The Intellectual Property Office of Singapore decided in June 2022 that a deceased noodle shop operator’s children can register trademarks relating to their late father’s shop, in the face of opposition from their father’s former business partner.
Ng Ba Eng operated a noodle business from 1962 until his death in 2013. In the 1980s, Ng opened a stall bearing the signboard “ENG’S CHAR SIEW WANTAN MEE.” Ng’s son Desmond started to help him operate the business in 2009.
In February 2012, Ng and Desmond expanded the business, creating Eng’s Noodle House Pte Ltd (ENHPL) with businessman Jason Sim (Sim). ENHPL ceased operations on February 28, 2018, after the business relationship between Desmond and Sim deteriorated.
After ENHPL closed, Sim and some associates formed Eng’s Wantan Noodle Pte Ltd (EWN) and opened Eng’s Wantan Noodle shop on February 28, 2018. Desmond and his siblings formed Eng’s Char Siew Wantan Mee Pte Ltd (ECSWM) on March 5, 2018, and opened Eng’s Char Siew Wantan Mee shop later that month.
From June to July 2018, ECSWM (the applicant) filed to register the ENG’S marks. Sim’s wife (the opponent) opposed the applications on behalf of EWN, claiming (1) there was passing-off; and (2) the applications were made in bad faith.
The opponent’s pleading of passing-off failed because, among other things, ENHPL ceased operations on February 28, 2018, and there was no goodwill attached to this business as of the filing dates of the ENG’S marks.
The opponent’s pleading of bad faith also failed because, among other things, the applicant produced evidence that the Ng family had used the ENG’S marks for decades whereas the opponent had used the same marks for just six years. 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. The adjudicator was convinced from the evidence that the applicant would have considered it had every right to apply to register the ENG’S marks.
Since the opponent’s pleadings failed, the adjudicator ordered the ENG marks to proceed to registration. The opponent has appealed the adjudicator’s decision to the High Court.
This article was first published by the International Trademark Association on inta.org.