Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd: Trade Mark Invalidity & Distinctiveness
Courts (Singapore) Pte Ltd appealed against the IP Adjudicator's decision to dismiss its application for invalidity of Big Box Corporation Pte Ltd's trade mark 'BIG BOX'. The High Court of Singapore, presided over by Justice George Wei, dismissed the appeal, holding that the trade mark was inherently distinctive at the time of application and did not lack distinctiveness under Sections 7(1)(b), (c), and (d) of the Trade Marks Act. The court found that the term 'BIG BOX' was not descriptive or generic in the Singapore market at the application date.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Appeal dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Appeal against IP Adjudicator's decision refusing invalidity of 'BIG BOX' trade mark. The court examines distinctiveness and registration criteria.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| COURTS (SINGAPORE) PTE LTD | Appellant | Corporation | Appeal dismissed | Lost | |
| BIG BOX CORPORATION PTE LTD | Respondent | Corporation | Appeal dismissed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judge | Yes |
4. Counsels
4. Facts
- The Economic Development Board launched a warehouse retail scheme in 2004.
- Big Box Corporation Pte Ltd applied to register the trade mark 'BIG BOX' in 2005.
- Courts (Singapore) Pte Ltd opened a retail warehouse store in Tampines in 2012.
- Big Box Corporation Pte Ltd opened a mall under the 'BIG BOX' trade mark in 2014.
- Courts (Singapore) Pte Ltd applied for a declaration of invalidity of the 'BIG BOX' trade mark in 2015.
- The IP Adjudicator refused Courts' application for a declaration of invalidity.
- The application for the US Trade Mark was filed in 2013.
5. Formal Citations
- Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd, Tribunal Appeal No 12 of 2017, [2018] SGHC 81
6. Timeline
| Date | Event |
|---|---|
| Economic Development Board launched warehouse retail scheme. | |
| Economic Development Board issued media release. | |
| Big Box Corporation Pte Ltd incorporated. | |
| Big Box Corporation Pte Ltd applied to register the Subject Mark. | |
| Proprietor applied to register the Subject Mark. | |
| Urban Redevelopment Authority issued circular. | |
| Courts (Singapore) Pte Ltd opened retail warehouse store in Tampines. | |
| Big Box Corporation Pte Ltd opened the Mall under the Subject Mark. | |
| Courts placed advertisements for its Tampines store. | |
| Big Box Corporation Pte Ltd sent cease and desist letter to Courts. | |
| Courts (Singapore) Pte Ltd applied for a declaration of invalidity. | |
| Big Box Corporation Pte Ltd filed its counter-statement. | |
| IP Adjudicator refused the application for a declaration of invalidity. | |
| Hearing date. | |
| Hearing date. | |
| Judgment reserved. |
7. Legal Issues
- Trade Mark Invalidity
- Outcome: The court held that the trade mark was not invalid.
- Category: Substantive
- Sub-Issues:
- Lack of Distinctiveness
- Descriptiveness
- Genericness
- Distinctiveness of Trade Mark
- Outcome: The court held that the trade mark possessed inherent distinctiveness at the Application Date.
- Category: Substantive
- Sub-Issues:
- Inherent Distinctiveness
- Acquired Distinctiveness
8. Remedies Sought
- Declaration of Invalidity of Trade Mark
9. Cause of Actions
- Application for Declaration of Invalidity of Trade Mark
10. Practice Areas
- Trade Mark Registration
- Trade Mark Invalidity
11. Industries
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd | Intellectual Property Office of Singapore | Yes | [2017] SGIPOS 5 | Singapore | The decision of the IP Adjudicator that was appealed against in the current judgment. |
| Polo/Lauren Co LP v United States Polo Association | Singapore High Court | Yes | [2016] 2 SLR 667 | Singapore | Cited for the principle that an appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the Registrar. |
| Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd | Singapore Court of Appeal | Yes | [2017] 2 SLR 308 | Singapore | Cited for the principle that the words “shall be by way of rehearing” in O 87 r 4(2) directs the appellate court to hear the matter afresh, and there is no threshold requirement of general application that a “material error of fact or law” be shown before appellate intervention is warranted in such appeals. |
| Ho Soo Fong and another v Standard Chartered Bank | Singapore High Court | Yes | [2007] 2 SLR(R) 181 | Singapore | Cited for the principle that where only written evidence is involved, an appellate court will be in as good a position as the trial court to make its own evaluation from the primary facts. |
| Love & Co Pte Ltd v The Carat Club Pte Ltd | Singapore High Court | Yes | [2009] 1 SLR(R) 561 | Singapore | Cited for the principle that the critical date for assessing distinctiveness is the date of application for registration. |
| Registrar v W & G Du Cros Ltd | UK House of Lords | Yes | [1913] 30 RPC 660 | United Kingdom | Cited for the principle that distinctiveness can be tested by asking whether other traders in the ordinary course of business might want to use the same or similar mark in relation to their own goods or services without any improper motive. |
