Triple D Trading v Fanco Fan Marketing: Trade Mark Invalidity & Groundless Threat
Triple D Trading Pte Ltd, the plaintiff, sued Fanco Fan Marketing Pte Ltd, the defendant, in the General Division of the High Court of Singapore, alleging trade mark infringement. Fanco Fan Marketing counterclaimed for invalidation of Triple D Trading's trade mark and for groundless threats of trade mark infringement. Dedar Singh Gill J. invalidated Triple D Trading's trade mark registration on the ground of bad faith and dismissed Triple D Trading's claim. The court dismissed Fanco Fan Marketing's claim for groundless threats.
1. Case Overview
1.1 Court
General Division of the High Court of the Republic of Singapore1.2 Outcome
Judgment for the Defendant on its counterclaim; Plaintiff's claim dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Triple D Trading sued Fanco Fan Marketing for trade mark infringement. Fanco counterclaimed for invalidity and groundless threat. The court invalidated Triple D's trade mark.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Triple D Trading Pte Ltd | Plaintiff, Defendant in Counterclaim | Corporation | Claim Dismissed | Lost | Sarbrinder Singh s/o Naranjan Singh, Tay Yu E |
| Fanco Fan Marketing Pte Ltd | Defendant, Plaintiff in Counterclaim | Corporation | Counterclaim Allowed in Part | Partial | Kang Choon Hwee Alban, Oh Pin-Ping, Loy Ming Chuen Brendan |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Dedar Singh Gill | Judge of the High Court | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Sarbrinder Singh s/o Naranjan Singh | Sanders Law LLC |
| Tay Yu E | Sanders Law LLC |
| Kang Choon Hwee Alban | Bird & Bird ATMD LLP |
| Oh Pin-Ping | Bird & Bird ATMD LLP |
| Loy Ming Chuen Brendan | Bird & Bird ATMD LLP |
4. Facts
- The plaintiff is the registered proprietor of the “COFAN” trade mark.
- The defendant is in the business of selling fans under the “FANCO” mark.
- Mr. Phua, the plaintiff's director, was a former employee of the defendant.
- The defendant launched a new line of fans bearing the mark “CO-FAN” in August 2019.
- The plaintiff applied for the registration of the COFAN trade mark on 27 February 2019.
- The plaintiff commenced infringement proceedings against the defendant on 24 May 2021.
- The defendant counterclaimed for invalidation of the COFAN mark on the ground of bad faith.
5. Formal Citations
- Triple D Trading Pte Ltd v Fanco Fan Marketing Pte Ltd, Suit No 464 of 2021, [2022] SGHC 226
6. Timeline
| Date | Event |
|---|---|
| Fanco Fan Marketing partnership began. | |
| FANCO mark registered in Class 11. | |
| Fanco Fan Marketing Pte Ltd incorporated. | |
| Ownership of the FANCO mark transferred to the defendant. | |
| Triple D Trading Pte Ltd incorporated. | |
| BESTAR trade mark registered in the plaintiff’s name. | |
| Mr. Gary Pang joined the plaintiff as a sales executive. | |
| Defendant applied for Certificates of Conformity from TÜV SÜD PSB. | |
| Plaintiff applied for the registration of the COFAN trade mark. | |
| PSB issued the COCs in relation to all fans which the defendant submitted applications for. | |
| Defendant’s products were registered with CPSA. | |
| Defendant launched a new line of fans bearing the mark “CO-FAN”. | |
| Plaintiff’s lawyers sent a letter demanding that the defendant immediately cease its use of the CO-FAN mark. | |
| Plaintiff’s lawyers sent another letter repeating the plaintiff’s demands. | |
| Plaintiff launched its own fans bearing the COFAN mark. | |
| Plaintiff filed action claiming infringement. | |
| Defendant filed defence and counterclaim. | |
| Trial began. | |
| Trial concluded. | |
| Judgment reserved. |
7. Legal Issues
- Trade Mark Invalidity
- Outcome: The court held that the plaintiff's trade mark was registered in bad faith and ordered it to be expunged from the register.
- Category: Substantive
- Sub-Issues:
- Bad faith in trade mark registration
- Related Cases:
- [1999] RPC 367
- [2020] 5 SLR 424
- Groundless Threat of Trade Mark Infringement
- Outcome: The court dismissed the defendant's claim for groundless threats of trade mark infringement.
