Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

08 giugno 2008

Generic trademarks for pharmaceuticals in Singapore


Our kind colleagues from Singapore of Ravindran Associates inform us that they recently successfully defended the registration of a mark used on Traditional Chinese Medicine(TCM) in the High Court of Singapore; the case is entitled Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and YCT Import & Export Pte Ltd [2008] SGHC 51 and may be viewed here. Amongst the important rulings found in the case are the following:

1. This was the first case in the Singapore courts on the question of generic trade marks. The Court ruled that the lack of capability of a mark to distinguish and the fact of the mark becoming customary (generic) are distinct matters. It is not sufficient for a party attacking a registration on the basis that it is generic to show that the mark does not have the capacity to distinguish.

2. Bad faith must be considered from the point of view of the applicant for registration of a trade mark.

3. Fraud and misrepresentation by an applicant for registration of a trade mark may invalidate the registration. However, if these allegations of wrong-doings were in respect of transactions occuring after the date of the application, then such wrong-doings would not taint the original application for registration of the trade mark.

4. The Court has a residual discretion whether or not to revoke or invalidate a registration when the conditions are established. This departs from existing case-law in Singapore which held that no such discretion existed.

The case is now on appeal.
We will have only to wait for the Court of Appeal's decision, but it is really an interesting case! Good job Ravi!

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