Bad Faith in Using “Cham”: Champengwine Denied TM Registration in Singapore
Rejection of a trademark on the ground of bad faith is much common. There can be multiple reasons to prove bad faith on the part of the applicant. One of the primary instances is the use of the mark by an unauthorized person involving an ex-employee or an ex- licensee, who might be using the mark for the purpose of diluting it. Another probable reason for bad faith can be the furnishing of false and misleading information to the Registrar. This interesting case involves bad faith but not because of the above-mentioned reasons but because of a single use of the word “Cham.”
[Image Source: Getty Images]
The word “Champengwine” was denied trademark registration in Singapore by the Registrar stating bad faith on the part of the Applicant. Keep waddling International Pte Ltd (Applicant) used to sell their wines originating from Chile since April 2004. They and their related companies have been using the word “Pengwine” for selling their wines to many countries including Singapore and also promote the same word through social platforms. The applicant as a part of their business applied for registration of the mark “Champengwine” in Singapore.
Geographical Indication
The mark “Champagne” has been in use as a geographical indication, in connection to wine, being produced in a specific region in France. Comité Interprofessionnel du Vin de Champagne (first opponent) is an association authorized under French law which represents the country’s operators (including growers, cooperatives, and production houses) concerning the geographical indication “CHAMPAGNE” worldwide. On the other side, Institut National de l’Origine et de la Qualité (second opponent), a French national public administrative institution under the French Ministry of Agriculture and Food, works hand in hand with the first opponent to implement French Policy on official signs of identification of the origin of the agricultural and food products internationally.
Both the first and the second opponents filed the Notice of Opposition in Singapore against the registration of the applicant’s mark. The main ground of opposition was Section 7(4), 7(5), 8(7) (a), and 7(6) of the Trade Marks Act of Singapore. Section 7(4) states that a trademark should not be published if it, for any instance, causes misleading information that may delude the public about its origin, nature, and/or quality. Section 7(5) states a trademark should not be registered if its use in Singapore is prohibited by any written law. Section 8(7)(a) states that a trademark shall not be registered if its use in Singapore is liable to be prevented by any virtue of the law protection an unregistered trademark or other sign used in the course of trade. Section 7(6) section states that a trademark should not be registered if the application is made in bad faith.
Bad faith as a sole ground
The Registrar while delving into the case rejected the ground of opposition as contended by Section 7(4), 7(5), and 8(7) (a). Registrar rejecting ground under Section 7(4) states that “champagne” is a standalone word, and is not dominant in the application mark. Section 7(5) was rejected because the mark is not identical to an earlier trademark and it does not contain the word “champagne”. Therefore, if the mark does not contain the word, the ground of opposition was rejected.
While dealing with Section 8(7)(a), the Registrar found that there cannot be any misrepresentation that can result in deception and confusion in the mind of the public, thereby, no damages will occur. But the registrar accepted the Ground of opposition as stated in Section 7(6). The Registrar was of the view that the prefix “Cham” is an allusion to the use of the method of production in Champagne region. The use of the prefix also substantiates its similarity with the objected word and hence, the Registrar noted this to be a subject of bad faith, thereby, refusing the registration on this ground.
Author: Saransh Chaturvedi an associate at IP & Legal Filings, in case of any queries please contact/write back to us at support@ipandlegalfilings.com.
