Full Decision

IN THE HEARINGS AND MEDIATION DEPARTMENT OF THE INTELLECTUAL PROPERTY OFFICE OF SINGAPORE REPUBLIC OF SINGAPORE Trade Mark No. T0912496C Hearing Date: 15 January 2018 IN THE MATTER OF A TRADE MARK REGISTRATION IN THE NAME OF GRASSLAND XIAO FEI YANG PTE LTD AND APPLICATION FOR DECLARATION OF INVALIDITY THEREOF BY INNER MONGOLIA LITTLE SHEEP CATERING CHAIN CO. LTD. Hearing Officer: Ong Sheng Li, Gabriel Assistant Registrar of Trade Marks Representation: Mr Zechariah Chan and Mr Jasper Lim (Lee & Lee) for the Applicant (The Registrant, Grassland Xiao Fei Yang Pte Ltd, filed its pleadings but not its evidence. It did not appear at the hearing.) GROUNDS OF DECISION Introduction 1 More than a century ago, Rudyard Kipling penned these words: “Oh, East is East, and West is West, and never the twain shall meet, Till Earth and Sky stand presently at God’s great Judgment seat; But there is neither East nor West, Border nor Breed, nor Birth, When two strong men stand face to face, though they come from the ends of the earth!”1 Whatever one might think of Kipling’s “The Ballad of East and West”,2 few would disagree that the interplay between different cultures is one of the themes explored in the poem. 1 The work (first published in 1889) has since passed into the public domain. Only the first few lines are reproduced here. 2 I am aware that Kipling is not without his critics. He has been said to have been pro-imperialist or racist (see, e.g. his later work, “The White Man’s Burden”, published in 1899), but such views (on which I express no opinion) do not appear to find their way into this poem. Quite the opposite, in fact: see [72] below. 1 2 One of the key pillars of culture, of course, is language. And on some level, this case is about the transliteration of Chinese characters into the Roman (or Latin) script used in the English language. This thread is woven into the central issue in this dispute: If one trader has registered a trade mark in Chinese characters for certain services, in what circumstances (if at all) may another trader register its English transliteration for the same or similar services? Subject matter of the dispute 3 This is an application to have a registered trade mark declared invalid. 4 The registered trade mark in issue is “XIAO FEI YANG” (TM No. T0912496C) in Class 43 (“Subject Mark”). It is registered for the following goods: Booking of restaurant places; booking of restaurant seats; inn keeping (bar, restaurant and accommodation); provision of information relating to restaurants; provision of restaurant booking or reservations from customer loyalty and frequent buyer schemes; restaurant booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; restaurant booking or reservation services provided in relation to a frequent flyer scheme; restaurant booking or reservation services provided in relation to frequent flyer schemes; restaurant reservation services; restaurant services; restaurant services for the provision of fast food; restaurants; self-service restaurants; theatre restaurants (Provision of food and drink). The date of registration of the Subject Mark is 30 October 2009. Background The Registrant 5 The Subject Mark is owned by Grassland Xiao Fei Yang Pte Ltd (“Registrant”), a company incorporated in Singapore. 6 At the relevant time, the Registrant operated a hotpot restaurant located at 81 Geylang Road, Singapore 389199. The hotpot restaurant was known as “Grassland Xiao Fei Yang” or “草原小肥羊” (Hanyu Pinyin: Cǎo Yuán Xiǎo Féi Yáng). Loosely translated, “草原” means “grassland”, and “ 小肥羊” means “little fat sheep”. For convenience, I will refer to the aforementioned restaurant in the rest of this decision as the “Geylang Hotpot Restaurant”. The Applicant 7 The party seeking a declaration of invalidity is Inner Mongolia Little Sheep Catering Chain Co. Ltd. (“Applicant”). The Applicant is in the business of franchising hotpot restaurants. It was founded in 1999 in Baotou, Inner Mongolia, China. Presently, it operates as a subsidiary of Little Sheep Group Limited, apparently a leading hotpot chain in China. 8 Although the Applicant uses various trade marks in the course of its hotpot business, its essential trade marks typically incorporate one or more of the following key elements: (a) the Chinese characters “ 小肥羊 ” (often stylised in what some might describe as Chinese 2 calligraphy); (b) the English words “Little Sheep”; and/or (c) the logo or device reproduced below. “ ” 9 It is clear that the Applicant’s hotpot restaurant business has enjoyed a degree of success, at least outside of Singapore. In 2008, Little Sheep Group Limited was listed on the Hong Kong Stock Exchange. In 2010, Little Sheep Group Limited reported approximately over S$400 million in revenue, which was apparently about 2% of all dining-out receipts in China. In 2011, Little Sheep Group Limited was sold to Yum! Brands Inc., a US-based fast food franchise conglomerate for approximately S$745 million. By May 2016, the Applicant had over 300 restaurants located in various parts of the globe including China, Hong Kong, Macau, Japan, South Korea, Canada, the United States, Indonesia and Dubai. There is also evidence relating to the Applicant’s worldwide turnover figures and its advertising and promotion expenditure worldwide, but it is not necessary to go into the details. 