IN THE HEARINGS AND MEDIATION DEPARTMENT OF
THE INTELLECTUAL PROPERTY OFFICE OF SINGAPOREREPUBLIC OF SINGAPORE

Trade Mark No. T0626526D
7 January 2019

IN THE MATTER OF A TRADE MARK REGISTRATION
IN THE NAME OFAALST CHOCOLATE PTE LTDAND

APPLICATION FOR REVOCATION THEREOF BY
THE PATISSIER LLP

Hearing Officer:

Burton Ong
IP Adjudicator

Ms Teresa O’Connor (Infinitus Law Corporation) for the Applicant
Mr Darrell Low, Mr Samuel Wee and Ms Jacinth Chua (Yusarn Audrey) for theRegistered Proprietor

GROUNDS OF DECISION

1When an application to register a trade mark is made to the Registrar of Trade
Marks, the applicant is required to submit “a clear representation of the trade mark”,“list the goods or services in relation to which the applicant seeks to register the mark”
and state “that the trade mark is being used in the course of trade… in relation to those
goods or services” or “that the applicant has a bona fide intention that the trade markshould be so used”.1 What happens if, after securing his trade mark registration, theproprietor decides to use an altered form of the trade mark that he has registered?
Should the proprietor be entitled to keep his trade mark registration if the trade mark he
1

Section 5, Trade Marks Act (Cap 332, 2005 Rev Ed).

[2019] SGIPOS 6
has actually put to use on his goods diverges from the form in which he has represented
his trade mark on the register of trade marks?
2
Trade mark revocation proceedings for non-use of a registered trade mark may
be pursued when the registered trade mark proprietor has not made genuine use of themark for a 5-year period following the date of completion of the registration procedure.
Where an applicant seeking the revocation of a registered trade mark is successful insuch proceedings, the unused trade mark is expunged from the trade marks register,
making it possible for other traders to register, or make use of, marks that are identicalor similar to the registered trade mark. In many cases, the focus of the non-use inquiry
is on whether the registered trade mark had been put to use by the proprietor in relation
to his goods and services and the extent of such usage. In such cases, the question to beaddressed is whether he has used the trade mark as part of a genuine effort at supplying
goods and services to the market, or whether such use “colourable” or “token” in nature.
This case is different insofar as there is ample evidence that the registered trade markproprietor has made extensive use of a trade mark, but in a form that is undeniably
different from the form in which his mark appears on the trade marks register. So thedispute here is concerned with what the registered trade mark proprietor has put to use
after successfully registering a particular trade mark. Should the registered proprietor’s
use of a mark, where the form in which it was actually used differs from the form inwhich it was registered, be regarded as a genuine use of that registered trade mark?
Where the registered proprietor of a trade mark makes use of the mark in a form which
diverges from the form in which his trade mark has been recorded on the trade marks
register, should he be entitled to retain the legal monopoly derived from his trade markregistration and keep his registered trade mark on the trade marks register?
3
Aalst Chocolate Pte Ltd is the Registered Proprietor (“the Proprietor”) of thefollowing trade mark:(“the Subject Mark”), in Singapore in Class 30 in respect of “Chocolates; chocolatebased products; cocoa products; chocolate chips; chocolate bars; chocolate candy;
chocolate creams; chocolate extracts; chocolate-based beverages; chocolate beverages
with milk; chocolate sauce; chocolate fudge; liqueur chocolates; milk chocolate;chocolate coated nuts; chocolate truffles and sweets; cocoa; coffee-based beverages;
snack foods consisting principally of chocolate; chocolate base aerated beverages;
cocoa-based beverages; chocolate wafers; confectionery; biscuits; cakes; coffee; tea;
tea-based beverages; caramels [candy]; candy for food; cookies; prepared desserts[chocolate based]; flavorings, other than essential oils, for beverages; ice cream; pastry;pies; sugar confectionery; puddings; fondants [confectionery]; mousse confections;bread and bakery products; buns; prepared snack foods; tarts, all included in class 30”(“Specification of Goods”). Registration of the Subject Mark was completed on 24 July
2008. The Proprietor is a Singapore-based company in the business of manufacturing
and selling chocolates and chocolate-based products.

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[2019] SGIPOS 6
4
On 28 September 2017, The Patissier LLP (“the Applicant”) filed an application
for revocation of the Subject Mark. The Proprietor filed its counter-statement andevidence in support on 18 January 2018.
5
The Applicant filed evidence in support of the application on 30 April 2018. The
Proprietor filed further evidence in support of maintaining the registration on 21 May
2018. The Applicant filed supplementary evidence in support of the application on 30
August 2018. Further to that, the Applicant made a request for leave to cross-examine
the Proprietor’s witness, Kwan Hoi Chee Deborah Connie. Leave was not granted as
the Applicant’s request for leave to cross-examine was not adequately supported bygood reasons. The parties then made their oral submissions before me on 7 January
2019. Subsequently, within two weeks of the oral hearing, the parties filed
supplementary written submissions on the partial revocation issue.
Grounds of Revocation
6
The Applicant relies on the grounds of non-use under Section 22(1)(a) and (b) of
the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) in this revocation. In thealternative, the Applicant sought partial revocation of the Subject Mark, by virtue ofSection 22(6) of the TMA, in respect of some of the goods for which the trade mark has
been registered.
Proprietor’s Evidence
7

The Proprietor’s evidence comprises the following:(i)a Statutory Declaration made by Kwan Hoi Chee Deborah Connie, Chief
Operating Office and Director of the Proprietor on 18 January 2018 in Singapore(“Proprietor’s SD1”) anda Statutory Declaration made by the same Kwan Hoi Chee Deborah Connie(“Proprietor’s SD2”), on 14 May 2018 in Singapore.

(ii)

Applicant’s Evidence
8

The Applicant’s evidence comprises the following:(i)a Statutory Declaration made by Tan Siang Oon, the acting partner of the
Applicant on 26 April 2018 in Singapore (“Applicant’s SD1”) anda Supplemental Statutory Declaration made by the same Tan Siang Oon, on 27
August 2018 in Singapore (“Applicant’s SD2”).

(ii)

Burden of Proof
9
Under Section 105 of the TMA, the Proprietor has the burden of showing that hehas made genuine use of the Subject Mark in Singapore.
Background
10 The Applicant is a Singapore-based company in the business of selling pastries,
sweets, candies, chocolates, confectionery and cakes. The Applicant is the registered-3-

[2019] SGIPOS 6
proprietor of Trade Mark Nos. T0518520H and T0518521F, registered in Classes 30
and 35, for “”.
11 Apart from the current proceedings, there are separate, but related, ongoing crossdisputes between the parties, with the Proprietor seeking to invalidate the Applicant’s
registered trade mark, while the Applicant is opposing other trade mark applications
made by the Proprietor in 2017 for marks comprising the word “pâtissier” as one of
their components.
12 In the current proceedings, the crux of the Applicant’s case is that the registration
for the Subject Mark should be revoked because the Proprietor has not used the markin the form in which it was registered. In the Applicant’s written submissions (“AWS”)
and during the oral hearing, without disputing that the Proprietor had clearly sold its
goods in packaging that bore various trade marks, the Applicant focused on the fact thatthe forms in which these marks appeared on the Proprietor’s goods were different fromthe form in which the Subject Mark was recorded on the trade marks register. The
evidence tendered by the parties indicates that, during all the relevant time periods, theProprietor had applied individual components from the Subject Mark as discrete marks,
albeit “in close proximity” towards each other, on the packaging of their chocolatebased products. So the central legal question to be addressed in this case is whether theform in which the mark has been used by the Proprietor should be regarded as a“genuine use” of the registered trade mark for the purposes of Sections 22(1) and 22(2)of the TMA.
13 There are essentially three components to the Subject Mark: (i) the word
“Pâtissier” in cursive, (ii) the toque or chefs’ hat device and (iii) the “by Aalst
Chocolate” text block. For the purposes of this case, components (i) and (ii) can be
combined together and will be referred in this decision as the “Pâtissier-hat” device,while element (iii) will be referred to as the “Aalst Chocolate” word element.

