Nautical Concept v Jeffery Mark Richard: Trade Mark Registration Dispute over JWEST Mark

Nautical Concept Pte Ltd appealed the Principal Assistant Registrar's refusal to register the 'JWEST' trademark due to opposition from Jeffery Mark Richard and Guy Anthony West, who owned the 'JEFFERY-WEST' trademark. The High Court of Singapore, presided over by Justice Tan Lee Meng, dismissed the appeal in part, affirming the decision based on Nautical Concept's bad faith in attempting to register the mark, given their prior knowledge and dealings with the respondents' trademark. The court found insufficient evidence of confusing similarity between the two marks.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal Dismissed in Part

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Nautical Concept's application to register 'JWEST' trademark was opposed by Jeffery Mark Richard. The court upheld the opposition based on bad faith.

1.7 Decision Date

26 December 2006

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Nautical Concept Pte Ltd	Appellant	Corporation	Appeal Dismissed in Part	Lost	Alban Kang of Alban Tay Mahtani & de Silva Joyce Ang of Alban Tay Mahtani & de Silva
Jeffery Mark Richard	Respondent	Individual	Opposition Upheld in Part	Partial	Daryl Ong of Gateway Law Corporation Ng Chee Weng of Gateway Law Corporation
Guy Anthony West	Respondent	Individual	Opposition Upheld in Part	Partial	Daryl Ong of Gateway Law Corporation Ng Chee Weng of Gateway Law Corporation

3. Judges

Judge Name	Title	Delivered Judgment
Tan Lee Meng	Judge	Yes

4. Counsels

Counsel Name	Organization
Alban Kang	Alban Tay Mahtani & de Silva
Joyce Ang	Alban Tay Mahtani & de Silva
Daryl Ong	Gateway Law Corporation
Ng Chee Weng	Gateway Law Corporation

4. Facts

Nautical sought to register the mark “JWEST” in class 25 of the ICGS.
The respondents opposed the registration of “JWEST” as a trademark.
The respondents had already registered their trademark “JEFFERY-WEST” in Singapore in class 25 of ICGS.
Nautical’s managing director, LSA, worked for BigCity, which introduced the respondents’ JEFFERY-WEST shoes to the Singapore market.
Nautical attempted to file an application to register “JEFFREY-WEST” and “JW” as its own trade marks in Singapore without the respondents’ consent in 1997.
In early 1999, the respondents complained that Nautical used the names “Jeffrey-West London” or “Jeffrey-West of London” in Singapore for its shoes without their consent.
Nautical filed an application to register “JWEST” as a trademark in Class 25 of the ICGS on 26 August 2002.

5. Formal Citations

Nautical Concept Pte Ltd v Jeffery Mark Richard and Another, OS 1134/2006, [2006] SGHC 239

6. Timeline

Date	Event
1980-01-01	Jeffery-West & Co Ltd started selling and exporting products bearing their mark ‘JEFFERY-WEST’.
1990-01-01	Edison Lee Soon Ann worked for BigCity Fashion Ltd, which introduced the respondents’ JEFFERY-WEST shoes to the Singapore market.
1994-01-01	Nautical Concept Pte Ltd incorporated and became the respondents’ agents in Singapore.
1997-01-01	Nautical attempted to file an application to register “JEFFREY-WEST” and “JW” as its own trade marks in Singapore without the respondents’ consent.
1999-01-01	The respondents complained that Nautical used the names “Jeffrey-West London” or “Jeffrey-West of London” in Singapore for its shoes without their consent.
2000-01-01	The respondents’ investigations revealed that Nautical was selling “Jeffrey-West” and “JW” shoes and “Jeffrey West” wallets at a heavily discounted price.
2002-06-05	The respondents lodged their application for the mark “JEFFERY-WEST”.
2002-08-26	Nautical filed an application to register “JWEST” as a trademark.
2003-11-26	The respondents filed an opposition to the registration of the “JWEST” Mark.
2006-12-27	Judgment reserved.

