PT Swakarya Indah Busana v Dhan International Exim Pte Ltd: Trade Mark Invalidity & Bad Faith Registration

In PT Swakarya Indah Busana v Dhan International Exim Pte Ltd, the High Court of Singapore heard a case regarding the invalidation of trademarks. PT Swakarya Indah Busana ("the plaintiff") sought to invalidate trademarks registered by Dhan International Exim Pte Ltd (“the defendant”). The plaintiff argued that the defendant’s mark was registered in bad faith and/or the registration was tainted with fraud. The court ruled in favor of the plaintiff, declaring the defendant's trademark invalid due to bad faith registration.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiff

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

PT Swakarya Indah Busana sought to invalidate Dhan International Exim's trademark. The court found bad faith registration and ruled in favor of PT Swakarya Indah Busana.

1.7 Decision Date

13 December 2009

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
PT Swakarya Indah Busana	Plaintiff	Corporation	Judgment for Plaintiff	Won	Sukumar Karuppiah of Ravindran Associates Justin Blaze George of Ravindran Associates
Dhan International Exim Pte Ltd	Defendant	Corporation	Claim Dismissed	Lost	Vijai Parwani of Parwani & Co

3. Judges

Judge Name	Title	Delivered Judgment
Lai Siu Chiu	Judge	Yes

4. Counsels

Counsel Name	Organization
Sukumar Karuppiah	Ravindran Associates
Justin Blaze George	Ravindran Associates
Vijai Parwani	Parwani & Co

4. Facts

Plaintiff is an Indonesian company manufacturing garments with the marks “MARTIN” and “MARTIN PACEMAKER”.
Defendant is a Singapore company that initially imported and wholesaled Indian saris.
Defendant expanded its business to include the sale of men’s shirts in 2000.
Defendant applied to register the mark “EMPEROR MARTIN” in May 2002.
Plaintiff’s shirts have been sold in Singapore since 1982 through exclusive distributors.
Defendant was a customer of MARTIN shirts and purchased them from REPL between 2005 and 2007.
Investigators found the defendant selling shirts with the label MARTIN WORLD and EMPEROR MARTIN.

5. Formal Citations

PT Swakarya Indah Busana v Dhan International Exim Pte Ltd, OS 2/2009, [2009] SGHC 280

6. Timeline

Date	Event
1971-01-01	Dhan International Exim Pte Ltd began business as a sole-proprietorship.
1982-01-01	PT Swakarya Indah Busana began selling MARTIN shirts in Singapore.
1983-07-02	Plaintiff’s second mark was registered in Indonesia.
1985-03-21	The MARFIN mark was first registered.
1987-06-29	Plaintiff’s second mark was assigned to the plaintiff.
1988-04-04	Dhan International Exim Pte Ltd registered as a Singapore company.
1989-02-16	Radha filed an application to register the plaintiff’s first mark and the MR device.
1991-10-10	Plaintiff filed an application to register the plaintiff’s second mark.
1992-01-01	Meng Lee sued Radha for trademark infringement and passing-off.
1992-05-22	Plaintiff signed a settlement agreement with Meng Lee.
2000-05-04	Meng Lee registered the mark MARTIN KING and M device.
2002-05-01	Defendant applied to register the defendant’s mark.
2003-05-01	Defendant’s mark was approved for registration.
2004-01-01	Defendant commenced selling shirts using the defendant’s mark.
2006-06-20	Plaintiff registered the plaintiff’s first mark and the plaintiff’s second mark, together with the stylized letters MR.
2007-04-11	Plaintiff registered the MR device.
2008-01-01	Plaintiff learnt of the defendant’s mark.
2008-02-21	Tan Chin Hock and Lau Weida visited the defendant’s shop.
2008-02-22	Tan Chye Soon visited the defendant’s office.
2009-12-14	Judgment reserved.

