A June 2022 decision by the Intellectual Property Office of Singapore (IPOS) provided a first instance ruling for a trademark dispute pertaining to the name of a famous noodle shop in Singapore. The IPOS adjudicator ruled that the late noodle shop operator’s children had a right to register trademarks pertaining to the name of their father’s noodle shop, despite opposition from the late operator’s former business partners.
The trademark dispute concerned a noodle shop operated by the late Ng Ba Eng. Ng took over his father’s noodle business in 1962. In the 1980s, Ng opened a stall bearing the signboard “ENG’S CHAR SIEW WANTAN MEE” at the Dunman Food Centre. Ng operated the stall until 2009, and Ng’s son Desmond assisted Ng in operating the stall from 2009 to 2012.
In 2012, Ng and Desmond were approached by businessman Jason Sim, who proposed to expand the noodle shop. The company Eng’s Noodle House Pte Ltd (ENHPL) was incorporated in February 2012 for the purpose of operating the noodle business, with Desmond and Sim as directors and shareholders. The noodle stall also moved to become a shop at 287 Tanjong Katong Road in February 2012.
Ng passed away in 2013. At some point before 2018, the business relationship between Desmond and Sim deteriorated. ENHPL and its 287 Tanjong Katong noodle shop therefore ceased operations on February 28, 2018.
Following ENHPL’s cessation of operations, two companies in competition with each other were created. Sim, his wife, and their business associates formed Eng’s Wantan Noodle Pte Ltd (“EWN”) on February 28, 2018, and opened the Eng’s Wantan Noodle shop at 287 Tanjong Katong Road on the same day. On the other hand, Desmond and his two siblings formed Eng’s Char Siew Wantan Mee Pte Ltd (ECSWM) on March 5, 2018, and opened the Eng’s Char Siew Wantan Mee shop at 248 Tanjong Katong Road later that month.
From June to July 2018, ECSWM (the applicant) filed applications to register three trademarks: “”, “” and “ ” (the ENG’S Marks). The applications were opposed by Sim’s wife (the opponent) on behalf of EWN. The opponent claimed that the three applications should not be registered because (a) there was passing off; and (b) they were made in bad faith.
Whether ECWSN was passing off
For the opposition to the applications to succeed on the ground of passing off, the opponent had to establish the three classical elements of passing off: goodwill, misrepresentation and damage.
The opponent claimed, among other things, that there was goodwill because (a) the ENG’S Marks were continuously and exclusively used in ENHPL’s noodle store business from 2012 to 2018; and (b) the opponent and her EWN company continued to perpetuate ENHPL’s goodwill in these marks after ENHPL ceased to operate. However, the IPOS adjudicator noted that since ENHPL ceased operations on February 28, 2018, no goodwill attached to ENHPL as at dates of the filings of the ENG’S Marks.
The opponent also claimed, among other things, that the applicant’s actions of (a) operating an identical specialty restaurant in the same area as the opponent’s restaurant; (b) choosing an identical trade name; (c) using other indicia such as the ENG’S Marks in the applicant’s restaurant and publicity materials; and (d) adopting an almost identical “get up” constituted a misrepresentation. However, the IPOS adjudicator noted that opponent did not establish that the ENG’S Marks are associated exclusively with ENHPL and no other party. The adjudicator noted that ENHPL used the ENG’S marks for just six years, from 2012 to 2018. This was just a fraction of the length of the late Ng’s prior use of the ENG’S Marks. Since there was evidence to suggest that the public associated the ENG’S marks with the late Ng and Ng’s son Desmond, and Desmond now worked for the applicant, the adjudicator believed that the public would be more likely to associate the ENG’S Marks with the applicant, instead of the dormant ENHPL. The adjudicator came to the conclusion that there was no misrepresentation by the applicant.
The opponent also did not adduce evidence to show a real tangible risk of substantial damage to ENHPL. The adjudicator noted that since ENHPL is a dormant business, there was no real risk of damage.
The opponent’s pleading of passing off therefore failed.
Whether ECSWN filed to register the ENG’S Marks in bad faith
The opponent argued that the applicant’s application to register the ENG’S Marks were made in bad faith due to, among other things, the past contractual relations between the parties, as well as the applicant’s failure to check the bona fide interests of ENHPL before applying to register the ENG’S Marks.
The adjudicator noted that knowledge that a third party is using an identical and/or similar mark in relation to identical and/or similar goods and services does not ipso facto constitute bad faith. An applicant might believe that he has a superior right to registration and/or use of the mark, or that he is entitled to registration nonetheless.
In addition, while there is a duty to investigate the bona fides of a mark before seeking registration if the circumstances would lead a reasonable person to harbour suspicions as to the propriety of the proposed mark, the adjudicator noted that the opponent did not produce any direct evidence showing that the applicant knew that it did not have the right to register the ENG’S Marks. The adjudicator noted that the applicant put forth evidence that the Applicant had every right and entitlement to apply to register the application marks, because the ENG’S Marks had been used by the Ng family business for decades.
The adjudicator noted that the overarching test for bad faith is whether an honest person possessing the applicant’s knowledge would have considered it appropriate to apply to register the marks in question. Given the evidence provided by the applicant, the adjudicator was convinced that the applicant would have considered it appropriate to apply to register the ENG’S Marks. The opponent’s pleading of the applications being made in bad faith therefore failed.
Since the opponent’s two pleadings, the adjudicator ordered for the opponent’s three applications for the ENG’S Marks to proceed to registration. The opponent has appealed the IPOS adjudicator’s decision to the High Court of Singapore.
This article was first published in the IP Analysts column of Asia IP.