Guy Neale v Nine Squares: Trust, Trade Marks & Ku De Ta Brand Dispute
In Guy Neale and others v Nine Squares Pty Ltd, the Singapore Court of Appeal heard an appeal regarding the ownership and use of the 'Ku De Ta' trade marks registered in Singapore. The appellants, Guy Neale and others, are the partners of Ku De Ta Bali. They claimed that Nine Squares Pty Ltd, the registered proprietor of the Singapore trade marks, held these marks on trust for the Partnership. The Court of Appeal reversed the High Court's decision, declaring that Nine Squares held the Singapore Marks on an express trust for the Partnership and ordering the transfer of the trade mark registrations and an account of profits derived from their exploitation.
1. Case Overview
1.1 Court
Court of Appeal1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Written Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Singapore Court of Appeal: Nine Squares held 'Ku De Ta' trade marks on trust for the Partnership, reversing the lower court's decision.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Guy Neale | Appellant | Individual | Appeal Allowed | Won | Ang Cheng Hock, William Ong, Kristy Tan, Clara Tung |
| Aki Kotzamichalis | Appellant | Individual | Appeal Allowed | Won | Ang Cheng Hock, William Ong, Kristy Tan, Clara Tung |
| Made Wiranatha | Appellant | Individual | Appeal Allowed | Won | Ang Cheng Hock, William Ong, Kristy Tan, Clara Tung |
| White Horses Trading Company Limited | Appellant | Corporation | Appeal Allowed | Won | Ang Cheng Hock, William Ong, Kristy Tan, Clara Tung |
| White Horses Investments Limited | Appellant | Corporation | Appeal Allowed | Won | Ang Cheng Hock, William Ong, Kristy Tan, Clara Tung |
| Nine Squares Pty Ltd | Respondent | Corporation | Appeal Dismissed | Lost | Cavinder Bull, Kelvin Tan, Priscilla Lua, Lee Xin Jie |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Sundaresh Menon | Chief Justice | Yes |
| Chao Hick Tin | Justice of the Court of Appeal | No |
| Andrew Phang Boon Leong | Justice of the Court of Appeal | No |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Ang Cheng Hock | Allen & Gledhill LLP |
| William Ong | Allen & Gledhill LLP |
| Kristy Tan | Allen & Gledhill LLP |
| Clara Tung | Allen & Gledhill LLP |
| Cavinder Bull | Drew & Napier LLC |
| Kelvin Tan | Drew & Napier LLC |
| Priscilla Lua | Drew & Napier LLC |
| Lee Xin Jie | Drew & Napier LLC |
4. Facts
- The appellants are the partners of Ku De Ta Bali.
- Nine Squares Pty Ltd is the registered proprietor of the Singapore Marks.
- Chondros, a partner in Ku De Ta Bali, set up Nine Squares.
- The appellants claimed Nine Squares held the Singapore Marks on trust.
- Chondros made statements in Australian proceedings that Nine Squares held the Overseas Marks on trust for the Partnership.
- The other partners asserted their right to license the Ku De Ta name.
- Chondros did not object to the Email Memorandum asserting the Partnership's rights.