7. Legal Issues

Bad Faith in Trade Mark Application
- Outcome: The court found that Nautical acted in bad faith when it tried to register the trade mark “JWEST”.
- Category: Substantive
- Sub-Issues:
  - Knowledge of earlier trade mark
  - Unacceptable commercial behaviour
Confusing Similarity of Trade Marks
- Outcome: The court found that the trademarks “JWEST” and “JEFFERY-WEST” are not similar.
- Category: Substantive
- Sub-Issues:
  - Visual similarity
  - Aural similarity
  - Conceptual similarity
  - Imperfect recollection

8. Remedies Sought

Refusal of Trade Mark Registration

9. Cause of Actions

Trade Mark Infringement
Opposition to Trade Mark Registration

10. Practice Areas

Trade Mark Registration
Trade Mark Opposition

11. Industries

Fashion
Footwear

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Royal Enfield Trade Marks	N/A	Yes	[2002] RPC 24	N/A	Cited for the principle that allegations of bad faith should be distinctly alleged and proved, not inferred.
McDonald’s Corp v Future Enterprises	Court of Appeal	Yes	[2005] 1 SLR 177	Singapore	Approved the passage in Royal Enfield Trade Marks regarding the standard of proof for allegations of bad faith.
Gromax Platiculture Ltd v Don & Low Nonwovens Ltd	N/A	Yes	[1999] RPC 367	N/A	Outlined the boundaries of bad faith, including dealings that fall short of acceptable commercial behavior.
Demon Ale Trade Mark	N/A	Yes	[2000] RPC 345	N/A	Stressed that bad faith must be kept distinct from a breach of duty.
Harrison’s Trade Mark Application	N/A	Yes	[2005] FSR 10	N/A	Explained that 'bad faith' suggests a mental test and the court must decide whether the applicant’s knowledge was such that his decision to apply for registration of his mark would be regarded as bad faith by persons adopting proper standards.
Travelpro Trade Mark	N/A	Yes	[1997] RPC 864	N/A	Case where bad faith was found when the applicant sought to invalidate the registered proprietor’s mark.
Rothmans of Pall Mall Limited v Maycolson International Ltd	N/A	Yes	[2006] 2 SLR 551	Singapore	Cited for the principle that the court is entitled to make a finding of bad faith even if the marks in question are not so similar as to cause confusion.
Pianotist Co Ltd’s Application	N/A	Yes	(1906) 23 RPC 774	N/A	Cited for factors to consider when determining if two marks are similar.
Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV	N/A	Yes	[2000] FSR 77	N/A	Cited for the principle that what is relevant when comparing two marks is the “imperfect recollection” of the consumer.
McDonald’s Corp v Future Enterprises	Court of Appeal	Yes	[2005] 1 SLR 195	Singapore	Cited to support the point that the average Singaporean is educated and unlikely to be easily deceived.
The Polo/Lauren Co LP v Shop In Department Store Pte Ltd	N/A	Yes	[2005] 4 SLR 816	Singapore	Cited to support the point that the difference in price between goods is not conclusive of lack of confusion, but is not altogether irrelevant.
Nation Fitting (M) Sdn Bhd v Oystertec Plc	N/A	Yes	[2005] SCGH 225	N/A	Cited to support the point that the difference in price between goods is not conclusive of lack of confusion, but is not altogether irrelevant.
Davy v Garett	N/A	Yes	(1887-78) LR 7 CH D 473	N/A	Cited for the principle that fraud should not be inferred from the facts.
Twinsectra Ltd v Yardley	N/A	Yes	[2002] 2 AC 164	N/A	Cited for the combined test for dishonesty.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Section 8(6) Trade Marks Act (Cap 332, 1999 Rev Ed)	Singapore
Section 8(2)(b) Trade Marks Act (Cap 332, 1999 Rev Ed)	Singapore
Section 7(6) Trade Marks Act (Cap 332, 1999 Rev Ed)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark
Bad faith
Confusing similarity
Registration
JEFFERY-WEST
JWEST
Goodwill
Reputation

15.2 Keywords

Trade mark
Registration
Bad faith
Opposition
JWEST
JEFFERY-WEST

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Bad faith	90
Trademark Infringement	85
Trademark Law	80
Registration of Trade Mark	70
Unfair Competition	60
Passing Off	50
Contract Law	30

16. Subjects

Trade Marks and Trade Names