Subject Mark

Pâtissier-hat device

Aalst Chocolate wordelement

14 The Proprietor also owns a separately registered trade mark (Trade Mark No.
T0620036GD) which combines a picture of the lower case letter “a” in large font,incorporating what looks like a cocoa fruit or cocoa bean, together with the words“Aalst Chocolate”. This trade mark, which I shall refer to as the “Aalst house mark”
device, appears in the letterhead of all the tax invoices issued by the Proprietor whichwere admitted into evidence as exhibits supporting the Proprietor’s SD1. The Aalst
house mark device has been frequently used on the Proprietor’s product packaging in-4-

[2019] SGIPOS 6
conjunction with the Pâtissier-hat device. Two of the strongest examples of the
concurrent usage of the Aalst house mark device alongside the Pâtissier-hat device,taken from the Proprietor’s statutory declarations, are set out below.
Aalst house mark device

Example of Proprietor’s usage of Pâtissier-hat device Source (dates of usage)(alongside Aalst house mark device)
Proprietor’s SD1[7](1) and Tab B pg73
Packaging Design for “1 kgStanding Pouch” (Around2007)

Proprietor’s SD1[7](iv) and Tab B pg 79“Tub of Pâtissier Chocolate”(Around 2007)

15 In the Proprietor’s written submissions (“PWS”) and at the hearing before me,
the Proprietor’s main argument to support its use of the Subject Mark hinged on its-5-[2019] SGIPOS 6
claim that the “components” of the Subject Mark (i.e. the Pâtissier-hat device and the
Aalst Chocolate word element) “have always been used in close proximity” on its
product packaging, with reliance placed on the fact that the words “Aalst Chocolate” inthe Aalst Chocolate word element can also be found within the Aalst house mark device(PWS at [10] and [13]). References were also made by the Proprietor in its submissions
and evidence to numerous product invoices issued to its customers over the years that
contained the words “Aalst Chocolate” and “Patisser” (a misspelt reference to“Patissier”) to support its contention that “the average consumer… is likely to associatesuch brand as originating from Aalst” (PWS at [11] and [14]).
16
However, during the hearing, the Proprietor conceded that there was no evidenceof any use of the Subject Mark in the exact form in which it had been registered. At thatstage, the focus of the hearing turned to the legal question of whether the Proprietor’s
usage of the Pâtissier-hat device, on its own, qualified under Section 22(2) TMA as a“use in a form differing in elements which do not alter the distinctive character of themark in the form in which it was registered”. If so, then such usage could be relied upon
to repel the allegation of non-use on which this revocation application is premised. If
not, then the application to revoke the Subject Mark for non-use of the trade markshould be granted. The parties then proceeded to give their legal submissions on how
the statutory test in Section 22(2) TMA should be interpreted and applied to the factsof this case.
17 In the alternative, should the Proprietor’s use of the marks fall within the scopeof Section 22(2) TMA and genuine use of the Subject Mark is established, the Applicant
sought to have the Proprietor’s trade mark registration partially revoked, pursuant to
Section 22(6) TMA, to the extent that the Subject Mark had not been used on various
categories of goods listed in the Proprietor’s Specification of Goods. As the parties
were not prepared to address the partial revocation issue in detail during the oral
hearing, they were directed to make supplementary written submissions and propose
how the Specification of Goods might be narrowed down if partial revocation was
granted.
MAIN DECISION
Ground of Revocation under Section 22(1)(a) and (b)18Section 22(1)(a) and (b), (2), (3) and (4) of the TMA reads:
22. – (1) The registration of a trade mark may be revoked on any of the following
grounds:(a) that, within the period of 5 years following the date of completion of
the registration procedure, it has not been put to genuine use in the courseof trade in Singapore, by the proprietor or with his consent, in relation
to the goods or services for which it is registered, and there are no proper
reasons for non-use;(b) that such use has been suspended for an uninterrupted period of 5
years, and there are no proper reasons for non-use;…

-6-[2019] SGIPOS 6(2) For the purposes of subsection (1), use of a trade mark includes use in a form
differing in elements which do not alter the distinctive character of the mark in
the form in which it was registered, and use in Singapore includes applying thetrade mark to goods or to materials for the labelling or packaging of goods in
Singapore solely for export purposes.
(3) The registration of a trade mark shall not be revoked on the ground
mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred toin that paragraph is commenced or resumed after the expiry of the 5 year period
and before the application for revocation is made.
(4) Any commencement or resumption of use referred to in subsection (3) after
the expiry of the 5 year period but within the period of 3 months before themaking of the application for revocation shall be disregarded unlesspreparations for the commencement or resumption began before the proprietor
became aware that the application might be made.
(emphasis mine)
19
While the language of Section 22(1) indicates that the registration of the trade
mark “may” be revoked on grounds of non-use of the registered trade mark, theSingapore courts have taken the clear position that the statutory directive to rescind thetrade mark is not discretionary.2 Once it is established that a registered trade mark has
not been put to “genuine use” over the relevant statutory time periods, that registrationmust be revoked. Starting from the premise that the “genuine use” of the trade markreferred to in Section 22(1) requires use of the trade mark in the form in which it was
registered (i.e. the graphical representation on the record of the trade marks register), it
is clear from the italicised portions of Section 22(2) above that Parliament intended togive trade mark proprietors some latitude as to what counts as a “use” of the registeredtrade mark. The registered trade mark proprietor is statutorily permitted to rely on
usages of the mark “in a form differing in elements which do not alter the distinctive
character of the mark in the form in which it was registered” to establish that that theregistered trade mark has been put to “genuine use”.
Relevant Dates
20 In line with the parameters of the Applicant’s pleadings, the relevant dates underconsideration are as follows:(i)

Section 22(1)(a): The registration procedure was completed on 24 July 2008.
The 5-year period immediately following the completion of registration ended
on 24 July 2013. Thus, the period of use (or non-use) in issue is 25 July 2008 to
24 July 2013 (the “First 5-Year Period”).

(ii)

Section 22(1)(b): The application for revocation was filed on 28 September
2017. The 5-year period prior to this filing starts from 28 September 2012. The
period of use (or non-use) in issue is 28 September 2012 to 27 September 2017
(the “Second 5-Year Period”).

2

Reemtsma Cigarettenfabriken GmbH v Hugo Boss AG (No. 2) [2003] SGHC 205 [30] and Weir
Warman Ltd v Research & Development Pty Ltd [2007] SGHC 59 [98] (“Weir Warman”).

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Revocation of Registered Trade Marks – First Principles
21
Before identifying and analysing the legal test(s) to be applied under Section
22(2) TMA to determine whether the Proprietor has put the registered trade mark togenuine use, it may be helpful to set out the underlying policy rationales behind thetrade mark revocation mechanism within the trade mark law framework.3 Non-use of aregistered trade mark can result in the revocation of the trade mark registration becauseof:(i)

The inaccuracy rationale. The accuracy of the trade marks register isjeopardised by the continued presence of the registered trade mark within the
trade mark registration system. As a public record of all the statutorily createdintellectual property rights protected by the TMA, the trade marks register
performs an important notification function to rival traders and the public atlarge. By communicating what trade marks have been registered for use by theirproprietors, entries found on the trade marks register “notify rival tradersdealing in similar products of their rights over particular trade marks possessedby the registered proprietor” (per VK Rajah JA, Weir Warman at [42]). The
accuracy and currency of entries in the trade mark registration system matters
because they influence the commercial choices made by rival traders as to whatsigns they can, or should, use themselves when marketing their goods, and whatsteps should be taken to avoid infringing upon trade mark monopolies alreadyin existence. Public confidence in the fidelity of the trade mark registration
system will be undermined if the trade marks register is not kept up to date,where registered trade marks which have not been put to genuine use by theirproprietors are not expunged from the trade marks register.

(ii)

The unjustified legal monopoly rationale. The registered proprietor no longer
deserves to enjoy the proprietary rights created by the trade mark registration
when the registered trade mark is not performing the origin-indicating functionthat justified the existence of the legal monopoly in the first place. The exclusive
rights created by the registration of a trade mark do not subsist for the personal
amusement or gratification of the registered trade mark proprietor. The legalmonopoly sustained by the continued registration of a trade mark is legitimate
only to the extent that the registered mark continues to perform, through its
usage in the marketplace, as an indication of source or origin for the goods andservices of the registered proprietor. In other words, the rights and benefits
conferred upon the registered proprietor by the trade mark regime should only
last for so long as his trade mark actually serves the public interest by operating
as a badge of origin.

(iii)

The unfair competition rationale. The continued grant of a legal monopoly tothe registered proprietor might facilitate acts of unfair competition, which runs
contrary to the objectives behind the trade mark regime. If a user of theregistered trade mark system were allowed to accumulate trade markregistrations, and keep his registered trade marks on the trade marks registereven though they have not been put to genuine use, then the property rights

3

A concise summary can be found in New Yorker S.H.K. Jeans Gmbh & Co. v Daidoh Limited[2017] SGIPOS 16 at [27], drawing from Weir Warman at [42] and [99].

-8-[2019] SGIPOS 6
acquired through such trade mark registrations can be weaponised against othertraders with legitimate interests in exploiting trade marks that are identical orsimilar to these registered trade marks. Such behaviour, which includes socalled acts of trade mark “hoarding”, “squatting” or other opportunistic
behaviour by trade mark “trolls”, falls within the umbrella of “unfair
competition” that is antithetical to the basic objectives of trade mark law. Suchvarieties of extortionate behaviour are potentially harmful to the victims
targeted by the registered proprietor, as well as the public interest in maintaining
the integrity of the trade mark regime.
22 Two further observations can be made about the rationales behind the revocationof registered trade marks on grounds of non-use. Firstly, revoking a registered trade
mark on such grounds frees up “space” in the trade marks register for the benefit ofother traders by removing a legal obstacle that would have prevented them fromregistering or using a mark identical or similar to the registered trade mark. If aregistered trade mark owner has not put his registered trade mark to genuine use, heshould not be permitted to behave like a dog in the manger. Secondly, apart fromadvancing the interests of individual traders or users of the trade mark regime, the trade
mark revocation mechanism also serves a wider public interest, which includes theinterests of consumers and the trading community, insofar as it contributes towards
enhancing the fairness and overall coherence of this intellectual property framework.