5. Formal Citations
- Guy Neale and others v Nine Squares Pty Ltd, Civil Appeal No 172 of 2013, [2014] SGCA 64
- Guy Neale and others v Nine Squares Pty Ltd, Suit No 314 of 2011, [2013] SGHC 249
- Guy Neale and others v Ku de Ta SG Pte Ltd, Suit No 955 of 2010, [2013] SGHC 250
6. Timeline
| Date | Event |
|---|---|
| Chondros located a site for development in Bali | |
| Founders entered into Heads of Agreement | |
| Indonesian Mark registered in Class 42 | |
| Ku De Ta name registered as a trade mark in Australia | |
| Chondros incorporated Nine Squares | |
| Founders agreed Chondros would be paid a management fee | |
| Chondros and Ellaway assigned the Australian Mark to Nine Squares | |
| Nine Squares applied to WIPO for international registration of Ku De Ta | |
| Singapore Trade Mark No T0405181Z registered | |
| Chondros told Aki and Kadek he had registered Overseas Marks | |
| Partnership meeting held at Ku De Ta Bali | |
| Neale sent Email Memorandum to all Founders | |
| Collins agreed to purchase 10% of Ku De Ta Bali from Chondros | |
| Founders re-executed the 2000 HOA | |
| Chondros assigned 10% of his stake in Ku De Ta Bali to WH Trading | |
| Chondros confronted Ellaway | |
| Nine Squares entered into licence agreement with Chris Au | |
| Singapore Trade Mark No T0907126DF registered | |
| Au assigned his rights to KDTSG | |
| Ellaway resigned as a director of Nine Squares | |
| KDTSG and Au commenced legal proceedings in Victoria, Australia | |
| Australian proceedings were settled | |
| Collins acquired a further 6.5% of Ku De Ta Bali from Chondros | |
| KDTSG opened Ku De Ta Singapore | |
| Partnership commenced Suit 955 against KDTSG | |
| Partnership started Suit 314 against Nine Squares | |
| WH Investments acquired a further 4% stake in Ku De Ta Bali from Chondros | |
| Judgment reserved |
7. Legal Issues
- Express Trust
- Outcome: The Court of Appeal held that Nine Squares held the Singapore Marks on an express trust for the Partnership.
- Category: Substantive
- Sub-Issues:
- Certainty of Intention
- Certainty of Subject Matter
- Certainty of Objects
- Related Cases:
- [1977] 1 WLR 527
- [1975] 1 WLR 279
- [2000] Ch 291
- Constructive Trust
- Outcome: The Court of Appeal found it unnecessary to decide on the constructive trust issue, but indicated that if Chondros had caused Nine Squares to register the Singapore Marks for his own benefit, it would have constituted a breach of fiduciary duty and given rise to a constructive trust.
- Category: Substantive
- Sub-Issues:
- Breach of Fiduciary Duty
- Usurpation of Corporate Opportunity
- Misappropriation of Partnership Property
- Related Cases:
- [2014] UKSC 45
- Trade Mark Infringement
- Outcome: The Court of Appeal did not need to consider the issue of trade mark infringement, as it had already found that the Singapore Marks were held on trust for the Partnership.
- Category: Substantive
8. Remedies Sought
- Declaration of Trust
- Transfer of Trade Mark Registration
- Account of Profits
9. Cause of Actions
- Breach of Trust
- Misappropriation of Partnership Assets
10. Practice Areas
- Commercial Litigation
- Intellectual Property Litigation
11. Industries
- Hospitality
- Entertainment
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Ball v Eden Project Ltd | High Court | No | [2002] 1 BCLC 313 | England and Wales | Cited regarding the acquisition of goodwill in a trademark, whether registered or not, depending on the extent and nature of its use. |
| Paul v Constance | Court of Appeal | Yes | [1977] 1 WLR 527 | England and Wales | Cited as an example of an express trust created by means of an informal declaration. |
| Tito v Waddell (No 2) | High Court | Yes | [1977] Ch 106 | England and Wales | Cited for the principle that a trust may be created without using the word 'trust', based on the circumstances and the true construction of what was said and written. |
| Re Kayford Ltd | High Court | Yes | [1975] 1 WLR 279 | England and Wales | Cited for the principle that an express trust can be inferred from the acts of a company, such as establishing a separate bank account for customer payments, indicating an intention to hold the moneys for the benefit of the customers. |
