ワンタンタッスル: 真の所有者は誰か? - KASS

ダヌーシュ・シンナン

EngのChar Siew Wantan Mee Pte. (株). v ポーリン・ニュー・ピン・ピン [2022] SGIPOS 10

商標の所有権の認識は重要です, 特にビジネスパートナー間の関係が悪化した場合、またはビジネスの主要な株主が亡くなった場合. 最近の Eng の Char Siew Wantan Mee Pte の事例では、. (株). v ポーリン・ニュー・ピン・ピン [2022] SGIPOS 10, この原則は例示された. シンガポール知的財産庁 (IPOS) 登録簿の別の当事者が所有する既存の商標であると主張された 3 つの商標に対する異議申立を却下した.

バックグラウンド

Sometime in the 1980s, 氏. Ng operated his wantan mee (egg noodle and dumpling dish) business under the trademark ” ” and the trade name “Eng’s Hawker Business”. Around 2012, Jason Sim, a businessman customer, approached Mr. Ng and his son Desmond and proposed a collaboration with the “Eng’s Hawker Business” (It should be important to note that Jason Sim is the opponent’s husband). 最終的に, Eng’s Noodle House Pte. (株). (“ENHPL”) was formed in February 2012 as a result of the collaboration. ENHPL operated successfully from 27 2月 2012 へ 28 2月 2018. しかし、, the relationship between Jason and Desmond started failing around 2017, and ENHPL would cease business operations on 28 2月 2018 and become dormant (no business whatsoever).

上の 17 6月 2013, 氏. Ng passed away. In light of Mr. Ng’s death and the souring relationship between Desmond and Jason, Ng Mui Hong (“NMH”), a daughter of Mr. Ng, registered a sole proprietorship as “Eng’s Char Siew” on 8 2月 2017. In or around May 2018, the sole proprietorship “Eng’s Char Siew Wantan Mee Pte. Ltd.” (formerly Eng’s Char Siew) began operation. With the establishment of this new business, there were now two main competing businesses in Singapore selling wantan mee under the “ 「商標. The first, EngのChar Siew Wantan Mee Pte. 株式会社, is operated by the Applicant (and the Ng family). The second, Eng’s Wantan Noodle Pte. 株式会社, is operated by Jason, his wife (対戦相手), and their business associates.

Opposition

Pauline New Ping Ping (対戦相手) opposed the trademark application “ENG’s” by Eng’s Char Siew Wantan Mee Pte. (株). クラスで 43. The first ground for opposition is that the trademark application should be prevented by virtue of the laws of passing off, which essentially means a party is attempting “pass off” another’s goods or services as their own. The second ground for opposition is that the application was made in bad faith.

To succeed on the first ground, the opposition needed to establish three classical elements of passing off:

のれん: The reputation amassed from the Applicant’s trademark is rightfully ENHPL’s.
虚偽の陳述: The Applicant has made a misrepresentation to the public (whether intentional or otherwise) leading the public to believe that the goods/services offered by the Applicant are ENHPL’s.
Damage: ENHPL suffers damage because of the Applicant’s misrepresentation.

To succeed on the second ground, the opposition needed to prove the test for bad faith, which involves:

An objective element: The conduct of the Applicant fell short of the appropriate standard, namely acceptable commercial behaviour observed by reasonable and experienced persons in the particular commercial area being examined;
A subjective element: The Applicant knew of facts which, to an ordinary honest person, would have made the latter realise that what the Applicant was doing would be regarded as breaching those standards.

決定

The Principal Assistant Registrar rejected the opposition that the marks were considered passing off or that the marks were made in bad faith.

The first element for passing off, のれん, was not met. ENHPL was dormant during the dates of application for the trademarks “ ", " ", そして、 " ", so no goodwill was attached to ENHPL because there was no business carried on by ENHPL to speak of. さらに、, the Registrar held that the goodwill of the original “ ” brand was determined to be owned by Mr. Ng and was licensed to ENHPL.

The second element for passing off, 不実表示, was also not met. ENHPL only used “ ” and other relevant trademarks for six years (2012-2018), which is insignificant compared to the time Mr. Ng previously used the aforementioned marks. Both this fact and Mr. Ng and Desmond’s presence at ENHPL and Desmond’s current presence with the Applicant, would likely result in the public associating the trademarks with the Ng family instead of ENHPL. したがって、, the Registrar determined that there was no misrepresentation.

最後に, the third element for passing off, 被害, was not met. This was because any “real tangible risk” ENHPL faced was inconsequential if there was evidence that ENHPL never actually faced damages. Considering ENHPL became a dormant business, they were never damaged in reality. したがって、, the Opponent failed to establish the third element of “passing off.” So, overall, the first ground of the opposition collapsed.

Since bad faith is a serious allegation, it requires substantial evidence and a heavy burden of proof on the part of the accuser. この場合, the Opponent’s arguments were based on inference and resulted in the failure of the second ground of the opposition. など, the opposition failed on all grounds.

重要ポイントのヒント

Owners should remember to keep track of the ownership of their trademarks. If there are any business collaborations with third parties, clear written agreements should be drafted. さらに、, the ownership and licensing of the trademarks in that business collaboration should be expressly written out. If you require more information on the grounds of opposition or similarity of your mark with an existing mark in the market, kass@kass.asia までご連絡ください。.