Yitai v Charlotte Pipe: Trade Mark Dispute - Adducing Further Evidence on Appeal

Yitai (Shanghai) Plastic Co., Ltd. appealed to the General Division of the High Court of Singapore against the Intellectual Property Adjudicator's decision to refuse registration of its trade mark. The court, presided over by Justice Dedar Singh Gill, dismissed Yitai's application to adduce further evidence on appeal, emphasizing the need for parties to present all relevant evidence during the initial proceedings. The court found that Yitai had failed to demonstrate reasonable diligence in obtaining the evidence earlier and that the evidence would not have a significant impact on the outcome of the appeal.

1. Case Overview

1.1 Court

General Division of the High Court of the Republic of Singapore

1.2 Outcome

Application dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Appeal in trade mark dispute. Court refused to allow further evidence on appeal, emphasizing need for complete evidence at trial.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Yitai (Shanghai) Plastic Co., Ltd.Applicant, AppellantCorporationApplication dismissedLost
Charlotte Pipe and Foundry CompanyRespondentCorporationOpposition AllowedWon

3. Judges

Judge NameTitleDelivered Judgment
Dedar Singh GillJudge of the High CourtYes

4. Counsels

Counsel NameOrganization
Nicholas Lynwood Lauw Yu AnRajah & Tann Singapore LLP
Quek Yi Liang DanielRajah & Tann Singapore LLP
Chew Lixian AshleyElla Cheong LLC

4. Facts

  1. Yitai sought to register its trade mark in Singapore.
  2. Charlotte Pipe opposed the registration based on its registered and unregistered marks.
  3. The Intellectual Property Adjudicator refused registration of Yitai's mark.
  4. Yitai appealed and sought to introduce new evidence.
  5. The new evidence aimed to show prior use of Yitai's mark and that certain terms were generic.
  6. The court found Yitai did not act with reasonable diligence in obtaining the evidence.
  7. The court also questioned the credibility and significance of the new evidence.

5. Formal Citations

  1. Yitai (Shanghai) Plastic Co, Ltd v Charlotte Pipe and Foundry Co, Tribunal Appeal No 2 of 2021(Summons No 1081 of 2021), [2021] SGHC 198

6. Timeline

DateEvent
Yitai filed International Registration No. 1292448 for the application mark, designating Singapore.
IPOS was notified of Yitai’s International Registration designating Singapore.
Charlotte Pipe filed its Notice of Opposition to oppose the registration of the Application Mark.
The Adjudicator’s Grounds of Decision issued.
Yitai filed SUM 1081 for leave to adduce further evidence.
Hearing date.
Further submissions date.
Judgment reserved.

7. Legal Issues

  1. Admissibility of Further Evidence on Appeal
    • Outcome: The court held that the applicant failed to meet the conditions for adducing further evidence on appeal.
    • Category: Procedural
    • Sub-Issues:
      • Reasonable diligence in obtaining evidence
      • Potential influence of evidence on the case
      • Credibility of evidence
  2. Opposition to Registration of a Trade Mark
    • Outcome: The Adjudicator allowed the opposition under s 8(7)(a) of the TMA on the basis that the Application Mark had passed off the Respondent’s Unregistered Marks.
    • Category: Substantive

8. Remedies Sought

  1. Leave to adduce further evidence on appeal
  2. Reversal of the Adjudicator's decision

9. Cause of Actions

  • Opposition to trade mark registration
  • Appeal of decision of the Intellectual Property Office of Singapore