- Category: Substantive
- Related Cases:
- [2018] 5 SLR 928
- [2011] FSR 742
8. Remedies Sought
- Injunction
- Damages
- Declaration of Invalidity
- Inquiry as to Damages
9. Cause of Actions
- Trade Mark Infringement
- Invalidation of Trade Mark
- Groundless Threat of Trade Mark Infringement
10. Practice Areas
- Trade Mark Infringement
- Trade Mark Registration
- Intellectual Property Litigation
11. Industries
- Retail
- Manufacturing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd | Court of Appeal | Yes | [1999] RPC 367 | United Kingdom | Cited for the principle that bad faith is best adjudged by reference to the words of the Act and upon a regard to all material surrounding circumstances. |
| Tomy Inc v Dentsply Sirona Inc | High Court | Yes | [2020] 5 SLR 424 | Singapore | Cited for summarising the principles of bad faith in the context of s 7(6) of the Trade Marks Act. |
| Hotel Cipriani Srl and others v Cipriani (Grosvenor Street) Ltd and others | High Court of Justice | Yes | [2008] EWHC 3032 (Ch) | England and Wales | Cited for the principle that bad faith constitutes one exception to the “first-to-file system”. |
| Hotel Cipriani Srl and others v Cipriani (Grosvenor Street) Ltd and others | Court of Appeal | Yes | [2010] EWCA Civ 110 | England and Wales | Cited for upholding the principle that bad faith constitutes one exception to the “first-to-file system”. |
| Festina Lotus SA v Romanson Co Ltd | High Court | Yes | [2010] 4 SLR 552 | Singapore | Cited for the principle that bad faith is determined as at the date of application and matters which occurred after the date of application which may assist in determining the applicant’s state of mind as at the date of application can be taken into consideration. |
| Valentino Globe BV v Pacific Rim Industries Inc | High Court | Yes | [2010] 2 SLR 1203 | Singapore | Cited 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 | High Court | Yes | [2009] 2 SLR(R) 814 | Singapore | Cited for the principle that the test for bad faith is a combined one and contains both a subjective element and an objective element. |
| Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH | European Court of Justice | Yes | [2009] ETMR 56 | European Union | Cited for the factors to consider in a holistic assessment of bad faith. |
| Philip Morris Products S A v PT Perusahaan Dagang Dan Industri Tresno | Intellectual Property Office of Singapore | Yes | [2010] SGIPOS 8 | Singapore | Cited for affirming the Lindt case. |
| Demon Ale Trade Mark | High Court | Yes | [2000] RPC 345 | United Kingdom | Cited for the principle that bad faith has moral overtones. |
| Brutt Trade Marks | High Court | Yes | [2007] RPC 19 | United Kingdom | Cited for the principle that a conclusion of bad faith is largely based on circumstantial evidence. |
| Nautical Concept Pte Ltd v Jeffery Mark Richard | High Court | Yes | [2007] 1 SLR(R) 1071 | Singapore | Cited for the principle that the nature of parties’ pre-existing relationship is a factor relevant to the determination of bad faith. |
| Rothmans of Pall Mall Ltd v Maycolson International Ltd | High Court | Yes | [2006] 2 SLR(R) 551 | Singapore | Cited for the position that a likelihood of confusion is not necessary in order for a finding of bad faith to be made. |
| Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO | Court of Justice of the European Union | Yes | Case C-104/18 P, EU:C:2019:724 | European Union | Cited for clarifying the position on the factors listed by the court in the Lindt case. |
| Dr Babor GmbH & Co KG and another v Sante De Beaute Pte Ltd | High Court | Yes | [2018] 5 SLR 928 | Singapore | Cited for the applicable test to make out a claim under s 35 TMA. |
| Best Buy Co Inc v Worldwide Sales Corp Espana SL | Court of Appeal | Yes | [2011] FSR 742 | England and Wales | Cited for the principle on what constitutes a “threat” under s 35 of the TMA. |
| Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) | High Court | Yes | [2016] 4 SLR 86 | Singapore | Cited for the underlying rationale of the groundless threats provision, which aims to strike a satisfactory balance between the protection of existing intellectual property rights and the prevention of “bullying” tactics. |
| Tech 21 UK Ltd v Logitech Europe SA | High Court | Yes | [2015] Bus LR 1276 | England and Wales | Cited as an instance of a “threat” in the context of the old s 21 of the UK TMA. |
| Lee Tat Cheng v Maka GPS Technologies Pte Ltd | Court of Appeal | Yes | [2018] 1 SLR 856 | Singapore | Cited for the applicable approach to s 77 of the Patents Act, the equivalent provision for groundless threats in the context of patent infringement. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 322, 2005 Rev Ed) | Singapore |
| s 27(2)(b) of the Trade Marks Act (Cap 322, 2005 Rev Ed) | Singapore |
| s 7(6) read with s 23(1) of the Trade Marks Act (Cap 322, 2005 Rev Ed) | Singapore |
| s 23(1) of the Trade Marks Act | Singapore |
| s 7(6) of the Trade Marks Act | Singapore |
| s 35 of the Trade Marks Act | Singapore |
| s 35(1)(a) – 35(1)(c) of the Trade Marks Act | Singapore |
| s 27(4) of the Trade Marks Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- COFAN
- CO-FAN
- FANCO
- Trade Mark
- Bad Faith
- Groundless Threat
- Infringement
- Invalidation
- Goodwill
- Registry
- HELI
- HALI
15.2 Keywords
- trade mark
- infringement
- invalidation
- bad faith
- groundless threat
- COFAN
- FANCO
16. Subjects
- Trade Mark Law
- Intellectual Property
- Litigation
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law
- Civil Procedure