10 The Applicant did not own, operate or franchise any hotpot restaurants in Singapore. It does, however, sell its hotpot soup base to the public in Singapore through local supermarket chains such as Sheng Siong. Displayed prominently on the front of the packaging of the Applicant’s hotpot soup base are the following marks: (the characters read: “小肥羊”) and “ ” (the characters also read “小肥羊”). It is unclear from the documents when the Applicant first started selling its hotpot soup base in Singapore, but this does not have any impact on the outcome of this case. 11 In this action, the Applicant relies on the following registered trade marks which it owns in Class 43 (collectively, the “Applicant’s Earlier Trade Marks”): a. (T0212756D) in Class 43 for “Restaurants”, registered on 16 September 2002; 3 b. (T0617564H) in Class 43 for “Canteens; cafeterias; hotels; snack- bars; restaurants; catering services provided by trucks for selling food and beverages; food and drink catering”, registered on 21 November 2005; and c. (T0710982G) in Class 43 for “Canteens; cafeterias; self- service restaurants; hotels; snack bars; cafes; tea houses; restaurants; catering services provided by trucks for selling food and beverages; food and drink catering”, registered on 13 March 2007. 12 Each of the Applicant’s Earlier Trade Marks pre-date the Subject Mark (which was registered on 30 October 2009). There is no challenge to their validity. Grassland Pte Ltd 13 Earlier in this decision, I introduced the Registrant as the operator of the Geylang Hotpot Restaurant. To this, I must add a qualifier: the Registrant was not its first operator. 14 While the evidence is murky as to the origins of the Geylang Hotpot Restaurant, there is evidence that as far back as August 2008, efforts were made by a person or persons using the forum handle (i.e. name) “草原小肥羊” to advertise the restaurant on various Chinese-language internet forums aimed at Chinese nationals (and other Chinese speaking individuals) living in Singapore. There were also other internet forum posts (dated September 2008 to January 2013) from members of the public in Singapore who had visited, or were interested in visiting, the Geylang Hotpot Restaurant. I will come to the details later, but it bears mentioning that at least some members of the public were under the impression that the Geylang Hotpot Restaurant was a part of or otherwise linked to the Applicant’s group of restaurants. 15 On 30 October 2009, Grassland Pte Ltd (“Grassland”) applied to register the Subject Mark (i.e. “XIAO FEI YANG”). Grassland provided its registered office address as “81 Geylang Road, Singapore 289199”, which coincided with the location of the Geylang Hotpot Restaurant. It is only reasonable to conclude that Grassland owned or operated the restaurant at or around that point of time. It appears that the Applicant was not aware of the Subject Mark then. At any rate, the Applicant did not file to oppose it, and the Subject Mark was eventually accepted for registration. 16 On 24 February 2011, Grassland transferred ownership of the Subject Mark to the Registrant, presumably pursuant to an undisclosed agreement. (However, as it will be seen later, notice of the transfer was not formally lodged with the Registrar until 15 October 2014.) It appears that sometime after that date, the Registrant took over the reins of the business of the Geylang Hotpot Restaurant. The related opposition proceedings 4 17 On 12 August 2011, the Registrant applied to register “ ” (TM No. T1111136I) in Class 43 for “Services for providing food and drink, restaurant services” (the “Grassland 草原小肥羊 Mark”). On 20 April 2012, the Grassland 草原小肥羊 Mark was published for opposition. The private investigators’ report 18 On 15 June 2012, two private investigators walked into the Registrant’s hotpot restaurant. They enjoyed a meal, but the food was merely a pretext: they were there to gather evidence. In the course of their visit, the investigators observed, among other things, that the Grassland 草原小肥羊 Mark was used on various materials such as name cards, signage, posters, staff t-shirts, bowls and plates, and on receipts. They also struck up a conversation with one Madam Phang, who was overseeing the restaurant operations. 19 Madam Phang was evidently quite the talker. Among other things, she revealed to the private investigators that the restaurant’s chef was from China and used to work for “小肥羊” (that is to say: for the Applicant’s hotpot restaurants).

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