P. T. Swakarya Indah Busana v Haniffa: Trade Mark Invalidation for Bad Faith Registration

In P. T. Swakarya Indah Busana against Haniffa Pte Ltd and another, the Singapore High Court, presided over by Justice Lee Seiu Kin, ruled in favor of the plaintiff, P. T. Swakarya Indah Busana, declaring the defendant's 15 trademarks invalid. The plaintiff argued that the defendant's trademark registrations were made in bad faith and were tainted with fraud and/or misrepresentation, seeking to capitalize on the plaintiff's established "Martin" brand. The court found that the defendants registered the challenged marks in bad faith, intending to take advantage of the plaintiff's brand recognition.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Declaration granted that the registrations of the Challenged Marks are invalid.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

The High Court declared the defendant's trademarks invalid due to bad faith registration, as they sought to capitalize on the plaintiff's established 'Martin' brand.

1.7 Decision Date

29 March 2012

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Haniffa Pte Ltd	Defendant	Corporation	Claim Dismissed	Lost	Alban Kang of ATMD Bird & Bird LLP Deryne Sim Lifen of ATMD Bird & Bird LLP
Another	Defendant	Other	Claim Dismissed	Lost	Alban Kang of ATMD Bird & Bird LLP Deryne Sim Lifen of ATMD Bird & Bird LLP
P. T. Swakarya Indah Busana	Plaintiff	Corporation	Judgment for Plaintiff	Won	Sukumar Karuppiah of Ravindran Associates Sue-Ann Li of Ravindran Associates

3. Judges

Judge Name	Title	Delivered Judgment
Lee Seiu Kin	Judge	Yes

4. Counsels

Counsel Name	Organization
Alban Kang	ATMD Bird & Bird LLP
Deryne Sim Lifen	ATMD Bird & Bird LLP
Sukumar Karuppiah	Ravindran Associates
Sue-Ann Li	Ravindran Associates

4. Facts

Plaintiff manufactures garments bearing the 'MARTIN' and 'MARTIN PACEMAKER' marks.
Plaintiff's predecessor registered the Martin Pacemaker Mark in Indonesia in 1979.
Defendants are related companies; directors/shareholders overlap.
First defendant purchased shirts bearing the Martin Pacemaker Mark from the plaintiff since 1995.
Defendants registered the 'St Martin' mark in 2002.
Defendants registered the 'Martin Classic' mark in 2003.
Defendants registered the Challenged Marks between 2002 and 2010.

5. Formal Citations

P. T. Swakarya Indah Busana v Haniffa Pte Ltd and another, Originating Summons No 486 of 2010, [2012] SGHC 69

6. Timeline

Date	Event
1962-01-01	Mohd Haniffa started selling textiles.
1976-01-01	First defendant incorporated.
1979-01-01	Predecessor to the Martin Pacemaker Mark registered in Indonesia.
1982-01-01	Plaintiff's shirts bearing the Martin Pacemaker Mark have been sold in Singapore.
1983-07-02	Martin Pacemaker Mark updated in Indonesia.
1987-06-29	Martin Pacemaker Mark assigned to the plaintiff.
1992-05-22	Settlement agreement between plaintiff and Meng Lee Shirt Company.
1995-01-01	Plaintiff's Singapore distributor has been Radha Exports Pte Ltd.
1995-01-01	First defendant started purchasing shirts bearing the Martin Pacemaker Mark.
2002-03-01	Abdul Samad took over the position of managing director from his father.
2002-01-01	Second defendant incorporated.
2002-04-01	Abdul Samad met Marcus Han.
2002-08-13	Registration of the 'St Martin' mark.
2003-05-28	The “Martin Classic” mark was registered by the second defendant.
2004-01-01	Shirts bearing the Martin Mark have been sold.
2005-01-11	First registration of the Challenged Marks by the second defendant.
2006-06-20	Plaintiff registered Martin Mark and Martin Pacemaker Mark in Singapore.
2007-04-11	Plaintiff registered “MR” and Crown Device in Singapore.
2009-03-03	Assignment of three marks from the first defendant to the second defendant.
2010-01-18	Assignment of three marks from the first defendant to the second defendant.
2010-01-21	Registration of trade mark T1000630H.
2012-03-30	Judgment reserved.

7. Legal Issues

Bad Faith Registration of Trade Marks
- Outcome: The court found that the defendants had registered the Challenged Marks in bad faith, intending to take advantage of the plaintiff's fame.
- Category: Substantive
- Sub-Issues:
  - Intention to take advantage of the fame of another's brand
  - Failure to meet normally accepted standards of commercial behaviour
Fraud and/or Misrepresentation in Trade Mark Registration
- Outcome: The court found that the plaintiff did not adduce sufficient evidence to prove fraud or misrepresentation.
- Category: Substantive

8. Remedies Sought

Declaration that the 15 trademarks are invalid

9. Cause of Actions

Trade Mark Invalidation

10. Practice Areas

Trade Mark Invalidation
Intellectual Property Litigation

11. Industries

Fashion
Retail

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Mobil Petroleum Co, Inc v Hyundai Mobis	Singapore Court of Appeal	Yes	[2008] 4 SLR(R) 427	Singapore	Cited for the principle that the burden of proving bad faith lies on the party asserting it.
Nautical Concept Pte Ltd v Jeffery Mark Richard and another	Singapore High Court	Yes	[2007] 1 SLR(R) 1071	Singapore	Cited for the principle that a high standard of proof is required to prove bad faith.
Festina Lotus SA v Romanson Co Ltd	Singapore High Court	Yes	[2010] 4 SLR 552	Singapore	Cited for the principle that the relevant time for assessing bad faith is the date of application to register the mark.
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and another and another appeal	Singapore Court of Appeal	Yes	[2009] 2 SLR(R) 814	Singapore	Cited for the summary of what constitutes bad faith in trade mark registration.
Harrison v Teton Valley Trading Co Ltd	English Court of Appeal	Yes	[2004] 1 WLR 2577	England and Wales	Cited with approval for its explanation of bad faith in trade mark registration.
Weir Warman Ltd v Research & Development Pty Ltd	Singapore High Court	Yes	[2007] 2 SLR(R) 1073	Singapore	Cited 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.
National Dairies Ltd v Xie Chun Trading Pte Ltd	Singapore High Court	Yes	[1997] 2 SLR(R) 969	Singapore	Cited as an example of obtaining registration by fraud.
Yomeishu Seizo Co Ltd v Sinma Medical Products (S) Pte Ltd	Singapore High Court	Yes	[1991] 1 SLR(R) 246	Singapore	Cited as an example of a serious issue of fraud in relation to trade mark registration.

13. Applicable Rules

Rule Name
Trade Marks Rules (Cap 332, rule 1)

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)	Singapore
Companies Act 1967 (Act 42 of 1967)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark
Bad faith
Martin Mark
Martin Pacemaker Mark
Challenged Marks
Goodwill
Infringement
Registration
Invalidation

15.2 Keywords

Trade mark
Bad faith
Martin
Invalidation
Singapore

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Trademark Infringement	85
Misrepresentation	30
Fraud and Deceit	30
Contract Law	20

16. Subjects

Trade Mark Law
Intellectual Property
Trade Mark Invalidation