Usage of a Trade Mark in a Form Which Differs from the Form in which It Was
Registered
23 Having registered his trade mark under the TMA, the registered trade markproprietor is expected to make use of that trade mark in relation to the goods or services
specified in his trade mark registration within the subsequent 5-year period. In astraightforward case where the mark is completely unused, or used in some trivial way
that cannot be regarded as “genuine”, then his trade mark registration is vulnerable torevocation proceedings under Section 22(1) of the TMA. In addition, non-use of theregistered trade mark can also occur when the form in which the mark is actually usedby the registered proprietor should be regarded, from a legal point of view, as not that
trade mark which has been registered.
24
The TMA does make some allowance for the registered proprietor to use hismark in a form which deviates from the form in which the trade mark was registered –as embodied by the statutory language found in Section 22(2) of the TMA – where “useof a trade mark” is defined as including “use in a form differing in elements which do
not alter the distinctive character of the mark in the form in which it was registered”.
The statutory language thus sets out a legal threshold for when use of a non-identicalvariant of a registered trade mark can count as use of that registered trade mark. By
implication, the use of a mark that one might regard as similar, or perhaps substantiallysimilar, to that registered trade mark will not suffice. It appears, however, that theSingapore courts have not laid down concrete rules for how the contours of thisstatutory test should be interpreted or given clear guidance on the appropriate breadthof the “wriggle room” given to registered trade mark proprietors under this provision.
To determine whether the scope of this subsection is wide enough to apply to the marks
used by the Proprietor in this case, it is necessary to examine the statutory language-9-[2019] SGIPOS 6
found in Section 22(2) of the TMA in the context of the relevant legal precedents,
principles and policies that operate within the sphere of trade mark revocation
proceedings.
25 Even though the TMA does not provide explicit statutory guidance on how todetermine when the “distinctive character of the mark” has been altered, the issue ofwhen non-identical trade marks should be regarded as possessing sufficient legal
proximity to each other is relevant in another statutory provision of the TMA. Arisingin the context of when non-identical trade marks are eligible to be registered together
under a single trade mark application, Section 17 of the TMA permits a “series of trade
marks” to be the subject of a single trade mark application, with Section 17(2) providingthat:… ‘series of trade marks’ means a number of trade marks which resemble eachother as to their material particulars and which differ only as to matters of a nondistinctive character not substantially affecting the identity of the trade mark4
26 While the wording of Section 22(2) of the TMA requires the actually used formof the trade mark to possess the “distinctive character” of the registered form of the
trade mark so as to avoid the latter’s revocation on grounds of non-use, the language ofSection 17(2) states that the members of a “series of trade marks” can differ “only as tomatters of a non-distinctive character” that do not “substantially” affect “the identity ofthe trade mark”. Adopting an approach towards statutory interpretation that promotesinternal consistency between Sections 17 and 22 of the TMA would suggest asubstantial overlap between the breadth of Section 17(2) and Section 22(2). Nonidentical trade marks that qualify as part of a “series of trade marks” because they
“resemble each other as to their material particulars and which differ only as to mattersof a non-distinctive character not substantially affecting the identity of the mark” could
also be regarded as trade marks which share the same “distinctive character”. In otherwords, each trade mark belonging to a single “series of trade marks” should be regarded
as possessing a form “differing in elements which do not alter the distinctive characterof” the other members of that series. So when a registered trade mark proprietor makes
use of one member of his “series of trade marks”, his use of that trade mark should also
be regarded as a use falling within Section 22(2) of the TMA in relation to the othertrade marks belonging to the same series. If I am correct in drawing this parallel
between these provisions of the TMA, then there should be some correspondence
between the breadth of Section 22(2) of the TMA and the scope of the test for when
non-identical trade marks qualify as a “series of trade marks”.

4

Chapter 8 of the Trade Marks Work Manual, published by IPOS, sets out the following guidance(“General requirements of a series”), at page 4: (a) Each mark in the series must resemble each of theothers in the series in their material particulars, that is, the main features in each of the trade mark mustbe essentially the same. (b) The differences between the marks must comprise only matters which, when
considered as separate elements of the mark, be non-distinctive in nature. (c) The differences between
the trade marks must not comprise matters which, in the context of the trade mark as a whole,substantially affect the identity of the trade mark. Elaborating on requirement (c) above, the Manual takes
the position that the “visual, phonetic and conceptual identity” of the trade marks must be “substantiallythe same” for them to constitute a series, and that it is not enough that they “would be regarded asconfusingly similar to each other if used by unrelated undertakings.” The illustrative examples set out inthis publication suggest that a relatively narrow approach is taken by the Trade Marks Registry when
determining if different marks should qualify for the same series.

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[2019] SGIPOS 6
The United Kingdom Approach27
One of the leading UK cases in this area is Bud and Budweiser Budbräu Trade
Marks [2003] RPC 25 (“Budweiser UKCA”), where the English Court of Appeal had
to review the legal tests applied by the High Court and the Registrar of Trade Marks inrevocation proceedings under the UK Trade Marks Act 1994. One of the appeals wasconcerned with the registered proprietor’s trade mark, comprising the words“Budweiser Budbräu” in a stylised script. An application to revoke the “Budweiser
Budbräu” trade mark was made on the basis that the mark had not been used in the form
as registered. The registered proprietor had made use of the word “Budweiser Budbräu”
in block capitals printed in a circle around pictorial elements on a label, imitating theappearance of a red wax seal, around the neck of beer bottles.
28
Applying Section 46(2) of the UK Trade Marks Act 1994, which is in parimateria to Section 22(2) of the TMA, the Registrar dismissed the application to revoke
the mark for non-use because he took the view that the actual use made of the mark by
the registered proprietor was, indeed, “in a form differing in elements which do not alter
the distinctive character of the mark in the form in which it was registered”. In reaching
his conclusion, the Registrar adopted the following approach. He found that what madethe mark distinctive were the words “Budweiser Budbräu” and that presenting thesewords in a different font from the font in which the mark was registered did not “detract
from… the central message” communicated to the “average consumer” because theother elements on the label were “relatively indistinct in themselves when compared to
the words, and even when considered collectively do not overcome the basic tenet thatwords speak louder than devices.”5 The UK High Court, in Bud and Budweiser
Budbräu Trade Marks [2002] RPC 238 (“Budweiser UKHC”), reversed the decisionof the Registrar on this issue, criticising the Registrar on two grounds. Firstly, theRegistrar should not have focussed on “what the average consumer’s reaction to a markis” when the assessment of the distinctive character should be made “through the eyesof the registrar”. Secondly, the Registrar “was wrong in seeking to ascertain what was
the central message of the mark” because “[t]his was not the statutory test”. The UK
High Court judge held that this over-emphasis on the words being “the most striking
feature” of the mark would lead to the untenable outcome that “in a majority of cases
use of a trade mark in ordinary letters, whether in upper of lower case, would constituteuse of a stylised version of the mark”.6
29 The UK High Court judge, Simon Thorley QC emphasised that, given the precise
wording of the statutory subsection, the approach taken towards interpreting Section
46(2) should not be conflated with the comparative mark-similarity analysis that is
carried out in cases where trade mark infringement is alleged. He also took the view,which the UK Court of Appeal did not dissent from, that Section 46(2) was of narrow
scope:
Next, it is to be noted that the language of section 46(2) does not use acomparative when defining alterations that can be accepted. It does not statethat the alteration must not “substantially” alter the distinctive character. The
requirement is that the alternative form may only differ in elements which do
not alter the distinctive character of the mark. In my judgment this is indicative
5
6

Budweiser UKCA at [6], referring to [20] and [23] of the Registrar’s decision.
Budweiser UKCA at [7], referring to [30] of the High Court’s decision.

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[2019] SGIPOS 6
that the subsection is of narrow scope. Alterations which would be immaterial
for the purpose of infringement, in that the alleged infringing mark was
confusingly similar to the registered mark, are irrelevant. It is thus necessary for
any tribunal seeking to apply section 46(2) to determine what is the distinctive
character of the mark and which are the elements that, in combination,
contribute to that distinctive character. Thereafter it must enquire whether any
alteration to any of those elements is of sufficient immateriality as not to alterthat overall distinctive character.7
30 The UK Court of Appeal allowed the appeal against the UK High Court’s
decision on this issue, albeit with reservations about the way the Registrar had framed
his analysis of Section 46(2). The decision of the Registrar was upheld because he could
not be said to have made an error of principle, even though “he might have expressed
his view more clearly” and had reached a conclusion which, while “surprising… [could
not be] described as clearly wrong”.8
31 While agreeing that the assessment of form in which the mark was put to use had
to be viewed through the eyes of the Registrar, Sir Martin Nourse took the position that“the registrar, in assessing the distinctiveness of the mark, would necessarily have toview the matter through the eyes of the average consumer”.9 Lord Walker observed that“[t]he distinctive character of a trade mark (what makes it in some degree striking andmemorable) is not likely to be analysed by the average consumer, but is neverthelesscapable of analysis”,10 and did not see a direct conflict arising from “the issue of ‘whoseeyes? – registrar or ordinary consumer” because:
It is for the registrar, through the hearing officer’s specialised experience andjudgement, to analyse the ‘visual, aural and conceptual’ qualities of the markand make a ‘global appreciation’ of its likely impact on the average consumer,
who:‘normally perceives a mark as a whole and does not proceed to analyse
its various details.’11
32 On the correctness of the “central message of the mark” approach taken by theRegistrar, Lord Walker observed that “it is not always helpful to paraphrase a statutory
test before applying it”, emphasising that what mattered was that the analysis included
an understanding of the “essential ‘visual, aural and conceptual’ qualities which
combine to give a mark its distinctive character”.12 Articulating an approach which
adhered more closely to the language in the statutory provision, Lord Walker reframed
the legal test to be applied to determine whether the actual use of the mark fell within
the scope of Section 46(2) in the following way:
The first part of the necessary inquiry is, what are the points of difference
between the mark as used and the mark as registered? Once those differences
7

