Neale v Ku De Ta: Trade Mark Infringement & Protection of Well-Known Marks
Guy Neale and others, operating as a partnership under the name 'Ku De Ta', sued Ku De Ta SG Pte Ltd in the High Court of Singapore on May 26, 2011, for trade mark infringement. The plaintiffs alleged that the defendant's use of the 'Ku De Ta' mark in Singapore infringed their rights as owners of a well-known mark protected under Section 55 of the Trade Marks Act. The defendant applied to strike out portions of the plaintiff's statement of claim, but the court dismissed the application, finding that the pleadings raised triable issues of law.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Application dismissed with costs to the plaintiffs.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Partnership operating 'Ku De Ta' in Bali sues Ku De Ta SG for trade mark infringement. The court considered the interplay between Sections 55 and 55A of the Trade Marks Act.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Guy Neale and others (suing as a partnership) | Plaintiff | Partnership | Application dismissed | Won | Kristy Tan, Sylvia Tee |
| Ku De Ta SG Pte Ltd | Defendant | Corporation | Application granted | Lost | Foo Maw Jiun |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chew Yi-Ling Elaine | Assistant Registrar | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Kristy Tan | Allen & Gledhill LLP |
| Sylvia Tee | Allen & Gledhill LLP |
| Foo Maw Jiun | Rodyk & Davidson LLP |
4. Facts
- The plaintiffs operate a restaurant and bar in Bali known as “Ku De Ta”.
- The third plaintiff registered the trade mark “KU DE TA” in Indonesia in 2000.
- The defendant opened a restaurant and bar in Singapore in 2010 also styled “Ku De Ta”.
- The defendant used two trade marks incorporating the words “Ku de Ta”.
- The trade marks were registered in Singapore in 2004 and 2009 respectively by Nine Squares Pty Ltd.
- The plaintiffs sought an order that the defendant cease using the name/mark “Ku De Ta”.
- The plaintiffs alleged that the defendant had infringed their rights as owners of a well known mark protected under s 55 of the Trade Marks Act.
5. Formal Citations
- Guy Neale and others (suing as a partnership) v Ku De Ta SG Pte Ltd, Suit No 955 of 2010 (Summons No 608 of 2011), [2011] SGHC 136
6. Timeline
| Date | Event |
|---|---|
| Trade mark “KU DE TA” registered in Indonesia by the third plaintiff. | |
| The Nine Square Registered Marks were registered in Singapore. | |
| The Nine Square Registered Marks were licensed to Chris Au. | |
| Ku De Ta SG Pte Ltd opened a restaurant and bar at Marina Bay Sands. | |
| Third plaintiff took out invalidation proceedings at the Trade Mark Registry against the Nine Squares Registered Marks. | |
| Plaintiffs’ Statement of Claim filed. | |
| Third plaintiff made an application to refer the invalidation proceedings to the High Court. | |
| Application to refer the invalidation proceedings to the High Court was denied by the Trade Mark Registry. | |
| Court dismissed the defendant’s application with costs to the plaintiffs. |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court found that the pleadings raised a triable issue of law regarding whether the defendant's use of the 'Ku De Ta' mark infringed the plaintiff's rights.
- Category: Substantive
- Sub-Issues:
- Use of similar mark
- Likelihood of confusion
- Dilution of distinctive character
- Striking Out Pleadings
- Outcome: The court dismissed the defendant's application to strike out portions of the plaintiff's statement of claim.
- Category: Procedural
8. Remedies Sought
- Injunction
- Order that the defendant cease using the name/mark “Ku De Ta”
9. Cause of Actions
- Trade Mark Infringement
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Hospitality
- Food and Beverage
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Davey v Bentinck | Queen's Bench Division | Yes | [1893] 1 QB 185 | United Kingdom | Cited as an example of a case where the statement of claim or the particulars disclose some cause of action, or raise some question fit to be decided by a judge. |
| Gabriel Peter & Partners (suing as a firm) v Wee Chong Jin and others | Court of Appeal | Yes | [1997] 3 SLR(R) 649 | Singapore | Cited for the rule that a reasonable cause of action is a cause of action which has some chance of success when only the allegations in the pleadings are considered. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 18 r 19(1)(a) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 322, 2005 Rev Ed) s 55 | Singapore |
| Trade Marks Act (Cap 322, 2005 Rev Ed) s 55A | Singapore |
| Trade Marks Act s 28 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Well-known trade mark
- Infringement
- Statement of Claim
- Striking out
- Registered trade mark
- Invalidation
- Goodwill
- Dilution
15.2 Keywords
- Trade mark infringement
- Well-known mark
- Ku De Ta
- Singapore
- Trade Marks Act
- Injunction
- Striking out
16. Subjects
- Trade Mark Law
- Intellectual Property
- Civil Procedure
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law
- Civil Procedure