Sime Darby v Ngo Chew Hong: Trade Mark Dispute over 'Royal Spoon' and 'Spoons Brand'
Sime Darby Edible Products Ltd applied to the High Court of Singapore on 21 July 2000 to invalidate Ngo Chew Hong Edible Oil Pte Ltd's trade mark registration for 'Royal Spoon' under the Trade Marks Act 1998, arguing it lacked distinctive character and was confusingly similar to Sime Darby's earlier 'Spoons Brand' trade mark. The court, presided over by Lim Teong Qwee JC, dismissed the application, finding that 'Royal Spoon' was not devoid of distinctive character and there was no likelihood of confusion between the two marks.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Application dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Sime Darby's application to invalidate Ngo Chew Hong's 'Royal Spoon' trade mark was dismissed. The court found no likelihood of confusion with Sime Darby's 'Spoons Brand'.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Sime Darby Edible Products Ltd | Applicant | Corporation | Application Dismissed | Lost | |
| Ngo Chew Hong Edible Oil Pte Ltd | Respondent | Corporation | Application Dismissed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lim Teong Qwee | Judicial Commissioner | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Paul Teo | Drew & Napier |
| Dedar Singh Gill | Drew & Napier |
| Lim Teng Leong | Donaldson & Burkinshaw |
4. Facts
- Sime Darby sought to invalidate Ngo Chew Hong's 'Royal Spoon' trade mark.
- Ngo Chew Hong's trade mark was registered in Class 29 for edible oils and fats.
- Sime Darby owns a trade mark with a device of crossed spoons and the words 'SPOONS BRAND'.
- Sime Darby's trade mark is registered in Class 29 for vegetable ghee.
- The application was made under s 23(1) and s 23(3)(a) of the Trade Marks Act 1998.
- Sime Darby argued that 'Royal Spoon' lacked distinctive character and was similar to its trade mark.
5. Formal Citations
- Sime Darby Edible Products Ltd v Ngo Chew Hong Edible Oil Pte Ltd, OM 4/2000, [2000] SGHC 145
6. Timeline
| Date | Event |
|---|---|
| Application for registration of Ngo Chew Hong’s trade mark was made. | |
| Trade Marks Act came into force. | |
| Consent judgment was issued in earlier proceedings. | |
| Application dismissed. |
7. Legal Issues
- Distinctive Character of Trade Mark
- Outcome: The court held that the trade mark 'Royal Spoon' was not devoid of any distinctive character.
- Category: Substantive
- Related Cases:
- [1996] RPC 281
- [1998] RPC 240
- [1998] RPC 859
- [2000] RPC 44
- Likelihood of Confusion
- Outcome: The court held that there was no likelihood of confusion between the trade mark 'Royal Spoon' and the trade mark consisting of the device of two crossed spoons and below the device the words `SPOONS BRAND`.
- Category: Substantive
- Related Cases:
- [1906] 23 RPC 774
- [1896] 2 Ch 137
- [1951] 68 RPC 103
8. Remedies Sought
- Declaration that Trade Mark Registration No T98/12388G is invalid
- Other reliefs
9. Cause of Actions
- Invalidation of Trade Mark Registration
10. Practice Areas
- Trade Mark Registration
- Trade Mark Infringement
11. Industries
- Food and Beverage
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| British Sugar plc v James Robertson & Sons Ltd | N/A | Yes | [1996] RPC 281 | N/A | Cited for the principle of determining whether a trade mark is devoid of any distinctive character. |
| FROOT LOOPS TM | N/A | Yes | [1998] RPC 240 | N/A | Cited for the principle that dissecting a trade mark into individual words may cause one to lose sight of the effect of the mark as a whole. |
| BONUS GOLD TM | N/A | Yes | [1998] RPC 859 | N/A | Cited for the principle that putting two words together in a trade mark may not create a distinctive character if the combination is merely the sum of the individual parts. |
| MESSIAH FROM SCRATCH TM | N/A | Yes | [2000] RPC 44 | N/A | Cited for the principle that a trade mark may be refused registration if it lacks distinctive character and is descriptive of the goods or services. |
| Pianotist Co`s Application | N/A | Yes | [1906] 23 RPC 774 | N/A | Cited for the factors to consider when determining the likelihood of confusion between two trade marks. |
| Re Trade Mark of John Dewhurst & Sons Ltd | N/A | Yes | [1896] 2 Ch 137 | N/A | Cited for the principle that a trade mark should not be registered if it is a mere verbal description of a mark already on the register. |
| De Cordova & Ors v Vick Chemical Co | N/A | Yes | [1951] 68 RPC 103 | N/A | Cited for the principle that marks are remembered by general impressions or significant details, not by photographic recollection. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act 1998 | Singapore |
| s 7(1)(b) Trade Marks Act 1998 | Singapore |
| s 8(2)(b) Trade Marks Act 1998 | Singapore |
| s 23 Trade Marks Act 1998 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Distinctive Character
- Likelihood of Confusion
- Royal Spoon
- Spoons Brand
- Device
- Edible Oils
- Vegetable Ghee
15.2 Keywords
- trade mark
- distinctive character
- likelihood of confusion
- royal spoon
- spoons brand
- edible oils
- vegetable ghee
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Commercial Law | 30 |
16. Subjects
- Trade Mark Registration
- Trade Mark Validity
- Intellectual Property