Singapore: KU DE TA Trade Marks Were Held Valid

March 14th, 2014

 

The High Court of Singapore recently dismissed a suit involving trade mark invalidation in a dispute between Guy Neale and others and Nine Squares Pty. Ltd.

Arthur Chondros, who is an Australian businessman, founded Ku De Ta Bali, a posh beachfront restaurant in Bali in 1997, and roped in together with other co-founders, namely Made Wiranatha, Guy Neale, Aki Kotzmichalis, White Horses Trading Company Limited and White Horses Investments Limited. In 2001, the “KU DE TA” trade mark was registered in Indonesia.

In 2003, Mr. Chondros founded an Australian company called Nine Squares Pty. Ltd.(hereinafter referred to as “the Defendant”). The Defendant filed an international registration for the “KU DE TA” trade mark in 2004, with Singapore being the home country. Two separate marks were registered, namely, one for the restaurant business, and the other for apparel, jewelry and music.

The Defendant then licensed the use of “KU DE TA” trade mark to Chris Au, a businessman based in Hong Kong, who wanted to start a restaurant business in Singapore. Upon obtaining the license, Mr. Au then assigned his rights to Ku de Ta SG Pte. Ltd., which officially opened the posh restaurant called Ku De Ta in Marina Bay Sands Hotel.

The co-founders of Ku De Ta Bali (hereinafter referred to as “the Plaintiffs”) brought an action against the Defendant in Singapore based on the grounds of:

  • a declaration that the Singapore trade marks are held on trust by the Defendant for the Plaintiffs and that the rights of the ownership should be transferred to them; or
  • an invalidation of the Singapore trade marks having registered in bad faith.

At the time when the lawsuit was bought by the Plaintiffs, Mr. Chondros was named as one of the Plaintiffs as he was still a partner of Ku De Ta Bali. However, Mr. Chondros did not agree to the lawsuit and went on to testify providing evidence on behalf of the Defendant.

The High Court of Singapore was in the view that corresponding trade marks in different countries may be owned by different proprietors. In this case, it appears to be a plausible thought that the Indonesian trade mark to be owned by a party which is different from the owner of the Singapore trade marks.

However, the High Court found that there was no evidence that the Defendant indicated that it had the intention to hold the trade marks on trust for the Plaintiffs. The High Court also dismissed claims that Mr. Chondros breached his duty to the other co-founder when he registered the Singapore trade marks.

In respect to the Singapore trade marks registered in bad faith, the High Court held that a trade mark application would be made in bad faith if the conduct or the intentions of the defendant registering the trade mark application did not meet the reasonable standards of the acceptable commercial behaviour.

To succeed in invalidation of the Singapore trade marks, the Plaintiffs must show that their “KU DE TA” trade mark is an earlier mark filed prior to others. In establishing goodwill in Singapore, the Plaintiffs must show there was an existence of the resence of actual or potential customers in Singapore.

With regards to the trade mark in relation to the restaurant business, the High Court held that there is no evidence that “KU DE TA” trade mark had enjoyed goodwill in Singapore at the time of filing the trade mark application.

With regards to the mark in relation to the other business comprising apparel, jewelry and music, the High Court held that at the time of filing an application for the mark in Singapore, Ku De Ta Bali was already well-known. However, as the mark was registered only to protect the class in relation to apparel, jewelry and music, the High Court held that it did not find any evidence that Ku De Ta Bali had already enjoyed goodwill in these classes in Singapore.

Based on these findings, all claims made against the Defendants were dismissed by the High Court.

Guy Neale and others had filed a separate suit against Ku de Ta SG Pte. Ltd. Ku De Ta SG operates posh restaurant called Ku De Ta in Marina Bay Sands hotel, uses the trade mark Ku De Ta, with permission via a license agreement between the owner of the trade marks, Nine Squares and Mr. Au.

The Plaintiffs brought an action to sue Ku de Ta SG Ltd based on the grounds:

  • Registration of well-known marks; and
  • Passing off.

The Plaintiffs accepted that if their lawsuit in the earlier High Court case preceded also by Justice Prakash was dismissed, they would have no basis to proceed further with this case.

As the High Court of Singapore dismissed all claims brought by the claimants, hence the claims made in this case were also dismissed by the High Court of Singapore.