Singapore - No Sweet Ending For Local Chocolate Maker Aalst Chocolate.

Legal News & Analysis - Asia Pacific - Singapore - Intellectual Property

18 April, 2019

 

The Intellectual Property Office of Singapore (IPOS) recently saw a sticky situation of two trademark disputes involving the same parties: artisanal bakery The Patissier LLP (“The Patissier”) and chocolate maker Aalst Chocolate Pte Ltd (“Aalst Chocolate”). The Patissier was successful in both disputes, where its mark was upheld as valid whereas the opponent Aalst Chocolate’s mark was revoked.

 

The Patissier is a local boutique bakery specialising in French-style baked goods, with two outlets here. Aalst Chocolate is a Singapore-based company that manufactures and sells chocolates and chocolate-based products. The marks involved in the two disputes are as follows:

 

No.

Applicant for Invalidation / Revocation

(“attacking”)

Registered Proprietor

(“defending”)

Subject Mark

1

The Patissier LLP

Aalst Chocolate Pte Ltd

cid:image001.png@01D4F473.A7707B10

2

Aalst Chocolate Pte Ltd

The Patissier LLP

cid:image002.png@01D4F473.A7707B10

 

In the first dispute, The Patissier sought for Aalst Chocolate’s mark to be revoked on the basis of non-use. What was interesting for this particular case was that the IP Adjudicator had to decide whether actual use by Aalst Chocolate satisfies the use requirement according to Singapore’s Trade Marks Act. Although Aalst Chocolate showed evidence of its use of the mark, it was not used in the exact form that the mark was registered. The IP Adjudicator, Mr Burton Ong, assessed that the mark is distinctive due to a combination of the two components, namely the Pâtissier-hat device, , and the Aalst Chocolate word element, . He further added that using the Pâtissier-hat device on its own would be seen as different from the mark in the eye of the average consumer, hence altering the mark’s distinctive character. As a result, the Aalst Chocolate’s mark registration was revoked.

 

In the second dispute, Aalst Chocolate applied to invalidate The Patissier’s mark on the grounds of descriptiveness and non-distinctiveness. The challenged mark contains a French word element, namely “pâtissier”, which translates to “pastry cook” or “confectioner”. Currently, there is no law or established practice in Singapore, in the context of trademark examination, opposition and post-registration challenge, that marks in a non-English language are automatically, necessarily translated into English for their meaning. IPOS’ Principal Assistant Registrar, Ms See Tho Sok Yee, therefore judged that at the point in time when the mark was registered in 2005, the average consumer in Singapore would not understand the mark to have a meaning. Hence, they were unlikely to understand the French word element to be a descriptor of a characteristic of the goods and services claimed, and therefore, Aalst Chocolate’s grounds for invalidation alleging descriptiveness and non-distinctiveness failed.

 

Intellectual Property Office of Singapore Case Summary: Aalst Chocolate Pte Ltd v The Patissier LLP [2019] SGIPOS 7 

 

Source: https://www.ipos.gov.sg/resources/hearing-mediation 

 

Published: 12 April 2019 

 

In this dispute, the validity of a trade mark registration is challenged on the grounds of descriptiveness and non-distinctiveness. The twist in the tale is that the challenged mark has a French word element, which leads to a consideration of how the average consumer in Singapore would perceive the mark. 

The Patissier LLP is the Registered Proprietor (“the Proprietor”) of the following trade mark: 

 

(“the Subject Mark”) 

 

The Subject Mark was registered on 27 September 2005 (“the Relevant Date”) under Trade Mark Nos. T0518520H (in Class 30) and T0518521F (in Class 35) with the following details: Trade Mark No. 

Application Date 

Class 

T0518520H 

27 September 2005 

30 

Specification 

Bread, biscuits, cakes, pastry, cookies, bakery products, food mixes for making bakery products, pralines, puddings, tarts, frozen desserts, sweets, chocolates, non-medicated confectionery, toffees, candies, sweetmeats, ices; ice cream cake; edible sandwiches for consumption, meat pies, quiches, chips [cereal products], coffee, tea, cocoa, flour and preparations made from cereals; all included in Class 30. 

 

 

 

 Aalst Chocolate Pte Ltd (“the Applicant”) applied for declarations of invalidity against both registrations above. This action is but one of the several between the same parties. As reported in [2019] SGIPOS 6, the Applicant in the present case was unsuccessful in its defence against the Proprietor’s application for revocation in relation to the former’s own registered mark, cid:image001.png@01D4F473.A7707B10

 

Back to the present invalidation dispute, there is no law or established practice in Singapore, in the context of trade mark examination, opposition and post-registration challenge, that marks in a non-English language are automatically, necessarily translated into English for their meaning under an inquiry based on the absolute grounds under Section 7(1) or the relative grounds under Section 8 of the Act. Where a non-English word is involved, the starting point is to ask whether its meaning will be understood in Singapore by the average consumer of the relevant goods or services at the relevant date. This is the case whether the non-English language is one of Singapore’s official languages (e.g. Chinese) or not (e.g. French, in the present case). 

