Would past dealings tantamount to bad faith and consequently lead to the invalidation of a trademark? Just as it is difficult to ascertain what is fair and what is not owing to the subjectivity of one’s view, the accusation of bad faith is a very difficult claim to prove albeit we often think it is a clear cut case.
Arjo Wiggins Fine Papers Limited (the “Applicant”) is a leading manufacturer of creative and technical paper for use in a variety of industries and for different purposes, brought an action to invalidate a trademark registered by their former sole distributor, Transasia Fine Papers Pvt Ltd (the “Registered Proprietor”).
The Applicant supplied the Registered Proprietor with the “Curious Collection” papers for sale in India since 2002. Sometime in 2003, the Registered Proprietor came up with the idea of creating a bespoke marketing campaign targeting the creative designing industry. In 2004, the Registered Proprietor engaged a design communications company called Monkey Wrench Communications Private Limited (“Monkey Wrench”) and gave them the following instructions:
- To invent a word that revolves around creativity and curiosity
- Wherein the invented word must trigger a question such as a “why” or “how” and that
- Further the word must be Indian but with a global connection.
Based on these instructions, Monkey Wrench came up with the word “KYOORIUS”, which is a combination of “KYOON” (meaning “why” in Hindi) and the English word “curious”.
In November 2005, there was an email exchange between the parties but unfortunately there was some misinterpretation of the said email wherein on one hand, the Applicant thought that the email contained various assurances that
- The Registered Proprietor would only use “KYOORIUS” as a brand name for a design service centre (called “Kyoorius Exchange”);
- That “KYOORIUS” would not be used as a brand for creative paper products;
- That the Registered Proprietor’s intent to only stock paper that complemented the Applicant’s collection; and
- The Registered Proprietor would remain loyal to the Applicant.
On the other hand, the Registered Proprietor’s view was that they were merely addressing the Applicant’s concern about competition from other paper suppliers as a result of the establishment of Kyoorius Exchange and not the similarity between the mark “KYOORIUS” and the Applicant’s “Curious Collection” mark.
Despite the issues raised in the said email, the parties resumed business relations thereafter. Further, the “Curious Collection” and other “Curious”-prefixed signs indicating the various types of paper products in this range regularly appeared alongside the sign “KYOORIUS EXCHANGE: Where Creatives Meet” on a number of sample paper swatches compiled by the Registered Proprietor.
The parties’ contractual relationship as supplier and distributor ended on 28 October 2010. Their business relationship had lasted for slightly over 10 years. About five months later, the Registered Proprietor applied to register the mark “KYOORIUS” on 7 March 2011 in Class 16 (paper products) and Class 41 (arranging and conducting conferences). These applications were both granted but the Applicant sought to invalidate Class 16 only.
One of the issues which the Hearing Officer had to address is the question whether similarity of the marks infer bad faith. Based
on precedents, there is no consistent statement of principle that there must be a striking degree of similarity before bad faith can be found. In some cases, the similarity was not found to be the determinative factor whilst in others, it gave the court an indication that the application mark was copied from another source.
What appeared to determine the court’s view either in favour of or against the finding of bad faith were the specific factual circumstances in each case. In the present case, the Hearing Officer found that the Registered Proprietor had reason to believe that “KYOORIUS” was their own mark, having commissioned Monkey Wrench to come up with it and having used it for years. In addition to that, the Hearing Officer held that the story behind the derivation of the mark Registered Proprietor was satisfactory especially since there is no such unique, meaningless word in the Applicant’s “Curious Collection” that was reproduced in the Registered Proprietor’s mark “KYOORIUS”. Apart from that, the evidence also shows that the Applicant’s “Curious”-prefixed signs co-existed alongside the “KYOORIUS”- prefixed signs.
Further, the Hearing Officer was of the view that the effect of the Registered Proprietor’s knowledge of “Curious Collection” sales is somewhat neutralized by the fact that there were sales of other types of paper as well and there would be no reason for them to specifically choose “Curious Collection” over other brands. Also, the Registered Proprietor’s get-up and the website description of their paper products do not attempt to imitate the Applicant’s “Curious Collection” but rather seeks to rely on their own name as a brand for paper products.
In light of the above, the Hearing Officer held that the Registered Proprietor’s subjective knowledge, as well as the relevant facts and circumstances in the present case, the Registered Proprietor’s action of going into the supply of paper products using the “KYOORIUS” sign and then registering it as a trademark in Singapore does not fall short of the objective standard of acceptable standards of commercial behaviour. Therefore, the Applicant has not met the high standard of proof that is required to establish bad faith and the application for a declaration of invalidity fails.
As a trademark consultant, I was rather surprised to know that the entire case was solely based on one ground – bad faith – which in my opinion is a poor choice. It is my view that perhaps the Applicant may stand a chance if other grounds of invalidation were put forth as the accusation of bad faith has a very high threshold to meet. So remember, do not put all the eggs in one basket.