Budweiser UKHC at [22] (emphasis added).
Budweiser UKCA at [12] (per Sir Martin Nourse) and [53] (per Lord Walker). At [52], Lord Walker
noted that if he had a free choice between the hearing officer’s (Registrar’s) decision and that of thedeputy judge (Mr Simon Thorley QC, High Court), he would “unhesitatingly choose the latter”.
9
Budweiser UKCA at [10].
10Budweiser UKCA at [44] (emphasis added).
11
Budweiser UKCA at [45] (emphasis added).
12
Budweiser UKCA at [47].
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[2019] SGIPOS 6
have been identified, the second part of the inquiry is, do they alter the
distinctive character of the mark as registered?13
33 Taking both the UK High Court and UK Court of Appeal decisions in this case
together, I would make the following observations about the UK approach towards theinterpretation of Section 46(2) of the UK Trade Marks Act 1994. Firstly, there is a clear
preference towards directly applying the statutory language in Section 46(2) – inparticular, to identify the “distinctive character” of the registered trade mark, as thereference point against which to determine if the altered form of the mark actually usedby the registered proprietor ought to be considered a use of the registered trade mark.
Secondly, the inquiry of whether the actually used form of the trade mark altered (notsubstantially altered) the distinctive character of the registered form of the trade markshould be carried out from the perspective of the average consumer. This point of view
would, necessarily, be considered by a tribunal when evaluating the forms in the whichmark has been registered and used. Thirdly, identifying the “distinctive character” of aregistered trade mark entails an appreciation of all its different qualities and elements
as a whole, before a decision is taken as to whether the form in which the mark has
actually been used alters (not substantially alters) this “distinctive character”.
The Singapore Experience with Section 22(2) of the TMA
34 Cases concerned with trade mark revocation proceedings in Singapore, where
allegations of non-use of the registered trade mark have been made because theregistered proprietor has used a form of his mark that differs from the form in which it
was registered, do not appear to have clearly articulated a clear legal test for how
Section 22(2) of the TMA ought to be interpreted and applied. Local decisions cited tome in these revocation proceedings were cases where the surrounding elements havebeen added to the form in which the trade mark has been registered, or where changes
have been made to the dimensions or positioning of the elements of the registered trademark.
35
In Nation Fittings (M) Sdn Bhd v Oystertec plc [2006] 1 SLR(R) 712 (“Nation
Fittings”), the Singapore High Court had to consider whether the registered trade markcould be said “to be used if it is incorporated into another mark or is surrounded byother elements and used in conjunction with them”.14 Phang J (as he then was) held thatwhile there had been a literal use of the mark, there had not been use of the mark “in alegal sense” because the registered trade mark had been “subsumed within otherelements to the extent that it is no longer recognisable as such”.15
36 In Capitol Records LLC v Steven Corporation Pte Ltd [2010] SGIPOS 14(“Bluenotes”), the Hearing Officer had to decide if the registered mark,“BLUENOTES”, had been put to genuine use in Singapore when the actual use by theregistered proprietor on its tax invoices consisted of marks in the form of “BLUENOTES” and “BLUE NOTE”. The Hearing Officer cited Professor Ng-Loy Wee
Loon’s book, Law of Intellectual Property in Singapore (2008 Edition) at [25.3.8], that“[f]or the purposes of s.22(2), the ‘distinctive character’ of the registered trade mark13

Budweiser UKCA at [43].
Nation Fittings at [122].
15
Nation Fittings at [123].
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[2019] SGIPOS 6
refers to the ‘essential feature’ of the trade mark”16 and went on to conclude that the“distinctive character in ‘BLUENOTES’ and ‘BLUE NOTES’ is the same which isessentially, the words ‘BLUE’ and ‘NOTES’” and that the distinctive character of theregistered trade mark was not altered by either the insertion of a space between the twowords or a change from the plural to the singular form of the word “note”:
As the registered mark comprises only of words, it is clear to me that thedistinctive character of the mark are the combination of the words, "BLUE" and"NOTES". In the registered form, the two words are joined together with nospacing in between and "NOTES" is in the plural form. The Applicants'
contention is that in use, there is spacing between the two words and that theform of the mark in use alters the distinctive character of the mark. I do not think
so. This is because, whether in the joined form or with the spacing between thewords, it is clear that the mark comprises of the two words, "BLUE" and"NOTES" when read aurally and when looked at visually. The joining of thetwo words, "BLUE" and "NOTES" does not render a new word with a different
pronunciation or with a different look. The distinctive character in"BLUENOTES" and "BLUE NOTES" is the same which is essentially, thewords, "BLUE" and "NOTES". I note that the word "NOTES" is in the singularform in the instance of use in paragraph 9(a) and in the plural form which is thesame as that which was registered in the instance of use in paragraph 9(c). The
next question is, does it matter that some use show use of the word, "NOTES"
in the plural form and in some instances, "NOTES" is in the singular form of"NOTE"? Again, I do not think this fact changes the finding that the mark inuse does not differ in elements that constitute the distinctive character of themark as it has to be taken into consideration that in commerce, it is reasonable
for some minute details to be overlooked or glossed over. The fact that there isinconsistency in the references to the mark concerned in the invoices shows thatthe inconsistency stems more from such glossing over than from a real intentionof the Proprietor to alter the mark from one conjoined term comprising of thetwo words, "BLUE" and "NOTES" to one comprising of two separate words,"BLUE" and "NOTE" in use. Thus, use of "BLUE NOTE" or "BLUE NOTES"
is considered as use of "BLUENOTES" by virtue of Section 22(2) since theformer do not differ in elements which alter the distinctive character of the markas registered in the latter.17(emphasis mine)
37 The origins of “the essential feature” approach towards analysing the forms of
the registered trade mark and the mark actually used by the registered proprietor can betraced to a stray line from the Singapore High Court’s judgment in RichemontInternational SA v Da Vinci Collections Pte Ltd [2006] 4 SLR 369 (“Da Vinci”),
where the court held that there had been use of the registered mark (“DA VINCI” inblock capitals) in Singapore through the plaintiff’s use of the words “Da Vinci” incursive or stylised form because “the words ‘Da Vinci’ remain distinctly the essential

16

Bluenotes at [38]. The same sentence can be found at [25.3.10] of the 2014 edition of Professor NgLoy’s book, which was submitted by the Applicant in its bundle of authorities.
17
Bluenotes at [38]. The italicised portion indicates how the “essential feature” approach was applied to
identify the “distinctive character” of the registered trade mark.

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[2019] SGIPOS 6
feature”18 of the registered trade mark.19 It is not clear from the judgment that the High
Court intended for “the essential feature” approach to be the general legal test for
Section 22(2) of the TMA. In that case, the Singapore High Court was simply endorsing
the classic trade mark law principle, derived from the old English authority of In the
Matter of Morny Ld’s Trade Marks (1951) 68 RPC 131, at 145, that a trade markcomprising a word registered in plain block capitals was put to genuine use whenever
the letters of the word were used in “various stylised forms”.
38
In my view, there are several other reasons why “the essential feature” approachshould not be taken as the general legal test for Section 22(2) of the TMA. Firstly,
paraphrasing the language used in that subsection runs the risk of inadvertently
distorting the contours of the statutory test, a danger illustrated by the UK courts’
dissatisfaction with the “central message” test in Budweiser UKHC and Budweiser
UKCA cases. Does a trade mark always have an essential feature? Can a trade markhave more than one essential feature? In what sense is a feature of the trade mark“essential” – what is it essential “for” or essential “to”?
39
Secondly, “the essential feature” approach may only work in a more limited
range of cases where the trade mark is used in an altered form, compared to the form inwhich it was registered. Trying to identify what is “the essential feature” of a registeredtrade mark as a proxy for identifying “the distinctive character” of the trade mark works
best if the alteration of form in which the mark is presented is confined to relatively
more superficial changes, such as a change in the font of the lettering of a word markor the insertion of a space between letters in a word mark, rather than a case wherelarger components of the mark have been removed from, or added to, the form in which
the trade mark was registered.
40
Thirdly, “the essential feature” approach may be incompatible with theinherently holistic inquiry that should be pursued when identifying the “distinctive
character” of the registered trade mark. Rather than deconstructing the specific featuresof the form in which the trade mark has been registered to identify which one(s) are“essential”, before going on to see if it/they can also be found in the form in which themark has been actually used by the registered proprietor, the “distinctive character”
concept found in Section 22(2) of the TMA seems to require a holistic assessment of
all the elements and qualities of the mark in combination with each other. The
distinction between a “feature” of, and the “character” of, a registered trade markechoes the contract law distinction drawn between the “attributes’ and the “identity” ofan individual person in mistaken identity cases.
41 Fourthly, adopting “the essential feature” approach runs the risk of substituting
the statutory test in Section 22(2) of the TMA for something akin to a mark-similarity
test that one would use in trade mark infringement proceedings, a concern that was
18

