IN THE HEARINGS AND MEDIATION DIVISION OF THE INTELLECTUAL PROPERTY OF SINGAPORE REPUBLIC OF SINGAPORE Trade Mark Application No. T99/07860E 26 March 2008 IN THE MATTER OF AN APPLICATION BY KOPITIAM INVESTMENT PTE LTD IN CLASS 42 TO REGISTER A TRADE MARK And OPPOSITION THERETO BY RC HOTELS (PTE) LTD Hearing Officer: Anne Loo Principal Assistant Registrar Mr Jeffrey Lee (Messrs Lee Chai & Boon ) for the Applicants Mr Isaac Tung (Messrs Allen & Gledhill) for the Opponents GROUNDS OF DECISION 1. This is an opposition against the trade mark application number T99/07860E in Class 42 in respect of the following services: “Cafes, cafeterias, canteens, provision of food and drinks; all included in Class 42”. The trade mark as applied for appears as follows: 2 The Applicants, Kopitiam Investment Pte Ltd of 75 Bukit Timah Road #04-01 Boon Siew Building Singapore 229833, filed the trade mark application on the 28 July 1998. The trade mark was accepted and advertised in the Singapore Trade Marks Journal on 22 Jan 2003 with the clause “Proceeding because of acquired distinctiveness through use”. 3 The Opponents RC Hotels (Pte) Ltd lodged a Notice of Opposition against the trade mark application on the 22 May 2003. Chronology of the Matter 4 The Opponents filed their Notice of Opposition on 22 May 2003. The Applicants filed their Counter Statement on 20 September 2003. The Opponents filed their evidence in support of their opposition on 16 September 2004 and the Applicants filed their evidence in support of their application on 16 November 2004. On 2 February 2005, the Applicants filed further evidence. The Applicants made an application to amend their Counter Statement and filed the amended Counter Statement on 26 August 2005. Extensions of time were requested and granted with the consent of parties for the Opponents to file the statutory declaration in reply as well as to address the amendments to the Counter Statement. At the Pre-hearing reviews held on 16 April 2007, 27 June 2007 and 6 September 2007, the parties requested time to enter into negotiations for settlement. As the settlement negotiations broke down, the opposition was fixed for hearing on the 17 January 2008. The hearing was adjourned at parties’ request and the matter was heard on 26 March 2008. The grounds of opposition 5 The Opponents relied on the several grounds of opposition in the Notice of Opposition, namely: 5.1 The use of the Applicants’ mark is likely to indicate a connection between those goods and the Opponents’ when no such connection exists. There will exist a likelihood of confusion on the part of the public as a result of such use. As such, registration of the Applicants’ mark is contrary to sections 7 and 8 of the Trade Marks Act Cap 332, 1999 Rev Edition (“the Act”), in particular sections 7(5) and 8(4) of the Act. 2 5.2 By reason of the distinctiveness and reputation of the Opponents’ mark and by reason of the fact that the Applicants’ mark is confusingly similar to the Opponents’ mark, registration of the Applicants’ mark would be contrary to section 7(4) of the Act as being contrary to public policy or likely to deceive the public. 5.3 By reason of extensive use of the Opponents’ mark and by reason of the fact that the Applicants’ mark is confusingly similar to the Opponents’ mark, the Applicants’ mark is not capable of distinguishing the services of the Applicants and registration of the Applicants’ mark would be contrary to section 7(1) of the Act. 5.4 By reason of the reputation and goodwill established in the Opponents’ mark and the trade mark application of the Opponents’ mark in Singapore, the Applicants cannot validly claim to be the proprietor of the Applicants’ mark. The registration would be contrary to section 4(1) of the Act. 5.5 The Applicants’ choice of their mark applied for is taking advantage of the Opponents’ established and immense reputation and of the goodwill in the Opponents’ mark in Singapore. As such the Applicants’ mark is not bona fide and should be refused registration under section 7(6) of the Act. 5.6 Registration of the Applicants’ mark would be prejudicial to the Opponents’ business and ought to be refused under the discretionary powers vested in the Registrar. 