| “Weldmesh” Trade Mark | UK High Court | Yes | [1966] RPC 220 | United Kingdom | Cited for the principle that the privilege of a monopoly should not be conferred where it might require honest men to look for a defence [to an infringement action]. |
| Re Colorcoat Trade Mark | UK High Court | Yes | [1990] RPC 511 | United Kingdom | Cited for the principle that the privilege of a monopoly should not be conferred where it might require honest men to look for a defence [to an infringement action]. |
| Procter & Gamble Company v OHIM (BABY DRY) | European Court of Justice | Yes | [2002] RPC 17 | European Union | Cited in relation to the issue of whether defences should be taken into account in determining distinctiveness. |
| Nichols Plc’s Trade Mark Application | UK High Court | Yes | [2003] RPC 16 | United Kingdom | Cited in relation to the issue of whether defences should be taken into account in determining distinctiveness. |
| Nichols Plc v Registrar of Trade Marks | European Court of Justice | Yes | [2005] RPC 12 | European Union | Cited for the principle that the fact that the effects of registration of the trade mark were limited by the exceptions under the applicable European Union law had no impact on the assessment of distinctiveness. |
| Société des Produits Nestlé SA and another v Petra Foods Ltd and another | Singapore Court of Appeal | Yes | [2017] 1 SLR 35 | Singapore | Cited for the principle that it is necessary when considering s 7(1)(d) of the Act to take account of “the perception of the body of traders [who] may in turn be influenced and be affected by the perception of the average consumer and vice versa because of the close interaction between traders and consumers all the time |
| Praktiker Bau- und Heimwerkermärkte AG v Deutsches Patent- und Markenamt | European Court of Justice | Yes | [2005] ETMR 88 | European Union | Cited for the principle that retail service marks can be registered provided there is a satisfactory description of those services in the specification. |
| Nutricia International BV v Société des Produits Nestlé SA | Intellectual Property Office of Singapore | Yes | [2009] SGIPOS 6 | Singapore | Cited by the Applicant in relation to dictionary evidence. |
| G3 Enterprises Inc v Barcardi & Company Limited | Intellectual Property Office of Singapore | Yes | [2014] SGIPOS 6 | Singapore | Cited by the Applicant in relation to dictionary evidence. |
| Siemens AG v Sunonwealth Electric Machinery Industry Co Ltd | Intellectual Property Office of Singapore | Yes | [2007] SGIPOS 4 | Singapore | Cited by the Applicant in relation to dictionary evidence. |
| Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehor Walter Huber and Franz Attenberger | European Court of Justice | Yes | [1999] ETMR 585 | European Union | Cited for the principle that if the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied. |
| Matratzen Concord AG v Hukla Germany SA | European Court of Justice | Yes | [2006] ETMR 48 | European Union | Cited for the principle that because of linguistic, cultural, social and economic differences between member states of the EU, a trade mark which is devoid of distinctive character or is descriptive of the goods or services concerned in one member state may not be so in another member state. |
| salesforce.com, Inc v European Intellectual Property Office (“SOCIAL.COM”) | European Union General Court (Third Chamber) | Yes | Case T-134/15 | European Union | Cited by the IP Adjudicator in relation to the argument that the Subject Mark was comparable to that in salesforce.com. |
| Ferrero SPA v Sarika Connoisseur Café Pte Ltd | Singapore High Court | Yes | [2011] SGHC 176 | Singapore | Cited for the principle that great care and circumspection must be taken with respect to market surveys. |
| Merck & Co Inc v Smith Kline Beecham Plc (JERYL LYNN Trade Mark) | UK High Court | Yes | [1999] FSR 491 | United Kingdom | Cited for the principle that where a particular product is only obtainable from one source, identifying the product will inevitably mean that the source is indirectly identified as well. |
13. Applicable Rules
| Rule Name |
|---|
| Order 55 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) |
| Order 87 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) |
| Order 87 rule 4(2) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) |
| Rule 19(1) of the Trade Mark Rules (Cap 332, R 1, 2000 Rev Ed) |
| Rule 19(4) of the Trade Mark Rules (Cap 332, R 1, 2000 Rev Ed) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 23(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 7(1)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 7(1)(c) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 7(1)(d) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 7(2) | Singapore |
| s 23(9) | Singapore |
| s 101(c)(i) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Distinctiveness
- Invalidity
- Warehouse Retail Scheme
- Big Box
- Retail Services
- Application Date
- Generic
- Descriptive
- Trade Mark Act
15.2 Keywords
- trade mark
- invalidity
- distinctiveness
- big box
- singapore
- intellectual property
- retail
- warehouse
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 95 |
| Distinctiveness | 90 |
| Trademark Infringement | 80 |
| Trademark Law | 75 |
| Administrative Law | 20 |
| Civil Procedure | 15 |
16. Subjects
- Trade Marks
- Intellectual Property
- Commercial Law