Intellectual Property Office of Singapore Hearings and Mediation Hearing Officer: Mr. Mark Lim, Principal Assistant Registrar of Trade Marks Hearing Date: 6 August 2020
Inspiration or appropriation? A fine line exists. In Comité Interprofessionnel du Vin de Champagne and Institut National de l’Origine et de la Qualité v Keep Waddling International Pte. Ltd. [2020] SGIPOS 10, the Principal Assistant Registrar (“PAR”) decided that application for trade mark no. 40201705009X for “
” (“Application mark”) in respect of “sparkling wines, all originating from Chile” in class 33 be refused registration due to bad faith.
Keep Waddling International Pte. Ltd. (“Applicant”) filed the Application mark on 28 March 2017 and the application was accepted for publication on 13 July 2018. Comité Interprofessionnel du Vin de Champagne (“1st Opponent”) and Institut National de l’Origine et de la Qualité (“2ndOpponent”) (Collectively “Opponents”) opposed the application on numerous grounds including bad faith under s 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed)(“TMA”).
The Applicant started using their trade mark “PENGWINE” for their wines from Chile since 2004. Named after Chilean penguins, the Applicant adopted the PENGWINE-branded wine after different penguins native to South America as part of their business strategy. The wines were sold in Singapore and exported to consumers in Southeast Asia, Chile, the United States, China.
The 1st Opponent protects the interest of growers, cooperatives and production houses with respect to “CHAMPAGNE” geographical indication and the 2nd Opponent, a national French public administrative institution under the French Ministry of Agriculture and Food implements policies on official signs of identification of the origin and quality of agricultural and food products in France and abroad.
s 7(6) of the TMA – Bad Faith
The test for determining bad faith is the combined test containing the subjective element (what the particular applicant knew at the time of filing the trade mark application) and an objective element (what ordinary persons adopting proper standards would think). Thus, “bad faith” as a concept is context-dependent. In the final analysis, whether bad faith exists or not hinges on the specific factual matrix of each case: Valentino at [29].
The Applicant asserted that the prefix “CHAM” in the Application mark alluded to the method of production of sparkling wine i.e. “methode champenoise”. However, evidence disclosed that the methode champenoise is recognised in the European Union only in reference to wines from the Champagne region in France and “methode traditionelle” is the production method for wines produced outside Champagne region. The Applicant knew about champagne being in the wine industry and there were no evidence that “CHAM” was chosen by the Applicant due to the method of producing wine apart from bare assertion by the Applicant. The adoption of the prefix “CHAM” was not consistent with the PENGWINE branded wines after the different species of the penguin natives of South America. Based on further evidence, the PAR was open to infer that “CHAM” was chosen to due to its similarity to Champagne. By reasons of the foregoing, the PAR was satisfied that the subjective element of the legal test for bad faith was satisfied.
Was the Applicant’s conduct unacceptable by commercial standards as seen by reasonable and experienced people in the wine industry? What would ordinary people adopting proper standards think? – Objective element test
The PAR found a reasonable and experienced person in the wine industry would not have adopted the following behaviours:
- The adoption of the “CHAM” from “champagne” geographical indication.
- Adopting the Application mark when there was clearly no other wines bearing any names remotely close to Champagne either online or at any bricks and mortar retail stores including supermarkets
- Asserting that the Application mark “CHAMPENGWINE” was inspired by champagne and adoption of “CHAM” alluded to the production method (methode champenoise) and “PENGWINE” being the house brand when there was no evidence to support the derivation of the mark
By reasons foregoing, the PAR found the objective element of the test was satisfied. A prima facie case of bad faith was found and the Opponents have discharged their onus. The onus was then shifted to the Applicant but the Applicant did not advance any evidence to rebut the presumption. The PAR concluded the finding of bad faith under s 7(6) of the TMA was established and the Applicant mark was refused registration.
Disclaimer: The above is provided to assist in the understanding of the decision by the Registrar. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.
An old-fashioned Teochew engineer who prefers writing with fountain pens to the use of smart phones, he discovered his love for writing in mid-life. He became a pescatarian a few years ago after a life-changing event. An avid reader, he is piqued by the satisfaction of tackling difficult issues in life.