts.
    • Category: Substantive
    • Sub-Issues:
      • Genuine use of trade mark
      • Non-use of trade mark
      • Partial revocation of trade mark
  3. Proprietorship of Trade Mark
    • Outcome: The court found that both the plaintiff and the defendant had concurrent implied contractual rights to register the 'WARMAN' trade mark in Non-Exclusive Territories, including Singapore.
    • Category: Substantive
    • Sub-Issues:
      • Contractual rights to trade mark
      • Prior use of trade mark
      • Co-ownership of trade mark
  4. Implied Contractual Terms
    • Outcome: The court implied a term into the agreements between the parties that both had the right to register the 'WARMAN' trade mark in Non-Exclusive Territories.
    • Category: Substantive
    • Sub-Issues:
      • Business efficacy test
      • Officious bystander test

8. Remedies Sought

  1. Invalidation of Trade Marks
  2. Revocation of Trade Marks

9. Cause of Actions

  • Trade Mark Invalidity
  • Trade Mark Revocation

10. Practice Areas

  • Trade Mark Litigation
  • Intellectual Property Litigation

11. Industries

  • Manufacturing
  • Mining

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Rothmans of Pall Mall Limited v Maycolson International LtdHigh CourtYes[2006] 2 SLR 551SingaporeCited for the appropriate test for bad faith under s 7(6) of the Trade Marks Act.
Gromax Plasticulture Ltd v Don & Low Nonwovens LtdN/AYes[1999] RPC 367England and WalesCited for the definition of bad faith, including dealings that fall short of acceptable commercial behavior.
Demon Ale Trade MarkN/AYes[2000] RPC 345England and WalesCited for the principle that bad faith includes dealings commercially unacceptable by reasonable persons, even without legal breaches.
Forefront Medical Technology (Pte) Ltd v Modern-Pak Pte LtdN/AYes[2006] 1 SLR 927SingaporeCited for the law relating to the implication of a term in a contract, specifically the 'business efficacy' and 'officious bystander' tests.
Reigate v Union Manufacturing Company (Ramsbottom), Limited and Elton Copdyeing Company, LimitedN/AYes[1918] 1 KB 592England and WalesCited to illustrate the inclusiveness and complementarity of the ‘business efficacy’ and ‘officious bystander’ tests in practice.
Rainforest Coffee Products Pte Ltd v Rainforest Café, IncCourt of AppealYes[2000] 2 SLR 549SingaporeCited for the test for the validity of a trade mark licence, focusing on the trade connection between the proprietor and the goods.
Bostitch TMN/AYes[1963] RPC 183England and WalesCited for the principle that a valid trade mark license requires a trade connection between the proprietor and the goods.
Villanova University v Villanova Alumni Educational Foundation, IncN/AYes123 F Supp 2d 293United States of AmericaCited for the proposition that the existence of an implied trade mark licence requires evidence that permission was given to use the mark, coupled with an exercise of reasonable control over such use.
'DALIC' Trade Mark; Sifco Industries Inc v Dalic SAN/AYes[1998] 2 SLR 231SingaporeCited for the principle that the first user of a trade mark is the true owner of the mark.
Al Bassam Trade MarkN/AYes[1995] RPC 511England and WalesCited for the principle that proprietorship depends on use in the case of a used mark.
Reemtsma Cigarttenfabriken GmbH v Hugo Boss AG (No 2)N/AYes[2003] 4 SLR 155SingaporeCited for the principle that the court does not have discretion to maintain a mark on the register when grounds for revocation have been established.
Premier Brands UK Ltd v Typhoon Europe LtdN/AYes[2000] FSR 767England and WalesCited for the principle that there is no residual discretion for the Court to not revoke a trade mark if there is no good reason for the non-use.
Ansul BV v Ajax Brandbeveiliging BVEuropean Court of JusticeYes[2003] RPC 717European UnionCited for the principle that use does not have to be quantitatively significant to be genuine, provided it is sufficient to create or maintain market share.
Laboratoires Goemar SA v La Mer Technology IncCourt of AppealYes[2005] EWCA CIV 978England and WalesCited for the principle that 'genuine use' does not have to be substantial or significant, although limited use raises doubts.