| Re Farepak Food and Gifts Ltd (in liquidation) | High Court | No | [2010] 1 BCLC 444 | England and Wales | Cited as a case where the court considered the intention of the company but found that an express trust had not been created because of the preference that would otherwise arise in the context of insolvency. |
| Re Chelsea Cloisters Ltd (In liquidation) | Court of Appeal | Yes | (1981) 41 P & CR 98 | England and Wales | Cited for the principle that a trust can be inferred from the nature of the transaction, by looking at the evidence of the receiver’s intentions in setting up a bank account for a specific purpose. |
| Don King Productions Inc v Warren | High Court | Yes | [2000] Ch 291 | England and Wales | Cited for the principle that parties have the freedom to contract to create trusts over the fruits of agreements, even if the agreements themselves are non-assignable. |
| Ladd v Marshall | Court of Appeal | Yes | [1954] 1 WLR 1489 | England and Wales | Cited for the principles governing the admissibility of new evidence after a trial. |
| Paragon Finance plc v DB Thakerar & Co | Court of Appeal | Yes | [1991] 1 All ER 400 | England and Wales | Cited for the definition of a constructive trust as arising by operation of law whenever it would be unconscionable for the owner of property to assert their own beneficial interest and deny the beneficial interest of another. |
| Westdeutsche Landesbank Girozentrale v Islington London Borough Council | House of Lords | Yes | [1996] 2 WLR 802 | England and Wales | Cited for the principle that the equitable jurisdiction to impose trusts depends on the conscience of the holder of the property being affected. |
| FHR European Ventures LLP and others v Cedar Capital Partners LLC | Supreme Court | Yes | [2014] UKSC 45 | United Kingdom | Cited for clarifying the law on whether a bribe or secret commission received by an agent is held by him on trust for his principal, and for the principle that a principal is entitled to all the benefits acquired by a fiduciary in breach of their duties. |
| Tyrrell v Bank of London | House of Lords | No | (1862) 10 HL Cas 26 | United Kingdom | Cited as one of the cases surveyed by the UK Supreme Court in FHR European Ventures LLP v Cedar Capital Partners LLC to clarify the law on constructive trusts and fiduciary duties. |
| Lister & Co v Stubbs | Court of Appeal | No | (1890) 45 Ch D 1 | England and Wales | Cited as one of the cases surveyed by the UK Supreme Court in FHR European Ventures LLP v Cedar Capital Partners LLC to clarify the law on constructive trusts and fiduciary duties. |
| Sinclair Investments (UK) Ltd v Versailles Trade Finance Ltd | Court of Appeal | No | [2012] Ch 453 | England and Wales | Cited as one of the cases surveyed by the UK Supreme Court in FHR European Ventures LLP v Cedar Capital Partners LLC to clarify the law on constructive trusts and fiduciary duties. |
| Attorney General for Hong Kong v Reid | Privy Council | Yes | [1994] 1 AC 324 | Hong Kong | Cited as a case approved by the UK Supreme Court in FHR European Ventures LLP v Cedar Capital Partners LLC, concerning the holding of benefits acquired by a fiduciary in breach of their duties on trust for the principal. |
| Thahir Kartika Ratna v PT Pertambangan Minyak dan Gas Bumi Negara (Pertamina) | Court of Appeal | Yes | [1994] 3 SLR(R) 312 | Singapore | Cited as a case where the Singapore Court of Appeal approved the Privy Council case of Attorney General for Hong Kong v Reid, concerning the holding of benefits acquired by a fiduciary in breach of their duties on trust for the principal. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Ku De Ta
- Partnership
- Trade Marks
- Express Trust
- Constructive Trust
- Fiduciary Duty
- Corporate Opportunity
- Goodwill
- Licence Agreement
- Overseas Marks
- Singapore Marks
15.2 Keywords
- Ku De Ta
- Trade Marks
- Trust
- Partnership
- Singapore
- Intellectual Property
16. Subjects
- Trusts
- Trade Marks
- Partnerships
- Intellectual Property
17. Areas of Law
- Trust Law
- Trade Mark Law
- Partnership Law
- Intellectual Property Law