Da Vinci at [24].
The “essential feature” concept is also a relic from older trade mark cases, decided under the old Trade
Marks Act (Cap 332, 1985 Rev Ed) which did not have a provision like Section 22(2) TMA. See, forexample, Swanfu Trading Pte Ltd v Beyer Electrical Enterprise Pte Ltd [1994] SGCA 19 at [34]-[36]where it was affirmed that there was non-use of a registered composite trade mark since the actual useof the mark left out the “Swanfu” word element, which was “an essential feature of the mark” because it“would be recognized in its function of distinguishing Swanfu’s goods from similar goods of othertraders” and “its omission from the mark used affected the identity and form of the mark both to the eye
and the ear”.
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[2019] SGIPOS 6
flagged in Mr Simon Thorley QC’s decision in Budweiser UKHC. Instead of asking
whether the form in which a mark has been put to use has altered the distinctive
character of the trade mark in the form it was registered, the inquiry may – consciouslyor unconsciously – morph into whether the form in which the mark has been put to use
has incorporated or reproduced “the essential feature” of the form in which that trade
mark was registered.20 This may lead the inquiry down a path that considers what are
the dominant or distinctive elements of the registered trade mark and whether thealterations present in the form in which the mark was actually used were substantial ornot, none of which are relevant to the specific question raised by Section 22(2) of the
TMA: does the form in which the mark was actually used differ in elements which do
not alter the distinctive character of the mark in the form in which it was registered?
42
In my view, rather than comparing the form in which the mark has beenregistered with the form in which the mark has been actually put to use, in order todetermine if “the essential feature” of the former is discernible in the latter, the ultimate
focus of the statutory test in Section 22(2) of the TMA must revolve around what shouldhave been identified from the outset – the “distinctive character” of the trade mark in
the form in which it has been registered. Thereafter, the focus of the inquiry shifts tothe form in which the mark has been used and requires an evaluation of the extent towhich alterations have been made by the registered proprietor to the registered form of
the trade mark. Before setting out in detail the approach I will take in this case, it isnecessary for me to consider another decision of the Singapore High Court which wasraised during the oral hearing.
43 In Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long [2003] SGHC
169 (“Bluestar”), the court decided that the registered trade mark (“RTM”) (the words“BLUE STAR” with a large star device above the words) had been put to genuine use
in Singapore even though the mark actually used by the registered proprietor took theform of the words “BLUE STAR” with a smaller star device repositioned beside, or
below, the words. Woo J held that “the distinctive character of the RTM was not thestar device notwithstanding its size” because star devices were “used in many marks
belonging to others”.21 Adopting a mode of analysis which bears some resemblance to“the essential feature” approach discussed above, the court concluded that:
The RTM should not be considered in isolation as a registered trade mark. Here,the business was the manufacture and sale of clothing to the public. In my view,the trade and public would refer to the RTM simply as “Blue Star” and not “BlueStar with a star device”… in my view, the use of a smaller star device and theinsertion of the star device in a different location, for example, below or besideor in between the words “BLUE STAR” did not alter the distinctive characterof the mark. The distinctive character, which was the words, had been enlarged
while the star device had become smaller. Such an enlargement did not, in myview, run afoul of s 22(2). Accordingly, it was not necessary for me to decide
whether the use of:(a) the words without the star device;(b) the words in different forms of lettering; and20This may be illustrated, in my view, by the highlighted portion of the excerpt above accompanying
footnote 17.
21
Bluestar at [36]-[38], referring to the use of star devices in conjunction with other brands like
“CONVERSE”, “U.S. MASTER” and “HARLEM STAR”.

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[2019] SGIPOS 6(c) the mark with a more graphic design of the star device
would run afoul of s 22(2) because all the products sold in Singapore had, atleast, a tag and/or label with the words “BLUE STAR” in similar lettering as
the RTM and the star device. 22
44 In deciding that the “distinctive character” of the trade mark “was the words”,
Woo J had, effectively, designated the words “BLUE STAR” as “the essential feature”
of the registered trade mark – thus leading him to the conclusion that there would be
use of the mark within the meaning of Section 22(2) of the TMA so long as the words“BLUE STAR” had been used by the registered proprietor. The changes made to thesize, positioning or other characteristics of the star device did not alter his view that theregistered trade mark had been put to actual use, because the distinctive character of theregistered trade mark had been embodied entirely within the word device componentof this composite mark. The somewhat liberal approach taken by the Singapore High
Court in this case towards the interpretation and application of Section 22(2) of the
TMA should, with respect, be approached cautiously for at least two reasons.
45
Firstly, there appears to be some uncertainty as to how the “distinctive
character” concept, which is central to the application of Section 22(2) of the TMA,
was interpreted in the judgment. The court identified the words “BLUE STAR” as the“distinctive character” of the composite mark on the basis that “the trade and publicwould refer to the RTM simply as ‘Blue Star’ and not ‘Blue Star with a star device’”.
This appears to interpret the concept of distinctiveness in a technical sense, with anemphasis on how the word component of the registered trade mark functions as a badgeof origin from the perspective of the average consumer. As the Singapore Court ofAppeal has explained in Staywell Hospitality Group Pty Ltd v Starwood Hotels &Resorts Worldwide Inc [2014] 1 SLR 911 (“Staywell”) at [24]:Distinctiveness in the technical sense… stands in contradistinction todescriptiveness…. Distinctiveness can be inherent, usually where the words
comprising the mark are meaningless and can say nothing about the goods orservices; or acquired, where words that do have a meaning and might well say
something about the good or services, yet come to acquire the capacity to act asa badge of origin through long-standing or widespread use.
46 Rather than focusing on the qualities, characteristics and details of the registeredform of the trade mark that gave it its “distinctive character”, the court seemed to lookat what made the trade mark “distinctive” in the eyes of the trade and the public,equating what makes the mark “distinctive” (in a technical sense) – that which enables
the average consumer to distinguish the proprietor’s goods or services from the thoseoffered by other traders – with the “distinctive character” of the mark. However, as
Professor Ng-Loy’s treatise23 has pointed out:The ‘distinctive character’ of the registered trade mark in this context does nothave the same meaning as ‘distinctive character’ as a registration criterion. The
latter refers to the capacity (inherent or acquired) of the mark to function as atrade mark to denote the origin of the goods or services in question.
22
23

Bluestar at [41]-[42].
See n16 above at [25.3.8].

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[2019] SGIPOS 6
47 Instead, the “distinctive character” concept in Section 22(2) of the TMA must be
understood in light of the non-technical meaning of “distinctiveness”, where attention
is paid to those aspects of the mark’s appearance which would stand out to the average
consumer viewing the trade mark (in the form in which it has been represented on the
trade marks register). This non-technical meaning of “distinctiveness” was clearly
adopted by Lord Walker in Budweiser UKCA (see [28] above) when interpreting theUK equivalent of Section 22(2) of the TMA, and has been explained by the Singapore
Court of Appeal in Staywell at [23] in the following manner:
Distinctiveness in the ordinary and non-technical sense simply refers to what is
outstanding and memorable about the mark. Such components tend to draw theconsumer’s attention...
48 So while “the trade and the public” may not have referred to the registered trade
mark in Bluestar as “Blue Star with a star device” because they would have regarded
the “Blue Star” word device as the principal component which gave the trade mark its
ability to function as badge of origin, the pictorial star device (as it appeared in the form
in which the trade mark was registered) could reasonably have constituted a component
which “tend[s] to draw the consumer’s attention” and hence could reasonably have been
regarded as part of the “distinctive character” (in a non-technical sense) of theregistered trade mark.
49
Secondly, the court in Bluestar, at [32]-[33], cited Simon Thorley QC’s
interpretation of the UK equivalent of Section 22(2) of the TMA from Budweiser
UKHC (see [27] above) and acknowledged that the UK Court of Appeal “did notdissent from that part of his judgment which said that the relevant provision was ofnarrow scope”. Without explicitly affirming or rejecting the UK position on the breadththat should be given to Section 22(2) of the TMA, the court went on conclude that,
despite the alterations made to the size and position of the star device from the way inwhich the trade mark was originally represented on the trade marks register, theregistered trade mark had been put to genuine use in Singapore. This conclusion waspremised on the view that the “distinctive character of the [registered trade mark] was
not the star device notwithstanding its size”, along with the observation that star devices
were “used in many marks belonging to others”.24
50 During the oral hearing, counsel for the Proprietor recognised this internal
inconsistency between the stringency of the UK approach (which counsel for the
Applicant urged me to follow) and the more generous interpretation of the scope ofSection 22(2) of the TMA in Bluestar, suggesting that I should take my cue from thislocal decision and find in favour of the Proprietor.25 Given the doubts I have expressed
above about the status of the “essential feature” approach towards interpreting the“distinctive character” concept found in Section 22(2) of the TMA, as well as my viewthat the Singapore courts have yet to articulate a binding legal test to be followed when
applying this statutory provision, I will set out my views on how this area of trade marklaw should be understood below before applying the law to the facts of this case.

