Love & Co v The Carat Club: Trade Mark Invalidity & Revocation for 'LOVE'

1. Case Overview

2. Parties and Outcomes

3. Judges

4. Counsels

4. Facts

1. The Carat Club registered the “LOVE” mark in Singapore for jewellery, precious stones, and precious metals.
2. Love & Co, specializing in rings and wedding bands, launched stores in Malaysia and Singapore in November 2007.
3. Love & Co received a demand letter from The Carat Club's Malaysian company alleging trade mark infringement.
4. Love & Co sought to invalidate The Carat Club's “LOVE” mark registration.
5. The Carat Club also has a registered “the LOVE Diamond” mark.
6. The Carat Club could not provide sales turnover or advertising expenditure specifically for the “LOVE” mark.
7. Other jewellery stores use the word “LOVE” to describe and market their jewellery.

5. Formal Citations

1. Love & Co Pte Ltd v The Carat Club Pte Ltd, OS 225/2008, [2008] SGHC 158

6. Timeline

7. Legal Issues

1. Invalidity of Trade Mark Registration
   • Outcome: The court declared the trade mark invalid, finding it lacked distinctive character and designated the intended purpose of jewellery.
   • Category: Substantive
   • Sub-Issues:
     • Whether registered proprietor's word mark satisfied definition of 'trade mark'
     • Whether registered proprietor's word mark capable of distinguishing
     • Whether registered proprietor's word mark had acquired distinctive character by the time of registration
     • Whether registered proprietor's word mark designated an intended purpose of jewellery per s 7(1)(c)
     • Whether registered proprietor's word mark customary in the current language or established practices of the trade
2. Revocation of Trade Mark for Non-Use
   • Outcome: The court revoked the trade mark registration due to non-use, finding no genuine use of the mark in its registered form.
   • Category: Substantive
   • Sub-Issues:
     • Burden of proving use
     • Glaring absence of use of registered proprietor's trade mark in pristine form which was a word mark in plain typeface
     • Whether sporadic use of a fanciful mark bearing same word as the former and more widespread use of another fanciful trademark with the same word embedded within it tantamount to simultaneous use of the plain word mark
3. Grounds for Refusal of Registration
   • Outcome: The court found the trade mark should have been refused registration due to lack of distinctive character and designation of intended purpose.
   • Category: Substantive
   • Sub-Issues:
     • Whether registered proprietor's word mark caught under the four absolute grounds for refusal of registration
     • Whether registered proprietor's word mark had acquired distinctive character by virtue of usage and thus rescued by s 23(2) Trade Marks Act (Cap 332, 2005 Rev Ed)
4. Registration Criteria
   • Outcome: The court found that the mark was capable of being graphically represented and capable of distinguishing the proprietor's goods from another's.
   • Category: Substantive
   • Sub-Issues:
     • Whether registered proprietor's word mark capable of being graphically represented and capable of distinguishing proprietor's goods from another's

8. Remedies Sought

1. Invalidation of Trade Mark
2. Revocation of Trade Mark

9. Cause of Actions

• Trade Mark Invalidity
• Trade Mark Revocation

10. Practice Areas

• Trade Mark Registration
• Trade Mark Revocation
• Trade Mark Invalidity

11. Industries

• Retail
• Jewellery

12. Cited Cases

13. Applicable Rules

14. Applicable Statutes

15. Key Terms and Keywords

17. Areas of Law

16. Subjects

• Trade Marks
• Trade Names
• Intellectual Property