Digi International Inc v Teraoka Seiko Co., Ltd: Trade Mark Registration, Co-existence Agreement & Distinctiveness

Digi International Inc appealed against the Intellectual Property Adjudicator’s decision to refuse the registration of Trade Mark No. 40201700142X, while Teraoka Seiko Co., Ltd cross-appealed the refusal to grant its opposition under s 7(6) of the Trade Marks Act. The High Court dismissed both the appeal and cross-appeal, upholding the Adjudicator's decision to refuse registration based on ss 8(2)(b), 8(4)(b)(i), and 8(7)(a) of the Trade Marks Act, while dismissing the opposition under s 7(6).

1. Case Overview

1.1 Court

General Division of the High Court

1.2 Outcome

Appeal and cross-appeal dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Appeal regarding trade mark registration refusal. The court considered co-existence agreements, distinctiveness, and likelihood of confusion.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Digi International Inc.AppellantCorporationAppeal DismissedLost
Teraoka Seiko Co., LtdRespondentCorporationCross-Appeal DismissedWon

3. Judges

Judge NameTitleDelivered Judgment
Dedar Singh GillJudgeYes

4. Counsels

Counsel NameOrganization
Tan Gim Hai AdrianTSMP Law Corporation
Yeoh Jean AnnTSMP Law Corporation
Tang Li Ling YvonneDrew & Napier LLC
Ruby ThamDrew & Napier LLC
Edsmond Cheong Qi YiDrew & Napier LLC

4. Facts

  1. Digi International Inc. is a company focused on connecting things, starting with intelligent multiport serial boards for personal computers.
  2. Teraoka Seiko Co., Ltd began selling electronic scales named “DIGI” in 1971.
  3. In 2002, Digi International Inc. and Teraoka Seiko Co., Ltd entered into an agreement arising out of a trade mark opposition in Germany.
  4. The 2002 Agreement permitted Digi International Inc. to register defined marks for data processing devices and computers, excluding uses concerning weighing and/or measuring.
  5. The 2002 Agreement permitted Teraoka Seiko Co., Ltd to register defined marks for spring scales, electronic scales, packaging machines, and related equipment.
  6. Digi International Inc. launched the Application Mark in 2015 to give its corporate logo a new brand identity.
  7. The Application Mark was intended to replace the mark identical to the Appellant’s Old Mark (Singapore).

5. Formal Citations

  1. Digi International Inc v Teraoka Seiko Co, Ltd, Tribunal Appeal No 7 of 2020, [2021] SGHC 165

6. Timeline

DateEvent
Teraoka Seiko Co., Ltd founded.
Teraoka Seiko Co., Ltd began selling electronic scales named “DIGI”.
Digi International Inc. constituted as Digiboard Inc.
Respondent’s Mark (Singapore) filed.
Teraoka Seiko Co., Ltd used the “DIGI” trade mark for scales and measuring equipment.
Digi International Inc. changed its name from Digiboard Inc.
Digi International Inc. and Teraoka Seiko Co., Ltd entered into an agreement.
Digi International Inc. launched the Application Mark.
Teraoka Seiko Co., Ltd filed its Notice of Opposition.
Application Mark was accepted for registration and published for opposition purposes.
Intellectual Property Adjudicator’s decision issued.
Judgment reserved.
Appellant’s Further Submissions filed.

