Wing Joo Loong v Qinghai Xinyuan: Trade Mark Revocation & Copyright Dispute over 'Rooster Brand' Cordyceps

In Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another, the Singapore High Court addressed a claim by Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd to revoke and invalidate Trade Mark Registration No. T9508502Z, concerning the 'Rooster Brand' trade mark for cordyceps, owned by Qinghai Xinyuan Foreign Trade Co Ltd. The plaintiff also sought a declaration that the defendants did not possess copyright in the Rooster mark labels. The court, presided over by Justice Kan Ting Chiu, dismissed the trade mark revocation and invalidation claims, finding that the mark had not become a common name and that the plaintiff had not proven fraud or misrepresentation. However, the court granted a declaration that any copyright in the Rooster labels did not subsist in favor of the first defendant, Qinghai Xinyuan Foreign Trade Co Ltd.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Prayers 1 and 2 dismissed with costs. With reference to prayer 3, the declaration is made, restricted to the first defendant.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Singapore High Court judgment on trade mark revocation and copyright dispute involving the 'Rooster Brand' cordyceps. The court dismissed the trade mark revocation and invalidation claims but granted a declaration against copyright.

1.7 Decision Date

8 April 2008

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
YCT Import & Export Pte Ltd	Defendant	Corporation	Prayer 3 costs to be paid by the plaintiff.	Neutral	Wendy Lin of Rajah & Tann Lau Kok Keng of Rajah & Tann Charissa Soh of Rajah & Tann
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd	Plaintiff	Corporation	Prayers 1 and 2 dismissed with costs. Prayer 3 declaration made, restricted to the first defendant.	Partial	Tan Tee Jim of Lee & Lee Alma Yong of Lee & Lee Christopher de Souza of Lee & Lee
Qinghai Xinyuan Foreign Trade Co Ltd	Defendant	Corporation	Prayers 1 and 2 granted. Prayer 3 declaration made against the first defendant.	Partial	M. Ravindran of Ravindran Associates Vicki Heng of Ravindran Associates

3. Judges

Judge Name	Title	Delivered Judgment
Kan Ting Chiu	Judge	Yes

4. Counsels

Counsel Name	Organization
Wendy Lin	Rajah & Tann
Lau Kok Keng	Rajah & Tann
Charissa Soh	Rajah & Tann
Tan Tee Jim	Lee & Lee
Alma Yong	Lee & Lee
Christopher de Souza	Lee & Lee
M. Ravindran	Ravindran Associates
Vicki Heng	Ravindran Associates

4. Facts

The plaintiff sought to revoke and invalidate the 'Rooster Brand' trade mark for cordyceps.
The Rooster trade mark was registered in Singapore with effect from 6 September 1995.
The first registered owner was Qinghai Medicines & Health Products Import & Export Corp of Qinghai, China ('Qinghai Meheco').
Ownership was assigned to the first defendant, Qinghai Xinyuan Foreign Trade Co, on 30 May 2003.
The plaintiff claimed the Rooster mark had become the common name for cordyceps from China.
The first defendant granted an exclusive license to Yu Ceng Trading Pte Ltd in 2005, later novated to YCT Import & Export Pte Ltd.
The first defendant claimed copyright to the Rooster mark labels and alleged infringement by the plaintiff.

5. Formal Citations

Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and Another, OS 2038/2006, [2008] SGHC 51

6. Timeline

Date	Event
1950-01-01	Rooster trade mark used for cordyceps in China.
1983-01-01	Trade mark registration began in China.
1985-01-01	China Cereals Qinghai Branch registered the Rooster mark in China for cordyceps.
1989-01-01	Rights to the Rooster mark were assigned to Qinghai Meheco.
1995-01-01	Assignment of Rooster mark to Qinghai Meheco approved and recorded in China.
1995-09-06	Qinghai Meheco applied to register the Rooster trade mark in Singapore.
2001-08-27	Certificate of registration for Rooster trade mark issued in Singapore, backdated to 1995.
2003-05-30	Ownership of the Rooster mark assigned to Qinghai Xinyuan Foreign Trade Co.
2005-01-01	Qinghai Xinyuan granted an exclusive license to Yu Ceng Trading Pte Ltd to use the Singapore trade mark.
2005-01-01	Yu Ceng applied for and obtained search warrants, leading to a raid on the plaintiff's premises.
2006-01-01	Yu Ceng's license was novated in favor of the second defendant, YCT Import & Export Pte Ltd.
2006-01-01	Transfer of the Singapore trade mark to Qinghai Xinyuan recorded, backdated to 2003.
2006-11-15	Plaintiff seeks revocation of Trade Mark Registration No. T9508502Z.
2008-04-09	Judgment reserved.