24

Bluestar at [36].
Bearing in mind, of course, that Bluestar at [36] also reminds us that “[i]t is trite law that each casemust depend on its own facts.”
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[2019] SGIPOS 6
A Framework for Section 22(2) of the TMA
51
In my view, the UK caselaw which deals with the UK equivalent of Section 22(2)of the TMA should be regarded as highly persuasive in deciphering the limits andcontours of this statutory provision. The following legal principles may be distilledfrom the experience of the UK courts. Firstly, the meaning of the word “distinctive”,
when used in the context of the “distinctive character of the mark in the form in which
it was registered” requires “distinctiveness” to be understood in the non-technical senseof the word. Secondly, when identifying the “distinctive character” of the trade mark,the tribunal must look at all the visual, aural and conceptual qualities of the trade markfrom a holistic perspective, rather than focusing on any “essential feature”. Thirdly, inlight of the policy rationales underlying the revocation of registered trade marks on
grounds of non-use, the breadth of Section 22(2) of the TMA must be fairly narrow in
its scope. Registered trade mark proprietors cannot have free rein to ignore theregistered form of their trade marks and use whatever variants they like on their goods
and services, while insisting on holding on to their original trade mark registrations.
The public notification function of the trade marks register would be distorted if aregistered proprietor was permitted to represent his trade mark in a particular form on
the register, and maintain this registration, while only putting other forms of the markto actual use on its goods and services. The justification for continuing to grant thetrade mark proprietor a legal monopoly over the trade mark, in the form in which it has
been registered, fades away once it is shown that the proprietor has not used that trade
mark on his goods and services.
52 Drawing upon Lord Walker’s judgment in Budweiser UKCA (see [32] above), it
is my view that the correct approach towards applying Section 22(2) of the TMA canbe articulated using the following three-stage test:
Identification Stage. Looking at the form in which the trade mark was registeredas a whole, what should the Registrar (taking the viewpoint of the average
consumer) regard as the “distinctive character” of the registered trade mark?
Comparison Stage. Turning to the form in which the trade mark was actuallyused, what changes have been made to the elements of the registered trade mark(including stylisation, additions, deletions, adjustments to size or other featuresof appearance) which differentiate it from the registered form of the trade mark?
Evaluation Stage. Looking at the differences between these two forms of the
trade mark, has there been an alteration of the “distinctive character” of theregistered form of the trade mark? If so, then the registered proprietor has not
put the registered form of the trade mark to genuine use for the purposes ofSection 22(1) of the TMA.
Application to the Facts
53 Applying the framework set out above to the facts of the present case, the firststage requires a careful consideration of the form in which the Subject Mark was
registered, as a whole, to identify its “distinctive character”. The second stage involves
comparing the appearance of the Pâtissier-hat device and the Aalst house mark device(see [14] above for the strongest examples of concurrent usage of these two marks),- 19 -

[2019] SGIPOS 6
which the Proprietor has actually used on its products, against the appearance of the
Subject Mark, to pinpoint the differences between them. The third stage involves anevaluation of the consequences of these differences between the registered and actuallyused forms of the trademark: have the forms in which the Proprietor has actually used
its mark(s) altered the distinctive character of the Subject Mark (the registered form of
the trade mark)?
54 At the first stage of the inquiry, I would regard the “distinctive character” of the
Subject Mark to reside within the various distinctive (understood in a non-technicalsense of the word) elements of the composite mark. I would accept the Proprietor’s
submissions, made during the oral hearing, that the Pâtissier-hat device is a distinctive
element of the Subject Mark because (i) it occupies about three-quarters of the area ofthe mark, (ii) it is likely to be read by the average consumer before the Aalst Chocolate
word element and (iii) it has visual appeal because of the graphical element (the drawingof the chef’s toque). I would also accept Applicant’s submission that Aalst Chocolate
word element is an element that the average Singapore consumer would take note ofwhen viewing the Subject Mark because “Aalst” is “the name of a town in Belgium...
that most Singaporeans may not be familiar with… [and] most Singaporean consumers
will take note of the word “Aalst” as it is more uncommon than “Pâtissier” and isunusual” (AWS at [30]). There is no need for me to decide whether the Pâtissier-hat
device is more distinctive than the Aalst Chocolate word element, or whether the
Pâtissier-hat device is the “essential feature” of the Subject Mark, because I am
interested in identifying the distinctive character of the Subject Mark as a whole. In myview, the distinctive character of this trade mark, in the form in which it has beenregistered, resides in the combination or collocation of these two distinctive
components within a single composite mark or, as the Applicant has put it, “elements[that] are contained within the borders of an invisible rectangle” (AWS at [29]).
55 At the second stage of the inquiry, given that there is no evidence that the Subject
Mark has been used in its entirety, or in the exact form in which the trade mark was
registered, a straightforward comparison should be drawn between the Subject Markand what the Proprietor has actually used as trade marks on its goods. From theevidence tendered by the parties, it seems clear enough that the Proprietor has applied
two separate marks simultaneously to many of its products – the Pâtissier-hat device
and the Aalst house mark device. As the Pâtissier-hat device bears the closest
resemblance to the Subject Mark, this stage of the inquiry should focus on the
differences between the Pâtissier-hat device and the Subject Mark. The outcome of thisinquiry is obvious: the mark which the Proprietor has actually put to use is different
from the form in which the Subject Mark was registered to the extent that the Aalst
Chocolate word element is absent from the former.
56 At the final stage of the inquiry, the legal question to be answered is whether useof the Pâtissier-hat device on its own, without the concurrent use of the Aalst Chocolate
word element below that device in the bottom right-hand corner, constitutes a “use in aform differing in elements which do not alter the distinctive character of the mark in
the form in which it was registered”? The inquiry here is not whether the use of thePâtissier-hat device alone would be regarded by the average consumer as the actual use
of a mark that is substantially different from the Subject Mark. Neither is the inquiry
focused on whether “the essential feature” of the Subject Mark is to be found in the
Pâtissier-hat device which has been put to actual use, on its own, by the Proprietor.

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[2019] SGIPOS 6
Instead, the precise question to be resolved at this stage is whether the form of the markactually used by the Proprietor differs from the Subject Mark only “in elements which
do not alter the distinctive character” of the Subject Mark “in the form in which it was
registered”.
Subject Mark
Pâtissier-hat device(Form in which trade mark (Form in which Proprietor
was registered)
has actually used his
mark)

57 The Pâtissier-hat device which the Proprietor has put to actual use differs fromthe Subject Mark in respect of an element – the Aalst Chocolate word element – which
I believe would be regarded by the average consumer as a distinctive element (i.e. a
component that will catch the eye of the average consumer looking at the Subject Markas a whole). Professionals in the food and catering industry who purchase chocolatebaking ingredients in bulk, at whom the Proprietor’s goods are primarily targeted, areprobably very accustomed to scrutinising the contents of food labels. The averagecustomer’s attention is likely to be drawn to any sign on the packaging that conveys
information about the source or origin of the ingredients used by the manufacturer.
Together with the reasons why “Aalst” would stand out to local consumers (see [54]above), the words “By Aalst Chocolate” in the Aalst Chocolate word element are thus
likely to stand out to such customers viewing the Subject Mark, making them distinctive
in a non-technical sense.
58 Thus, the excision of the Aalst Chocolate word element from the Subject Mark
when the Proprietor chose to use the Pâtissier-hat device on its own means that the latteris different from the former in respect of a distinctive element. This difference between
the registered form and actually used forms of the trade mark leads me to the conclusionthat the variant of the Subject Mark used by the Proprietor is one that has altered the“distinctive character” of the Subject Mark. This conclusion I have reached isconsistent with the recent observations from the Supreme Court of New Zealand, cited
to me by the Applicant (AWS at [49]), concerned with statutory language found in the
New Zealand Trade Marks Act 2002 that was based on the Singapore Trade Marks Act,
which contrasts the impact of an addition of elements to, with the impact of a
subtraction of elements from, the form in which a trade mark has been registered:
The essential question remains whether removing or adding elements hasaltered the distinctive character of the trade mark. We do accept, however, thatwhether elements are added or taken away may affect the practical applicationof the test.

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[2019] SGIPOS 6
This is because it will be harder to alter the distinctive character of a trade markby the addition of elements. The totality of the registered trade mark will havesatisfied the legal requirement of having a distinctive character. With each
additional embellishment, the totality of the trade mark having the distinctive
character is still present, whereas, if elements are removed, the distinctive
character in that totality may be more easily eroded.26
59 As such, it follows that the forms of the mark that have been actually used by the
Proprietor do not fall within the scope of Section 22(2) of the TMA and cannot be relied
upon as evidence of use of the Subject Mark during the First 5-Year Period or theSecond 5-Year Period. This means that the Applicant has succeeded in establishing
non-use of the Subject Mark during the relevant statutory periods and its application to
revoke the Subject Mark under Section 22(1) of the TMA should be granted.
Partial Revocation
60 From the evidence tendered by the parties, it appears that the Proprietor has usedvarious combinations of the Pâtissier-hat device and the Aalst house mark device on
products covering the following specifications (PWS [9] and [12]):“Chocolates; Chocolate based products; cocoa products; chocolate chips;
chocolate extracts; chocolate fudge; milk chocolate; cocoa; snack foods
consisting principally of chocolate; confectionery.”
61 To recapitulate, the Proprietor’s trade mark registration for the Subject Mark is
in respect of the following Specification of Goods:“Chocolates; chocolate-based products; cocoa products; chocolate chips;
chocolate bars; chocolate candy; chocolate creams; chocolate extracts;
chocolate-based beverages; chocolate beverages with milk; chocolate sauce;
chocolate fudge; liqueur chocolates; milk chocolate; chocolate coated nuts;
chocolate truffles and sweets; cocoa; coffee-based beverages; snack foods
consisting principally of chocolate; chocolate base aerated beverages; cocoabased beverages; chocolate wafers; confectionery; biscuits; cakes; coffee; tea;
tea-based beverages; caramels [candy]; candy for food; cookies; prepareddesserts [chocolate based]; flavorings, other than essential oils, for beverages;
ice cream; pastry; pies; sugar confectionery; puddings; fondants[confectionery]; mousse confections; bread and bakery products; buns; preparedsnack foods; tarts, all included in class 30.”
62 The original written submissions and oral submissions made by the parties did
not address the partial revocation issue in sufficient detail, making it necessary for theparties to submit supplementary submissions in the fortnight following the oral hearing.
The supplementary submissions set out the parties’ positions on the manner in which
the partial revocation process ought to be carried out, including whether the Registry
can insert qualifying language or reword the language used to describe the categories
of goods for which the trade mark is registered. The parties also used their
supplementary submissions to indicate their preferred outcomes, proposing alternative
26

Crocodile International Pte Ltd v Lacoste [2017] NZSC 14 at [41]-[42].