7. Legal Issues

  1. Trade Mark Registration
    • Outcome: The court declined to register the Application Mark under s 8(9) of the TMA and upheld the Adjudicator’s finding that the grounds of opposition under ss 8(2)(b), 8(7)(a) and 8(4)(b)(i) of the TMA are made out. The court also upheld the Adjudicator’s finding that the ground of opposition under s 7(6) of the TMA fails.
    • Category: Substantive
    • Sub-Issues:
      • Consent to registration under s 8(9) of the Trade Marks Act
      • Grounds for refusal of registration under s 8(2)(b) of the Trade Marks Act
      • Inherent distinctiveness of a trade mark
      • Passing off
      • Application made in bad faith
  2. Distinctiveness
    • Outcome: The court found that the word “DIGI” is descriptive but that the Respondent’s Mark (Singapore) has acquired distinctiveness through use.
    • Category: Substantive
    • Sub-Issues:
      • Inherent Distinctiveness
      • Acquired Distinctiveness
  3. Likelihood of Confusion
    • Outcome: The court found that there is a likelihood of confusion among a substantial portion of the relevant public.
    • Category: Substantive
  4. Passing Off
    • Outcome: The court upheld the Adjudicator’s finding that the ground of opposition under s 8(7)(a) of the TMA succeeds.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage
  5. Bad Faith
    • Outcome: The court upheld the Adjudicator’s finding that the ground of opposition under s 7(6) of the TMA fails.
    • Category: Substantive
  6. Contractual Interpretation
    • Outcome: The court found that the 2002 Agreement does not govern the registration of marks that have come into existence after the 2002 Agreement was concluded.
    • Category: Substantive
    • Sub-Issues:
      • Scope of Agreement
      • Relevance of Subsequent Conduct