 

The Principal Assistant Registrar considered the parties’ evidence, including media features on the Proprietor, business listings and dictionary entries, and concluded that the Applicant has not established that the average consumer in Singapore, being a member of the general public, would understand the Subject Mark (especially the French word element “Patissier”) to have a meaning in Singapore at the Relevant Date. As such, it was found that the Subject Mark was not likely to be understood by the consumer as a descriptor of a characteristic of the goods and services claimed. The ground of invalidation alleging descriptiveness (under Section 7(1)(c) of the Trade Marks Act) therefore failed. Likewise, the ground of invalidation alleging non-distinctiveness (under Section 7(1)(b) of the Trade Marks Act) also failed. 

 

This case relied extensively on the High Court decision in Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd [2018] 5 SLR 312 (“Big Box”), where the trade mark “BIG BOX” was also challenged on grounds of descriptiveness and non-distinctiveness. As in Big Box, the present decision also recognised the practical difficulties of proof which arise where the registration of a trade mark is attacked many years after registration on the basis of invalidity at the date of registration. 

 

Notwithstanding this decision on the registrability of the Subject Mark, if the evidence is that the trade mark has become the common name in the trade for the product or service in respect of which it is registered due to the acts or inactivity of the proprietor, the solution would be to seek revocation of the registration under Section 22(1)(c) of the Trade Marks Act instead. The present proceedings are different in nature, involving applications for declarations of invalidity, based on Section 23(1), and the state of affairs at the Relevant Date (almost 14 years ago in 2005) is most relevant. What other traders and businesses adopt as part of their trade or business name after the Relevant Date is a separate matter, and this decision does not go so far as to adjudicate those issues not before the Principal Assistant Registrar. 

 

Disclaimer: The above is provided to assist in the understanding of the Registrar's grounds of decision. It is not intended to be a substitute for the reasons of the Registrar. The full grounds of decision can be found at https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2019/aalst-chocolate-v-the-patissier-2019-sgipos-7.pdf

 

 

Intellectual Property Office of Singapore Case Summary: The Patissier LLP v Aalst Chocolate Pte Ltd [2019] SGIPOS 6 

Source: https://www.ipos.gov.sg/resources/hearing-mediation 

 

Published: 11 April 2019 

 

In this dispute, a registered trade mark is sought to be revoked on the ground of non-use. The proprietor did not use the mark in the exact form registered. This decision therefore deals primarily with the approach to such scenarios and whether the actual use here satisfies the use requirement. 

 

Aalst Chocolate Pte Ltd is the Registered Proprietor (“the Proprietor”) of the following trade mark (“the Subject Mark”): 

 

 

in Singapore in Class 30 in respect of “Chocolates; chocolate-based products; cocoa products; chocolate chips; chocolate bars; chocolate candy; chocolate creams; chocolate extracts; chocolate-based beverages; chocolate beverages with milk; chocolate sauce; chocolate fudge; liqueur chocolates; milk chocolate; chocolate coated nuts; chocolate truffles and sweets; cocoa; coffee-based beverages; snack foods consisting principally of chocolate; chocolate base aerated beverages; cocoa-based beverages; chocolate wafers; confectionery; biscuits; cakes; coffee; tea; tea-based beverages; caramels [candy]; candy for food; cookies; prepared desserts [chocolate based]; flavorings, other than essential oils, for beverages; ice cream; pastry; pies; sugar confectionery; puddings; fondants [confectionery]; mousse confections; bread and bakery products; buns; prepared snack foods; tarts, all included in class 30”. 

 

The Patissier LLP (“the Applicant”) applied for revocation of the above registration on the basis of non-use. The Trade Marks Act (“the Act”) requires that a registered mark be used within 5 years from the completion of the registration process, and that there is no consecutive 5-year period of non-use at any time. 

 

The Proprietor’s best evidence of use of its mark is as follows: 

 

 

The Proprietor conceded that there was no evidence of any use of the Subject Mark in the exact form in which it had been registered. The focus was whether the Proprietor’s usage of the “Pâtissier-hat device”, , on its own, qualified under Section 22(2) of the Act as “use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”. If it did, there would have been “use” of the registered mark. 

 

The IP Adjudicator considered that the distinctive character of the Subject Mark resides in the combination of two distinctive components – the Pâtissier-hat device and the “Aalst Chocolate word element”, – within a single composite mark. 

 

The IP Adjudicator then considered whether use of the Pâtissier-hat device on its own, without the concurrent use of the Aalst Chocolate word element below it (as portrayed in the Subject Mark), constitutes “use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”. He determined that the Aalst Chocolate word element would be regarded by the average consumer as a distinctive element (i.e. a component that will catch the eye of the average consumer looking at the Subject Mark as a whole). Thus, the excision of the Aalst Chocolate word element from the Subject Mark when the Proprietor chose to use the Pâtissier-hat device on its own means that the latter is different from the former in respect of a distinctive element. This difference between the registered form and actually used forms of the trade mark led the IP Adjudicator to conclude that the variant of the Subject Mark used by the Proprietor is one that has altered the “distinctive character” of the Subject Mark. 

 

As such, the forms of the mark that have been actually used by the Proprietor do not fall within the scope of Section 22(2) of the Act and cannot be relied upon as evidence of use of the Subject Mark during the relevant 5-year periods. There being no other better evidence of use of the Subject Mark, its registration is to be revoked as from 25 July 2013 (being the first day immediately following the end of the 5-year period from the completion of registration). 

 

Disclaimer: The above is provided to assist in the understanding of the Registrar's grounds of decision. It is not intended to be a substitute for the reasons of the Registrar. The full grounds of decision can be found at https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2019/the-patissier-v-aalst-chocolate-2019-sgipos-6.pdf