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[2019] SGIPOS 6
versions of the specifications for the goods found in the Proprietor’s trade markregistration might be narrowed down. Unsurprisingly, the Applicant’s Supplementary
Written Submissions (“ASWS”) proposed a much narrower amended Specification ofGoods than the version proposed in the Proprietor’s Supplementary Written
Submissions (“PSWS”).
Applicant’s proposed “Chocolate in the form of blocks, bars, chips and powder;amended Specification all being for use as ingredients in cooking or baking”
of Goods
ASWS [23]Proprietor’s proposed “Chocolates; chocolate-based products; cocoa products;
amended Specification chocolate chips; chocolate bars; chocolate extracts;of Goods
chocolate sauce; milk chocolate; cocoa.”
PSWS [3]63 Given my conclusion that the Proprietor’s Subject Mark should be revoked on
grounds of non-use, there is no need for me to decide on the issue of partial revocation
or evaluate these two amended versions of the Proprietor’s Specification of Goods.
However, since the parties have made supplementary submissions on the issue, I will
set out my general views on this issue in the event that my conclusions in relation to
the interpretation and application of Section 22(2) of the TMA are incorrect.
Narrowing the Scope of the Specification of Goods: Singapore and UK
Perspectives
64 Two decisions of the Singapore High Court were cited by the parties in their
supplementary written submissions to illustrate the application of Section 22(6) of the
TMA where partial revocation has been addressed: the Bluestar case and the Weir
Warman case.
65 In Bluestar, the court declined to restrict the trade mark proprietor’s
specifications (where registration had been obtained for “men’s undergarments, briefs,
socks, men’s sports clothing, knitwear, singlets, swimwear, all included in class 25”) toa narrower class of goods, even though the registered proprietor had only actually used
the trade mark on socks, briefs, singlets, t-shirts and swimwear. Woo J held, at [60],that “it was not in the interest of the public or trade to try and narrow the description of
the clothing in the… classification further to those specific categories for which the[registered trade mark] was in fact used. To do so would result in confusion and invite
litigation.”
66 In Weir Warman, partial revocation was granted to the extent that the registeredtrade mark had only been actually used for “pumps and pump parts”, while thespecifications in the trade mark registration covered “Pumps; milling equipment;
valves; parts and fittings for the aforesaid goods in Class 7”. VK Rajah JA ordered,at [113], the partial revocation of the defendant’s registration “with respect to milling
equipment and valves”, declining to insert additional words to confine the scope of the- 23 -

[2019] SGIPOS 6
specifications even further to “particular types of pump parts” on the basis that doing
so would “be unnecessarily confusing and restrictive as well as not in the interest of the
public or the trade.”
67 While the judges in both Bluestar and Weir Warman considered the UK
approach towards partial revocation – where “it is open to the court (or Registrar) torequire the specification of goods or services to be re-written in order to achieve therequired degree of revocation, such that the court may “dig deeper” into certain wider
specifications and insert words of limitation into the specifications” (Weir Warman at[112]) – neither decision explicitly affirmed that the UK approach is the correct
approach to be taken when applying Section 22(6) of the TMA. While both cases
recognised the line of UK cases which illustrate how partial revocation can be achievedby rewriting or qualifying the specifications found in an existing trade markregistration, it appears that neither court chose to fully embrace the possibility of atribunal having complete freedom to rewrite or insert words into the specifications ofgoods or services that trade mark proprietors have claimed under their trade markregistrations. It seems that both courts took a slightly conservative stance towards
partial revocation, limiting the scope of their intervention because they were mindfulof the possibility of confusion and the “interests of the public or the trade.”
68 In my view, the correct approach towards applying Section 22(6) of the TMA
when the partial revocation remedy is granted should lie somewhere between two
extremes. At one extreme, there is the so-called “blue-pencil” test, which only permits
specifications to be amended by making deletions from the list of words used todescribe the goods. No word insertions or replacements are permitted under this highly
conservative approach, which the UK courts have clearly moved away from. This is theapproach advocated by the Proprietor in this case (PSWS at [11]), where they haveremoved 86 words from the original 102-word list that comprises their Specification ofGoods.
69 At the other end of the spectrum, one might take the view that granting partial
revocation can entail rewriting the registered trade mark proprietor’s specification of
goods or services entirely. This would permit the inclusion of any additional words or
qualifiers, as well as the substitution of the original language found in the trade markregistration with more precise language that specifically describes the products on
which the registered trade mark has been actually used. Such an approach could
circumscribe the scope of trade mark monopoly considerably, though the proprietor
will continue to receive some “protection outside his specification of goods in areas
where he can demonstrate a likelihood of deception in the wide sense” (See Decon
Laboratories Ltd v Fred Baker Scientific Ltd, [2001] RPC 17 at [24] per Pumfrey J).
70 The UK approach towards partial revocation may be described as one that permits
the court or Registrar to engage in selective acts of editing the language used to describe
the trade mark proprietor’s specification of goods or services. The author of Tan TeeJim, Law of Trade Marks and Passing Off in Singapore (Sweet & Maxwell, 3rd Edition.
2014), at pages 522-523, has summarised the process undertaken by the UK courts as
one aimed at arriving at a “fair specification”, where the court seeks to strike “a fairbalance between the interests of the proprietor, other traders and the public having
regard to the protection afforded by a registered mark”, keeping in mind “how the- 24 -

[2019] SGIPOS 6
average consumer would fairly describe the goods or services in relation to which thetrade mark has been used” (cited in PSWS at [7]).
71 Having helpfully summarised a line of UK authorities that illustrate the“principles of relating to partial revocation by way of limitation, rewriting or qualifiers”(ASWS at [11]), the Applicant submitted that the Proprietor’s existing specifications
should be substantially modified and confined to the goods actually sold by the
Proprietor – “chocolate-based ingredients for the purposes of baking, sold primarily byweight or bulk...[to] customers…in the hospitality business” (ASWS at [12]). This led
the Applicant to propose replacing the Proprietor’s 102-word Specification of Goods
with the 20-word formulation set out above, which essentially confines the trade markregistration to chocolate products in particular forms (“blocks, bars, chips and powder”)
that are used specifically “in cooking or baking” (ASWS at [23]).
72 The Applicant also took issue with use of the word “Chocolates” in the
Proprietor’s Specification of Goods because it is the plural form of a countable noun
(i.e. pieces of chocolate packaged in a box for retail consumption) whereas theProprietor’s main product offering was “Chocolate”, which refers to the uncountablenoun that more accurately describes the baking ingredients sold by the Proprietor(ASWS at [13]-[16]). While I appreciate that there are genuine issues relating to thegrammatical precision of the Proprietor’s Specification of Goods, and that the very
purpose of the partial revocation remedy is to refine the scope of the specifications, I
am doubtful that it is appropriate to adopt an overly technical approach towards thelanguage found in the specification of a trade mark registration. Drawing a roughanalogy with how patent specifications are interpreted: just as how patent law does notexpect the hypothethical skilled reader to interpret the word “vertical” with the
linguistic precision of a mathematician, trade mark law should approach trade markspecifications through the eyes of the average trader and consumer rather than afastidious linguist. While amending the Proprietor’s Specification of Goods, from
“Chocolates” to “Chocolate”, may placate the anxieties of confectionery-conscious
grammarians, I am of the view that is unlikely to serve any wider public interest.
73 This brings me to what, in my view, are the key principles underlying theoperation of Section 22(6) of the TMA, a provision that should be applied after due
consideration has been given to the concerns of the applicant, the legitimate
expectations of the trade mark proprietor, as well as the interests of the public. The
public interest includes the interest of customers and trading community for whose
benefit the registered trade mark serves as a badge of origin.
Section 22(6) of the TMA: General Principles and Application
74 The rationales underpinning trade mark revocation on grounds of non-use,
articulated above at [21], apply equally to partial revocation situations. The only
difference is that the registered proprietor’s non-use of the trade mark only relates tosome (rather than all) of the specified goods or services. Thus, the partial revocation
procedure should be viewed as one which updates the trade marks register to moreaccurately reflect the actual use that had been made of the registered trade mark,refocusing the scope of the trade mark monopoly to cover only those areas of commercewhere the trade mark actually functions as a badge of origin, while freeing up thosecategories of goods or services in respect of which the trade mark has not been used –- 25 -

