In a recent case, the relationship between the two parties was crucial to ascertaining that an application was made in bad faith and claimant’s conduct “did not meet the acceptable commercial behavior observed by reasonable and experienced men.” In its decision issued on September 16, 2022, the court dismissed the claimant’s infringement claim in its entirety and ordered its the mark to be expunged from the register.
The judgement was passed in Triple D Trading Pte Ltd (Triple D) v. Fanco Fan Marketing Pte Ltd (Fanco), where an ex-employee from Fanco–a company that supplies fans–left it after seven years to incorporate his own business, Triple D, to supply fans as well. Triple D registered its trademark COFAN (registration number 40201904164S) in 2019.
The parties got into a dispute when Fanco started using the mark CO-FAN, prompting Triple D to sue it for trademark infringement.
These marks are prima facie confusingly similar and there is a case for infringement. However, Fanco’s counterclaim balanced the scales of justice. It sought an invalidation of COFAN on the ground of bad faith. If this counterclaim succeeded, Triple D’s claim would fail as there would no longer be a trademark to infringe.
Fanco made two contentions:
1. Whether Triple D knew of Fanco’s plans to use the CO-FAN mark
Fanco tried to rely on two meetings that it alleged the ex-employee attended. However, the judge was unconvinced that these meetings even took place as (a) there was no objective evidence to corroborate that they had; and (b) the witnesses gave conflicting accounts about the meetings.
2. Whether Triple D had intended to “free-ride” on Fanco’s goodwill and reputation in its trademark FANCO
The judge, however, did find that Triple D had “intended to capitalize on [Fanco’s] goodwill at the point the Application was made.”
He reasoned as follows:
- He could not believe Triple D’s claim that COFAN was not merely a reversal of syllables of FANCO given the prior employment history with Fanco;
- Fanco had taken preparatory steps to introduce its CO-FAN mark as early as in 2018;
- Fanco had launched CO-FAN HELI fans in 2019 before Triple D’s launch of its COFAN HALI fans. During its launch, Triple D had used similar packaging and brochures. The judge found that this was not “purely coincidental.”
This article was first published by the International Trademark Association on inta.org.