7. Legal Issues

Trade Mark Revocation
- Outcome: The court dismissed the application for trade mark revocation.
- Category: Substantive
- Sub-Issues:
  - Mark becoming common name in trade
  - Non-use or suspension of use of mark
  - Mark being customary
  - Mark capable of distinguishing
  - Application made in bad faith
  - Registration obtained through fraud or misrepresentation
Copyright Infringement
- Outcome: The court granted a declaration that any copyright in the Rooster labels did not subsist in favor of the first defendant.
- Category: Substantive
- Sub-Issues:
  - Proprietorship of copyright
  - Onus of proof on proprietor
  - Third party never claiming ownership

8. Remedies Sought

Order to revoke Trade Mark Registration No. T9508502Z
Order to declare Trade Mark Registration No. T9508502Z invalid
Declaration that any copyright in the Rooster labels does not subsist in favor of the Defendants

9. Cause of Actions

Trade Mark Revocation
Trade Mark Invalidity
Copyright Infringement

10. Practice Areas

Trade Mark Revocation
Copyright Infringement
Intellectual Property Litigation

11. Industries

Pharmaceuticals
Herbal Medicine
Import/Export

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Hormel Foods Corporation v Antilles Landscape Investments NV	UK Court of Appeal	Yes	[2005] RPC 28	United Kingdom	Cited as persuasive authority for construing s 3(1)(d) of the 1994 UK Trade Marks Act, equivalent to Singapore's s 7(1)(d), regarding signs that have become generic.
Philips Electronics NV v Remington Consumer Products Ltd	UK Court of Appeal	Yes	[1999] RPC 809	United Kingdom	Cited regarding the capability of a trade mark to distinguish goods, focusing on the features of the trade mark itself.
Bach and Bach Flower Remedies Trade Marks	UK Court of Appeal	Yes	[2000] RPC 513	United Kingdom	Cited regarding the capability of a trade mark to distinguish goods, considering the surrounding circumstances and usage at the time of application.
Premier Brands UK Ltd v Typhoon Europe Ltd	High Court of the UK	Yes	[2000] FSR 767	United Kingdom	Cited regarding the construction of s 46(1) of the UK Act, equivalent to Singapore's s 22(1), concerning revocation of trade marks.
Scandecor Development AB v Scandecor Marketing AB	House of Lords	Yes	[2002] FSR 122	United Kingdom	Cited regarding whether the court must revoke a trade mark when circumstances under s 46(1) of the UK Act exist.
Reemtsma Cigarettenfabriken GmbH v Hugo Boss AG (No 2)	High Court	Yes	[2003] 4 SLR 155	Singapore	Cited regarding the interpretation of 'may' in s 22 of the Trade Marks Act, concerning the court's discretion in revoking a trade mark.
Weir Warman Ltd v Research & Development Pty Ltd	High Court	Yes	[2007] 2 SLR 1073	Singapore	Cited regarding the interpretation of 'may' in s 22 of the Trade Marks Act, concerning the court's discretion in revoking a trade mark.
Nation Fittings (M) Sdn Bhd v Oystertec Plc and Another Suit	High Court	Yes	[2006] 1 SLR 712	Singapore	Cited regarding the interpretation of 'may' in s 22 of the Trade Marks Act, concerning the court's discretion in revoking a trade mark.
Davidoff Extension SA v Davidoff Commercio E Industria Ltda	High Court	Yes	[1987] SLR 462	Singapore	Cited regarding the court's discretion under s 39 of the Trade Marks Act to rectify the register.
Re Jaguar Trademark	High Court	Yes	[1993] 2 SLR 466	Singapore	Cited regarding the court's discretion under s 39 of the Trade Marks Act to rectify the register.
Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd and Another and Another Appeal	Court of Appeal	Yes	[2000] 3 SLR 145	Singapore	Cited regarding the court's discretion under s 39(1)(a) of the Trade Marks Act.
In re Hill’s Trade Mark	Not Available	Yes	(1893) 10 RPC 113	Not Available	Cited regarding the principle that in trade mark rectification proceedings, the question is between the state and the respondent, not the applicant and respondent.
Browne v Dunn	Not Available	Yes	(1893) 6 R 67	Not Available	Cited regarding the rule that a party should disclose its evidence when cross-examining the witnesses of the other party.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)	Singapore
Trade Marks Act (Cap 332, 1992 Ed)	Singapore
Trade Marks Act (Cap 206, 1976 Rev Ed)	Singapore
Interpretation Act (Cap 1, 2002 Rev Ed)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Rooster Brand
Cordyceps
Trade Mark Revocation
Trade Mark Invalidity
Copyright
Common Name
Bad Faith
Misrepresentation
Capability to Distinguish
Customary
Infringement

15.2 Keywords

trade mark
copyright
cordyceps
rooster brand
revocation
invalidity
singapore
intellectual property

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Copyrights	85
Evidence	40
Contract Law	20

16. Subjects

Trade Mark Law
Copyright Law
Intellectual Property
Cordyceps
Trade Mark Registration