6 The Applicants in their amended Counter-Statement disputed the Opponents’ grounds and stated that there has been honest concurrent use by the Applicants of their mark in the course of trade in Singapore. The Applicants therefore state that their application should be allowed to proceed under section 9 of the Act. 7 At the hearing, the Opponents submitted that they would proceed on sections 7(1)(a), 7(1)(c), 7(4), 8(2)(b) and 8(4)(a) [now 8(7)(a)] of the Act. The applicable law and the burden of proof 8 The Opposition falls to be determined under the Trade Marks Act Chapter 332, 2003 Revised Edition. The burden of proving the grounds raised in the Notice of 3 Opposition falls on the Opponents. Kerly’s Law of Trade Marks and Trade Names 14th Edition at paragraph 9-164 states: “There is no overall onus on the applicant either before the Registrar or in opposition proceedings. And so when an opponent raises objections under section 5 of the [UK] 1994 Act [Section 8 of our Act] he must make them out.” The Opponents’ Evidence 9 The Opponents’ statutory declaration was filed on 16 Sept 2004 by Emily Chin Mei Fong, the company secretary of RC Hotels (Pte) Ltd. She states that the Opponents are the owner of the “KOPI TIAM” marks in Singapore as shown below: The Opponents have been using their marks extensively in Singapore since 1986, in relation to its KOPI TIAM restaurant which is located at Raffles The Plaza, 80 Bras Basah Road, Singapore 189560 (formerly known as the Westin Stamford Singapore). 10 The Kopi Tiam restaurant has received many accolades in the local media and many promotional activities have been held at the Opponents’ Kopi Tiam restaurant over the years, which are featured in the local press. Information about the Opponents’ restaurant is available on the internet; which is easily accessible by computer users worldwide. Since the use commenced in 1986, the Opponents have enjoyed significant profits from its Kopi Tiam restaurant. Due to the extensive use and promotion of the Opponents’ marks, the marks are distinctive of the Opponents and the word “Kopitiam” has acquired a secondary meaning that is distinctive of the Opponents. The public has come to associate the name “KOPI TIAM” exclusively with the Opponents, especially when the mark is used ion relation to a high quality restaurant or food establishment. In their evidence, the Opponents also exhibited an extract from the website of the Accounting and Corporate Regulatory Authority showing the number of other companies and businesses which had used the word “Kopitiam” in their company and business name. 4 The Applicants’ Evidence 11 The Applicant’s statutory declaration and supplementary statutory declaration were filed by Tan Siang Hin, the managing director of Kopitiam Investment Pte Ltd, on the 16 November 2004 and 2 February 2005 respectively. 12 The Applicants first used the name “Kopitiam” for its food courts (air- conditioned and non-air conditioned), food malls and eating outlets around 1988 or 1989. The application mark was first used in Singapore around 1997 for the promotional campaign in connection with the Applicants’ acquisition of the Lau Pa Sat Festival Market. The Applicants has since applied the mark at various locations within all its 14 outlets as listed below: Location of Outlet Date of Opening of Outlet Bishan Street 11 Blk 151 1989 Jackson Centre 15 February 1992 Pasir Panjang Wholesale Centre 2 October 1993 Boon Lay Shopping Centre 12 November 1994 Kovan Centre 3 June 1995 Orchard Road (Meridian) 23 may 1998 Plaza By The Park 7 November 1998 Plaza Singapura 4 December 1998 Bukit Panjang Plaza 1998 Sun Plaza 2000 Hougang Festival Market 1999 Bukit Batok Central 1999 Jurong Point 1995 NUH 2000 The mark appears on main signboards, smaller signboards placed on counter-tops and above lit menu boards, plates and on the uniform (collared-T shirts, caps and aprons) worn by the staff in the course of work. 13 The estimated advertisement costs are: Year Type of Advertisement Estimated Costs (SGD) 1997 The New Paper 4,100.00 Lianhe Zaobao 3,951.27 Corporate Brochure 15,450.00 1998 The Straits Times 8,652.12 Lianhe Zaobao 1,207.03 1999 The Official Map of Singapore 16,370.00 Singapore Official Guide 1999 9,555.00 Pandan Bus Brochures 6,000.00 5 14 The Applicants and the nature of services rendered have been extensively featured in articles, write-ups, interviews and reviews since 1996, such as: Year Type of Publicity Size of Article 1996 The Straits Times Quarter Page The Sunday Times Half Page Sin Min Jit Poh Quarter Page 1997 Japan News Quarter Page 1998 The Business Times Quarter Page The New Paper Full Page 1999 Lianhe Zaobao Quarter Page The Sunday Times Full Page “Eat” Magazine One column in a page The New Paper -Coca Cola Quarter Page Lianhe Wanbao - Power Gas Quarter Page 15 The Applicants had publicised their mark through the use of corporate brochures, posters, discount vouchers and other publicity materials; and have had promotional activities with Tiger Beer, Coca-Cola, Singapore Tourism Board and PowerGas. The cost for printing of the materials and running the promotional activities in 1999 totalled SGD 164,381-31.