10. Practice Areas

  • Appeals
  • Trade Mark Disputes
  • Opposition to Trade Mark Registration

11. Industries

  • Manufacturing
  • Plastics

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Ladd v MarshallN/AYes[1954] 1 WLR 1489N/AOutlines the conditions for adducing further evidence on appeal.
Hunt-Wesson Inc’s Trade Mark ApplicationN/AYes[1996] RPC 233N/ALists factors relevant to adducing further evidence on appeal in trade mark proceedings.
Martek Biosciences Corp v Cargill International Trading Pte LtdCourt of AppealYes[2011] 1 SLR 1287SingaporeEndorses factors relevant under O 87A r 13(2) ROC for appeals from the Registrar of Patents, also relevant under O 87 r 4(2) ROC.
Anan Group (Singapore) Pte Ltd v VTB Bank (Public Joint Stock Co)N/AYes[2019] 2 SLR 341SingaporePrescribes a two-step analysis to determine how strictly to apply the Ladd v Marshall test.
Public Prosecutor v Mohd Ariffan bin Mohd HassanN/AYes[2018] 1 SLR 544SingaporeRequirement of non-availability to be satisfied.
Norris v Government of the United States of AmericaN/AYes[2008] 1 AC 920N/AThe House of Lords exercised its inherent power to remit the determination of an issue to a district judge.
In re F (R) (an infant)N/AYes[1970] 1 QB 385N/AThe English court exercised its inherent power to remit an adoption matter to the county court for further consideration.
Dreamersclub Ltd’s Trade Mark ApplicationN/AYes[2019] RPC 16N/ATrade mark proceedings which were remitted for further consideration by a lower tribunal.
Formula One Licensing BV v Idea Marketing SAN/AYes[2015] 5 SLR 1349SingaporeTrade mark proceedings which were remitted for further consideration by a lower tribunal.
Wee Soon Kim Anthony v Law Society of SingaporeN/AYes[2001] 2 SLR(R) 821SingaporeAn essential touchstone is that of “need”.
Consolidated Developments Ltd and another v Cooper; Cooper v Consolidated Developments LtdN/AYes[2018] EWHC 1727 (Ch)N/AWhere the admission of fresh evidence on appeal would require that the case be remitted for a rehearing at first instance, the interests of the parties and of the public in fostering finality in litigation are particularly significant and may tip the balance against the admission of such evidence.
DEMON ALE Trade MarkN/AYes[2000] RPC 345N/AFor the purpose of registration proceedings before the TM Registrar, a Notice of Opposition and Counter-statement are in effect pleadings.
CLUB EUROPE Trade MarkN/AYes[2000] RPC 329N/AIt is the function of pleadings to define the issues between the parties.
COFFEEMIX Trade MarkN/AYes[1998] R.P.C 717N/AIt must be full in the sense that it must outline each of the grounds relied upon and state the case relied upon in support of those grounds.
Julian Higgins’ Trade Mark ApplicationN/AYes[2000] RPC 321N/AIf the pleadings do not identify the right issues, the issues the parties propose to argue about, then it cannot be expected that with any consistency the right evidence will be adduced at the hearing.
Charlotte Pipe and Foundry Company v Yitai (Shanghai) Plastic Co., Ltd.Intellectual Property Office of SingaporeYes[2020] SGIPOS 14SingaporeThe Adjudicator’s Grounds of Decision issued on 30 December 2020.
Indtex Trading Limited v The Otago Rugby Football UnionHigh Court AucklandYesHC Auckland AP23-SW 01New ZealandTrade mark proceedings which were remitted for further consideration by a lower tribunal.

13. Applicable Rules

Rule Name
Rules of Court (2014 Rev Ed)
Trade Marks Rules (2008 Rev Ed)

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
Evidence Act (Cap 97, 1997 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade mark
  • Opposition
  • Further evidence
  • Appeal
  • Reasonable diligence
  • Goodwill
  • Passing off
  • SCH 80
  • Import evidence
  • Adjudicator

15.2 Keywords

  • Trade mark dispute
  • Appeal
  • Further evidence
  • Singapore
  • Intellectual property
  • Yitai
  • Charlotte Pipe

17. Areas of Law

Area NameRelevance Score
Trademarks90
Intellectual Property Law70
Appellate Practice60
Civil Procedure50
Commercial Law30
Contract Law20

16. Subjects

  • Trade Mark Law
  • Civil Procedure
  • Intellectual Property