7. Legal Issues

Bad Faith Registration
- Outcome: The court found that the defendant’s mark was registered in bad faith in breach of s 7(6) and/or s 23(4) of the Act.
- Category: Substantive
- Sub-Issues:
  - Intention to use the mark
  - Copying of existing marks
  - Deception of customers
Fraudulent Registration
- Outcome: The court found that the defendant’s mark was registered in bad faith in breach of s 7(6) and/or s 23(4) of the Act.
- Category: Substantive
- Sub-Issues:
  - Misrepresentation
  - Actual deception
  - Omission of material facts

8. Remedies Sought

Declaration of Invalidity of Trademark
Revocation of Trademark

9. Cause of Actions

Invalidation of Trademark
Bad Faith Registration
Fraudulent Registration

10. Practice Areas

Trade Mark Litigation
Intellectual Property Litigation

11. Industries

Fashion
Retail

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
DALIC Trade Mark	High Court	Yes	[1998] 2 SLR 231	Singapore	Cited for the principle that the proprietor of a used trade mark is the person who first used it.
Weir Warman Ltd v Research & Development Pty Ltd	Singapore courts	Yes	[2007] 2 SLR 1073	Singapore	Cited for a similar application by the plaintiff in the action to invalidate and revoke a trade mark pursuant to ss 23(1) and 7(6) of the Act.
McDonald’s Corp v Future Enterprises Pte Ltd	Court of Appeal	No	[2005] 1 SLR 177	Singapore	Cited for the high standard of proof required for an allegation of bad faith.
Nautical Concept Pte Ltd v Jeffery Mark Richard and another	unknown	Yes	[2007] 1 SLR 1071	Singapore	Cited for reiterating the high standard of proof required for an allegation of bad faith.
Rothmans of Pall Mall Limited v Maycolson International Ltd	High Court	Yes	[2006] 2 SLR 551	Singapore	Cited for addressing the issue of bad faith under s 7(6) of the Act.
Gromax Plasticulture v Don & Low Nonwovens	UK courts	Yes	[1999] RPC 367	United Kingdom	Cited for attempting to define the concept of “bad faith”.
Harrison v Teton Valley Trading Co Ltd	unknown	Yes	[2004] 1 WLR 2577	United Kingdom	Cited for dealing with the issue of bad faith.
Bentley Motors (1931) Ld v Lagonda, Ld and Walker Owen Bentley	unknown	Yes	(1947) 64 RPC 33	United Kingdom	Cited for the test of fraud.
Yomeishu Seizo Co Ltd and another v Sinma Medical Products (S) Pte Ltd	High Court	Yes	[1991] SLR 499	Singapore	Cited for adopting Justice Roxburgh’s dictum on fraud.
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd	Court of Appeal	Yes	[2009] 2 SLR 814	Singapore	Cited for adopting Justice Roxburgh’s dictum on fraud.
Betty’s Kitchen Coronation Street Trade Mark	UK Trade Mark Registrar	Yes	[2000] RPC 825	United Kingdom	Cited for the principle that the mark applied for is an attempt by the applicants to put sufficient distance between themselves and the opponents for the purposes of securing a registration but without the mark being a true reflection of what is conceded to be the intended and actual form of use.
Ferrero SpA’s Trade Marks	unknown	Yes	[2004] RPC 29	unknown	Cited for the principle that bad faith did not exclude from consideration matters which occurred after the date of application; they may assist in determining the applicant’s state of mind at the date of registration.
Tesco Stores Ltd’s Trade Mark Applications	unknown	Yes	[2005] RPC 17	unknown	Cited for following the principle in Ferrero’s case.
The Polo/Lauren Co LP v Shop-In Department Store Pte Ltd	Court of Appeal	Yes	[2006] 2 SLR 690	Singapore	Cited for the principle that a distinctiveness of a common English word like MARTIN can be acquired through usage.
Demon Ale Trade Mark	unknown	Yes	[2000] RPC 345	United Kingdom	Cited for the principle that the defendant did not have a bona fide intention of using the mark in the form that was applied to be registered.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

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

15. Key Terms and Keywords

15.1 Key Terms

Trade Mark
Bad Faith
Fraud
EMPEROR MARTIN
MARTIN
MARTIN PACEMAKER
Registration
Infringement
Goodwill
Reputation
Tailored Mark

15.2 Keywords

Trade Mark
Invalidity
Bad Faith
Registration
Singapore
MARTIN
EMPEROR MARTIN

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Unfair Competition	70
Fraud and Deceit	60
Contract Law	30

16. Subjects

Trade Marks
Intellectual Property