In Wing Joo Loong Ginseng Hong (Singapore)Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co. Ltd and Another [2008] SGHC 51, one of the issues to be determined was whether a “Rooster” device trade mark registered for inter alia, cordyceps (the “Rooster” Mark”), was liable to be revoked or declared invalid.

 

Section 23(1) of the Trade Marks Act (Cap. 332, 1999 Rev. Ed.) (“Act”) provides that registration of a trade mark may be declared invalid on the ground that it was registered in breach of section 7. Section 7(1)(a) of the Act (read with section 2(1)), in effect, prevents the registration of a sign which is incapable of distinguishing the goods or services of a trader from those of another.

 

The court accepted that the “Rooster” mark had lost the capability to distinguish the 1st Defendant’s cordyceps. The issue was whether the registration must be so revoked or invalidated, or if there was discretion allowed in the matter.

 

Whilst Justice Kan was of the view that the construction of “may” in the provision for revocation could equally be applied to the construction of “may” in section 23, he respectfully departed from the judges in three reported Singapore High Court decisions in the context of trade mark revocation – Reemtsma Cigarettenfabriken GmbH v Hugo Boss AG (No. 2) [2003] 4 SLR 155 (“Hugo Boss”), Nation Fittings (M) Sdn Bhd v Oystertec Plc and Another Suit [2006] 1 SLR 712 and Weir Warman Ltd v Research & Development Pty Ltd [2007] 2 SLR 1073 – which all held that there was no discretion allowed in the matter.

 

Justice Kan first referred to section 39 of the old Trade Marks Act and the case authorities which confirmed that the power to make rectifications to the trade marks register under that section was discretionary. He also reviewed the explanatory note and the Minister’s speech during the passage of the Act through Parliament in 1998. In his view, if the change in an established position in the legislation, that is, from discretionary to mandatory, was intended in the Act, this would have been mentioned in the Minister’s speech.

 

It was therefore held that the provisions in the Act should be construed to confer upon the Registrar of Trade Marks and the court discretion whether to revoke or invalidate a trade mark when the conditions are established.