8. Remedies Sought

  1. No remedies sought

9. Cause of Actions

  • No cause of actions

10. Practice Areas

  • Trade Mark Registration
  • Trade Mark Opposition

11. Industries

  • Technology
  • Manufacturing
  • Retail
  • Food
  • Logistics
  • Hospitality

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, IncCourt of AppealYes[2014] 1 SLR 911SingaporeCited for the step-by-step approach for assessing trade mark similarity under s 8(2)(b) of the Trade Marks Act.
Digi International Inc. v Teraoka Seiko Co., LtdIntellectual Property AdjudicatorYes[2020] SGIPOS 1SingaporeThe decision below that is being appealed in this case.
Rovio Entertainment Ltd v Kimanis Food Industries Sdn BhdHigh CourtYes[2015] 5 SLR 618SingaporeCited for the principle that the marks-similarity analysis under ss 8(2)(b) and 8(4) of the TMA is fundamentally the same.
Novelty Pte Ltd v Amanresorts Ltd and anotherHigh CourtYes[2009] 3 SLR(R) 216SingaporeCited for the proposition that s 8(4) of the TMA grants proprietors of well known trade marks in Singapore protection from registration and/or use of identical or similar marks on dissimilar goods or services.
Valentino Globe BV v Pacific Rim Industries IncHigh CourtYes[2010] 2 SLR 1203SingaporeCited for the test to determine bad faith in trade mark applications, which includes both a subjective and objective element.
OMG Holdings Pte Ltd v Pos Ad Sdn BhdHigh CourtYes[2012] 4 SLR 201SingaporeCited for the presumption of similarity in foreign law when there is insufficient proof of the foreign law.
Zurich Insurance (Singapore) Pte Ltd v B-Gold Interior Design & Construction Pte LtdCourt of AppealYes[2008] 3 SLR(R) 1029SingaporeCited for the principle that there should be no absolute prohibition against evidence of subsequent conduct in contractual interpretation.
MCH International Pte Ltd and others v YG Group Pte Ltd and others and other appealsCourt of AppealYes[2019] 2 SLR 837SingaporeCited for the provisional parameters for when evidence of subsequent conduct is admissible in contractual interpretation.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appealCourt of AppealYes[2013] 2 SLR 941SingaporeCited for principles relevant to determining the similarity of competing marks, including visual, aural, and conceptual similarity.
British Sugar Plc v James Robertson & Sons LtdHigh CourtYes[1996] RPC 281England and WalesCited for factors relevant to determining the similarity of goods and services.
Singsung Pte Ltd v LG Electronics Pte Ltd (trading as L S Electrical Trading)Court of AppealYes[2016] 4 SLR 86SingaporeCited for the principle that the issue of acquired distinctiveness is best understood as a threshold inquiry in the context of determining whether an actionable misrepresentation has been committed.
Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp)High CourtYes[2007] 1 SLR(R) 1082SingaporeCited for the principle that the complementary nature of the marks’ goods and/or services may not, by itself, be sufficient for a finding of similarity.
Monster Energy Company v Glamco Co, LtdHigh CourtYes[2021] 3 SLR 319SingaporeCited for the principle that the complementary nature of the marks’ goods and/or services may not, by itself, be sufficient for a finding of similarity.
The Commissioners of Inland Revenue v Muller & Co’s Margarine, LimitedHouse of LordsYes[1901] AC 217United KingdomCited for the definition of goodwill as the attractive force which brings in custom.
The Singapore Professional Golfers’ Association v Chen Eng Waye and othersCourt of AppealYes[2013] 2 SLR 495SingaporeCited for the definition of goodwill and how it is often proved by evidence.
The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte LtdCourt of AppealYes[2016] 3 SLR 517SingaporeCited for the definition of goodwill and how it is often proved by evidence.
Tuitiongenius Pte Ltd v Toh Yew Keat and anotherCourt of AppealYes[2021] 1 SLR 231SingaporeCited for the definition of goodwill and how it is often proved by evidence.
Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte LtdCourt of AppealYes[2011] 4 SLR 381SingaporeCited for the principle that a misrepresentation is actionable only if it has caused or is likely to cause damage to a plaintiff’s goodwill.
Ceramiche Caesar SpA v Caesarstone Sdot-Yam LtdCourt of AppealYes[2017] 2 SLR 308SingaporeCited for the factors relevant to the confusion inquiry.
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpACourt of AppealYes[2013] 1 SLR 531SingaporeCited for the test to be adopted in determining whether a likelihood of confusion exists.
Ferrero SPA v Sarika Connoisseur Café Ptd LtdHigh CourtYes[2011] SGHC 176SingaporeCited for the principle that the test for a misrepresentation which creates a likelihood of confusion is substantially the same as that for “likelihood of confusion” under s 8(2)(b) of the TMA.
Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd and another and another appealCourt of AppealYes[2000] 2 SLR(R) 214SingaporeCited for the principle that absence of evidence of actual confusion is not fatal to a claim for passing off.
Formula One Licensing BV v Idea Marketing SAHigh CourtYes[2015] 5 SLR 1349SingaporeCited for the elements that must be proven in order to establish the ground of opposition under s 8(4)(b)(i) TMA.
Tomy Inc v Dentsply Sirona IncHigh CourtYes[2020] 5 SLR 424SingaporeCited for the general principles governing the law on bad faith.
Festina Lotus SA v Romanson Co LtdHigh CourtYes[2010] 4 SLR 552SingaporeCited for the principle that bad faith is to be determined as at the date of application.
Gromax Plasticulture Ltd v Don & Low Nonwovens LtdHigh CourtYes[1999] RPC 367England and WalesCited for the principle that bad faith includes dishonesty and some dealings which fall short of the standards of acceptable commercial behaviour.
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and another and another appealCourt of AppealYes[2009] 2 SLR(R) 814SingaporeCited for the principle that the test for bad faith is a combined one and contains both a subjective and objective element.
Brutt Trade MarksHigh CourtYes[2007] RPC 19England and WalesCited for the principle that a conclusion of bad faith is largely, if not invariably, based on circumstantial evidence.
Harvard Club of Singapore v President and Fellows of Harvard CollegeHigh CourtYes[2020] 4 SLR 1378SingaporeCited for the principle that it does not constitute bad faith for a party to apply to register a Community trade mark merely because he knows that third parties are using the same mark.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade Mark
  • Registration
  • Co-existence Agreement
  • Distinctiveness
  • Likelihood of Confusion
  • Passing Off
  • Bad Faith
  • Goodwill
  • Misrepresentation
  • Damage
  • Contractual Interpretation
  • M2M
  • IoT

15.2 Keywords

  • Trade Mark
  • Registration
  • Co-existence Agreement
  • Distinctiveness
  • Likelihood of Confusion
  • Passing Off
  • Bad Faith

17. Areas of Law

Area NameRelevance Score
Intellectual Property Law90
Trademarks90
Trade Mark Law70
Contract Law30
Litigation20

16. Subjects

  • Trade Mark Law
  • Intellectual Property Law
  • Contract Law