Nike International Ltd v Campomar SLCourt of AppealYes[2006] 1 SLR 919SingaporeCited for the essential standard of proof required to defeat a revocation application, which is to show a genuine use of the mark during the relevant five-year period.
ELLE Trade MarksN/AYes[1997] FSR 529England and WalesCited for the view that the offer for sale of cosmetics branded ‘ELLE’ in the United Kingdom through foreign editions of the plaintiff’s magazine could qualify as genuine use, notwithstanding that there was no evidence of actual sales during the relevant period.
Floris Trade MarkN/AYes[2001] RPC 329England and WalesCited for the principle that use could be established even if there was no evidence of actual sales being made during the relevant five-year period but where there was at least evidence that the mark had been used in respect of goods which were offered for sale during that period.
800-Flowers Trade MarkN/AYes[2002] FSR 12England and WalesCited for the principle that the very idea of “use” within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area.
MINERVA Trade MarkN/AYes[2000] FSR 734England and WalesCited for the approach in the United Kingdom toward partial revocation is that it is open to the court (or Registrar) to require the specification of goods or services to be re-written in order to achieve the required degree of revocation.
Decon Laboratories Ltd v Fred Baker Scientific LtdN/AYes[2001] RPC 293England and WalesCited for the approach in the United Kingdom toward partial revocation is that it is open to the court (or Registrar) to require the specification of goods or services to be re-written in order to achieve the required degree of revocation.
Thomson Holidays Ltd v Norwegian Cruise Line LtdN/AYes[2003] RPC 586England and WalesCited for the approach in the United Kingdom toward partial revocation is that it is open to the court (or Registrar) to require the specification of goods or services to be re-written in order to achieve the required degree of revocation.
Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long (t/a Polykwan Trading Co)N/AYes[2003] 4 SLR 92SingaporeCited for the task of the court in partial revocation was to limit the specification so that it reflected the circumstances of the particular trade and the way that the public would perceive its use.
National Diaries Ltd v Xie Chun Trading Pte LtdN/AYes[1998] 1 SLR 620SingaporeCited for the principle that a registration made under fraud or with misrepresentation is one that succeeds only on the strength of an untrue statement made by the registrant.
Yomeishu Seizo Co Ltd & Anor v Sinma Medical Products (S) Pte LtdN/AYes[1991] SLR 499SingaporeCited for the principle that a registration made under fraud or with misrepresentation is one that succeeds only on the strength of an untrue statement made by the registrant.
Blanchard v HillN/AYes(1742) 2 ATK 484N/ACited for historical context of trade mark law.
Day v DayN/AYes(1816) Digest 21N/ACited for historical context of trade mark law.
Millington v FoxN/AYes(1834) 3 My & Cr 338N/ACited for historical context of trade mark law.
Glaxo Group & Others v Dowelhurst Ltd (No 2)N/AYes[2000] FSR 529N/ACited for the essential function of a trade mark.
HERMES Trade MarkN/AYes[1982] R.P.C. 425N/ACited for the principle that use could be established even if there was no evidence of actual sales being made during the relevant five-year period but where there was at least evidence that the mark had been used in respect of goods which were offered for sale during that period.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • WARMAN
  • Trade Mark
  • Invalidity
  • Revocation
  • Genuine Use
  • Bad Faith
  • Proprietorship
  • Non-Exclusive Territories
  • Pumps
  • Pump Parts
  • Manufacturing Rights
  • 1971 Agreement
  • Trade Mark License

15.2 Keywords

  • trade mark
  • invalidity
  • revocation
  • genuine use
  • bad faith
  • singapore
  • warman

17. Areas of Law

Area NameRelevance Score
Trademarks90
Trade names70
Contract Law60
Estoppel30

16. Subjects

  • Trade Marks
  • Intellectual Property
  • Contract Law