18 August, 2017
Facts
Big Box Corporation Pte Ltd ("Big Box Co.") is the proprietor of the trade mark, "BIG BOX" ("the Subject Mark"), registered in Singapore since 26 January 2005 and covering a range of retail services supplied to consumers and other businesses. Courts (Singapore) Pte Ltd ("Courts") had opened a retail warehouse store, and had placed advertisements in the Straits Times for the warehouse store that described it as "COURTS BIG BOX MEGASTORE". Consequently, Big Box Co. sent Courts a cease and desist letter, alleging infringement of the Subject Mark by reason of Courts' use of the words "BIG BOX". Proceedings had, however, not been commenced as of the date of the hearing.
Courts then applied for a declaration of invalidity of the registration of the Subject Mark, on the ground that it was devoid of distinctive character, descriptive and/or generic at the application date. Courts supported its application with evidence of the use of the term "BIG BOX" before and after 2005 as a description of a large retail or warehouse establishment, some from Singapore and others from elsewhere, particularly North America.
Decision
Courts' application was refused.
In relation to the descriptiveness and distinctiveness of the Subject Mark, the Adjudicator was of the view that "BIG BOX" was not descriptive of any characteristic of the services for which it was registered — not warehouses or other types of buildings, but a range of services from retail to marketing and promotional services for businesses. In respect of these services, "BIG BOX" was thus inherently distinctive and capable of performing its function as an indication of trade origin.
The Adjudicator similarly rejected Courts' argument that the words "BIG BOX" were viewed by the body of traders in the retail and warehouse industries as a generic description of a "large retail or warehouse establishment". It was noted that whether a term is generic or not must be considered in the context of the relevant goods and services — in this case, the provision of a range of services including retail services. The Adjudicator was thus not persuaded that the "man and woman on the SBS Transit bus" would perceive the words "BIG BOX" to be customary in either the current language, or the established practices of the trade as at the application date.
However, the Adjudicator emphasized that this did not mean others could never use the words "BIG BOX" as a description of a large retail or warehouse establishment without infringing Big Box Co's trade mark. As the Trade Marks Act (Cap. 332) provides honest traders with a defence if their use of the mark is a genuine description, whether the mark has been infringed upon would depend on all circumstances.
Comments
In his decision, the Adjudicator noted that there is no general duty imposed by the law on traders to check what is on the Trade Marks Register. Nevertheless, traders should check the Register periodically, lest they run the risk of being threatened with a legal action for infringement of someone else's trade mark that they are not even aware is registered.
For further information, please contact:
Andy Leck, Principal, Baker & McKenzie.Wong & Leow
andy.leck@bakermckenzie.com
