Incensed rival gets joss stick supplier's trademark voided

The same two Chinese characters are in Eley Trading's logo (above) and also formed Mr Kwek Soo Chuan's invalidated trademark. Both sides sold similar products such as incense, joss sticks and scented oils.
The same two Chinese characters are in Eley Trading's logo (above) and also formed Mr Kwek Soo Chuan's invalidated trademark. Both sides sold similar products such as incense, joss sticks and scented oils.

Registrar, in ruling on spat, says Chinese characters registered are in common use

Incensed with a rival brand, a joss stick supplier took the case to the trademarks registry, arguing its rival had registered a trademark using the same two Chinese characters it had on its products.

Eley Trading had applied in 2015 to invalidate Mr Kwek Soo Chuan's trademark for his products registered under the Chinese characters pu ti, meaning "bodhi" or "enlightenment".

The application came about after the company was told by its Singapore distributor in March 2015 that several retailers had withdrawn from selling Eley Trading's "Pu Ti" branded incense products after receiving Mr Kwek's notice that he owned the trademark.

Principal assistant registrar of trademarks Tan Mei Lin ruled Mr Kwek's registered trademark to be voided based on the Trade Marks Act after a two-day hearing held at the Intellectual Property Office of Singapore.

In judgment grounds last week, Ms Tan held that the two Chinese characters registered as a sign by Mr Kwek did not have any distinctive stylisation or embellishment that could be distinguished from other users of the characters that sell similar products.

She added that the public would first have to be educated to know that it is actually a trademark.

COMMON CHINESE CHARACTERS

Imagine a customer going into an incense shop and asking to buy 'Pu Ti' incense. Would it be certain that he wants to buy the 'Pu Ti' brand of incense rather than any brand of 'Pu Ti' incense? Due to the common use of (the Chinese characters), I do not think so. This would clearly not be the case if one were to walk into a shop and ask for a bar of 'Cadbury' chocolate.

PRINCIPAL ASSISTANT REGISTRAR OF TRADEMARKS TAN MEI LIN

Ms Tan said: "Imagine a customer going into an incense shop and asking to buy 'Pu Ti' incense. Would it be certain that he wants to buy the 'Pu Ti' brand of incense rather than any brand of 'Pu Ti' incense?

"Due to the common use of (the Chinese characters), I do not think so. This would clearly not be the case if one were to walk into a shop and ask for a bar of 'Cadbury' chocolate."

Mr Kwek had registered the mark in Chinese characters in 2013 for incense and joss sticks, scented oils and similar products which are used by practising Buddhists.

His lawyers Mark Teng and Gillian Tan argued he had been using the mark for nearly 20 years and customers had come to link the words with his products and no other.

Mr Kwek owns Bodhi Business Products, which distributes incense, joss sticks and scented oils.

Malaysia-based Eley Trading both manufactures and distributes religious products through retailers here and overseas, including Hong Kong and Thailand.

It had been selling incense and incense coils in Singapore under various brands for nearly 20 years.

One issue the registrar had to consider was whether the Chinese characters can function as a trademark.

Prior to Mr Kwek's trademark application in 2013, there were many similar products already carrying the same two characters.

Ms Tan found after considering the evidence and submissions that invalidation was made out under the relevant laws.

Mr Kwek is appealing against the decision.

A version of this article appeared in the print edition of The Straits Times on October 21, 2017, with the headline 'Incensed rival gets joss stick supplier's trademark voided'. Print Edition | Subscribe