[2019] SGIPOS 6
making room in the trade marks register for other traders to potentially occupy withrival trade marks.
75 As a starting point, it should be recognised that the partial revocation of a trade
mark registration substantially only alters the formal boundaries of the trade markmonopoly. How far partial revocation changes the substantive scope of protection
enjoyed by the registered proprietor depends on the breadth of the remaining categories
of goods or services, the strength of the trade mark and all the surrounding
circumstances that influence the assessment of likelihood of confusion. As such, theamendments to specifications directed by the court or Registrar may or may not makeit easier for other traders to use identical or similar marks on those goods or services
which have been freed up from the original trade mark registration. Having said that,
because the partial revocation process involves a direct interference with the preexisting property rights of the registered trade mark proprietor, it is important that theexercise is not carried out in an arbitrary manner and should be sensitive to thelegitimate expectations of users of the trade mark registration system.
76 In my view, the ideal outcome of any partial revocation process should be toarrive at a “fair specification” that reflects the private and public interests outlined
above. Achieving such an outcome means that Section 22(6) of the TMA should not
be interpreted in such a restrictive way that only permits the court or Registrar of Trade
Marks to amend the Specification of Goods via “blue-pencil” deletions. The “bluepencil” test has its origins in contract law and was developed in the context of judicial
attempts to salvage overly broad restraint of trade clauses without rewriting the termsof the contract. The underlying concerns in that context – respecting party autonomy
and freedom of contract – do not resonate within trade mark law framework. It must
follow that the court or Registrar should be capable of doing more than just remove
words or phrases from the Specification of Goods when granting partial revocation. The
possible adjustments that may be made to the trade marks register under Section 22(6)of the TMA could also include, potentially, the insertion of additional words or
qualifiers, as well as rewriting parts of the specifications where necessary to achieve a“fair specification”.
77 However, just because the tribunal can make these sorts of adjustments to theregistered trade mark proprietors’ specifications does not mean that it should always
exercise all of these powers in every case. When an application for trade markregistration is made, the applicant specifies products and services to be included in thespecifications for his trade mark. This selection is done either generally, or from anapproved list maintained by the Registrar of Trade Marks27. Either way, the selection
is based on the Nice Classification system. From this selection he makes, the user of
the trade mark system is then able to anticipate the scope of the trade mark monopoly
he will obtain, if his registration is successful, and where the boundaries of his
intellectual property rights will lie. If, in subsequent partial revocation proceedings, a
tribunal had a completely free hand to amend the wording of these specifications in anunrestrained manner, the operational integrity of the trade mark registration system
would almost certainly be jeopardised. The goal of the partial revocation exercise is not
to define, with surgical precision, the exact range of goods or services in respect ofwhich registered proprietor has actually used his mark. Rather, it is to achieve a “fairRule 19(2A) of the Trade Marks Rules (Cap 332, 2008 Rev Ed) allows an applicant to adopt “aspecification set out in an approved list of goods or services”.
27- 26 -

[2019] SGIPOS 6
specification” which still gives the registered proprietor a commercially sensible zone
of exclusivity associated with the inherent semantic nebulousness of the words used by
the trade mark framework to classify the goods and services in respect of which themark may be registered.
78 If an applicant seeking partial revocation wishes to insert additional words or
qualifiers to the specifications, or if he has an alternative formulation to propose, thenI think it is incumbent upon him to justify the necessity of making these sorts ofchanges. In other words, making amendments to the specifications beyond deleting
categories of goods and services requires evidence of how the interests of the applicant
might be prejudiced if these further refinements were not made. Alternatively, thenecessity of inserting words into, or rewriting over, the specifications could beestablished with reference to “the interest of the public or the trade” (Weir Warman at[113]), bearing in mind the danger that making unnecessarily fine distinctions in thespecifications may “result in confusion and invite litigation” (Bluestar at [60]).
Adopting such a calibrated approach, in my view, probably conforms with the cautious
note struck by Woo J and VK Rajah JA in the Bluestar and Weir Warman decisions.
79 Applying the general principles I have set out above to the alternative application
for partial revocation under Section 22(6) of the TMA in the current proceedings, if mymain decision on Section 22(2) is incorrect, I would have been more inclined towards
the Proprietor’s version of the amended Specification of Goods. The much narrower
version proposed by the Applicant confines the goods to particular physical forms of
chocolate products (“blocks, bars, chips and powder”), while also limiting the purposeof the chocolate products (“for use as ingredients in cooking or baking”). While theApplicant did submit “that the specification should be reworded and qualified so as tomake it clear that the actual goods are reflected, since the trade and the public would
see them from a different perspective” (ASWS at [24]), I am not persuaded such an
extensive reformulation of the Specification of Goods is necessary to achieve a “fairspecification”. Much stronger reasons need to be given before the specifications in a
trade mark registration are reconstructed in the manner proposed by the Applicant. I
am unconvinced that members of the trade and the public might better off if theSpecification of Goods were redrafted in the manner proposed by the Applicant, as
opposed to simply removing those categories of goods (such as “chocolate wafers;
confectionery; biscuits; cakes; coffee; tea; tea-based beverages; caramels [candy];
candy for food; cookies; prepared desserts [chocolate based]; flavorings, other thanessential oils, for beverages; ice cream; pastry; pies; sugar confectionery; puddings;
fondants [confectionery]; mousse confections; bread and bakery products; buns;
prepared snack foods; tarts”) in respect of which the Proprietor has not actually used its
registered trade mark.
80
Working from the premise that the objective of the partial revocation exercise
under Section 22(6) of the TMA is to produce a “fair specification”, I am of the viewthat the tribunal should replace the original specifications of the registered trade markwith an alternative description of the goods or services only after carefully weighing
the following factors. Firstly, the extent to which the registered trade mark proprietor’s
pre-existing and future commercial interests are prejudiced by these changes to theboundaries of his intellectual property rights. Secondly, the corresponding strategic
benefits potentially reaped by the applicant, who has sought partial revocation of theregistered trade mark, from narrowing the scope of the goods or services in respect of- 27 -

[2019] SGIPOS 6
which the trade mark was originally registered. Thirdly, the ramifications of theadjustments to the specifications of the registered trade mark on the trade or industry
sectors in which the parties are market players. Fourthly, the impact of making thecontemplated changes to the trade mark specifications on the average consumer and the
public at large.
81 A more interventionistic approach could result in the registered trade markproprietor’s specifications being rewritten and replaced with a description that
corresponds exactly to the specific goods and services in respect of which the registeredtrade mark has been put to actual use. Such an approach would be undergirded by apolicy preference in favour of limiting the scope of the registered proprietor’s trade
mark monopoly to the precise extent to which he has actually made use of his trade
mark. On the other hand, a more business-friendly approach that recognises thelegitimacy of allowing the registered trade mark proprietor to retain a “buffer zone” ofgoods and services, which represent future business diversification opportunities, could
translate into a much lighter touch towards amending the description of goods andservices found in the registered trade mark’s specifications. Neither the Registrar of
Trade Marks nor the Singapore courts have yet to articulate a clear policy preference
either way. Regardless of which direction this area of Singapore’s trade mark law
eventually takes, what is more important is that the principles of partial revocation aredeveloped coherently in tandem with the Registry of Trade Marks’ procedural
framework for securing trade mark registrations. More specifically, the manner andextent to which trade mark specifications can be changed during partial revocation
proceedings must be consistent with the legitimate expectations of users of the trade
mark system when their trade mark registrations were secured in the first place. It is
important that registered trade mark proprietors understand, from the outset, the full
extent to which the legal boundaries of their intellectual property rights may besubsequently narrowed during partial revocation proceedings on grounds of non-use
when the language found in their trade mark specifications is amended, adjusted, alteredor augmented by a competent tribunal.
Conclusion
82 Having considered all the pleadings and evidence filed and the submissions madein writing and orally, I find that the revocation succeeds under both Sections 22(1)(a)and 22(1)(b). The Subject Mark is revoked as from 25 July 2013 (being the first day
immediately following the end of the First 5-Year Period). The Applicant is also
entitled to costs to be taxed, if not agreed.
83 Registered trade marks that have not been put to genuine use are like unsold or
unconsumed chocolates long past the end of their shelf life. There are good reasons forgetting rid of them. Such trade marks are vulnerable to revocation on grounds of nonuse because their continued presence on the trade marks register is no longer justifiable.
While these consequences may seem harsh for the registered proprietor, whose
intellectual property rights are extinguished by the revocation, they arise because thetrade mark system must also cater to the wider public interest, which includes theinterest of consumers and other members of the trading community.
84 When trade marks are revoked on grounds of non-use, registered proprietors who
have not made any genuine use of their trade mark on their goods or services face the- 28 -

[2019] SGIPOS 6
same consequences as registered proprietors who have only made use of variants of theregistered forms of their trade marks (where the forms in which their marks have beenused alter the distinctive character of the registered forms of these marks). Registeredproprietors in the latter category have not, in the eyes of trade mark law, made use ofthat trade mark represented in the trade marks register. The continued subsistence ofthe trade mark monopoly for that registered trade mark is no longer justifiable. Keepingthat trade mark registration alive distorts the operation of the trade marks system. Other
traders who consult the register when developing their own trade marks, while seeking
to avoid infringing upon the pre-existing rights of other trade mark owners, havelegitimate expectations regarding the accuracy of its entries. Discrepancies between theform in which an earlier trade mark has been registered and the form in which it has
been put into use its owner would impair any efforts made by other traders todifferentiate their own trade marks from what is found on the trade marks register. Thus,
an application for revocation of that registered trade mark ought to be granted.

Date of Issue: 8 April 2019- 29 -