Singapore Trade Marks – Safeguarding Confidential Information – TWG Tea Company Pte. Ltd. v T2 Singapore Pte. Ltd. & Tea Too Pty Ltd [2019] SGIPOS 9

Intellectual Property News

In a decision rendered by the Intellectual Property Office of Singapore (IPOS), it was held that some extent of protection may be ordered for confidential information disclosed during a trade mark proceeding even if such disclosure is in normal practice voluntarily and in support of the disclosing party’s argument.

(A) Who are the parties involved in this case?

(a) TWG Tea Company Pte. Ltd. (“Applicant”)

The Applicant currently operates 12 tea salons and tea boutiques in Singapore. It seeks to register the “SINGAPORE BREAKFAST”; “NEW YORK BREAKFAST”; “LONDON BREAKFAST”; and “CARAVAN” as its trade marks.

(b) T2 Singapore Pte. Ltd. & Tea Too Pty Ltd (“Respondents”)

The Respondents operate 4 T2 stores in Singapore offering large variety of tea blends to customers and it sells tea and tea-related products under the names “SINGAPORE BREAKFAST”; “NEW YORK BREAKFAST”; “LONDON BREAKFAST”; and “RUSSIAN CARAVAN”.

(B) What actually happened?

The present case arose from a trade mark opposition proceeding between the parties wherein:

the Applicant has sought to register the “SINGAPORE BREAKFAST”; “NEW YORK BREAKFAST”; “LONDON BREAKFAST”; and “CARAVAN” trade marks in Singapore (“Subject Marks”); and
the Respondents has opposed to the registration of the Subject Marks on various grounds, including that the marks are devoid of any distinctive character under Section 7(1)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) and/or that the marks are descriptive of the goods in question under Section 7(1)(c) of the Act.

In such trade mark opposition proceeding, the Applicant has argued that in any event that the Subject Marks have in fact acquired a distinctive character as a result of the use made of it, it should follow that these marks should not be refused by virtue of Section 7(1)(b) or (c) of the Act and in supporting its argument, the Applicant sought to adduce various sales and market figures as evidence but asserts that such evidence constitutes confidential information and therefore it has further sought an application for confidentiality safeguards prior to disclosing such information to the Respondents.

Hence in the present case, it has come before IPOS to adjudicate for the first time (within Singapore jurisdiction and with limited guidance from other common law jurisdictions) on whether confidentiality of sales and marketing figures adduced during a trade mark opposition proceeds ought to be safeguarded and if so, under what circumstances and what would be the appropriate confidentiality safeguards.

(C) What is/are the issue(s) in dispute?

(a) Whether confidentiality safeguards should be ordered in a trade mark opposition proceeding; and

(b) If so, what should these safeguards be?

(D) Holding

(a) The Registrar listed out several considerations which ought to be taken when deciding whether safeguards should be imposed and found that the Applicant’s disclosure should be protected by appropriate confidentiality safeguards in the present case.

(b) As to what these safeguards should be, the Registrar only considered within the factual matrix of this case and found that the Respondents ought to be limited insofar as it balances the competing interests of the Applicant and at the same time it should not be so far out such that it would be too onerous for the Respondents.

The Registrar noted that in future it would be more expedient and cost-effective if parties agree on appropriate safeguards within themselves instead of requiring an interlocutory hearing to the determine the issue.

(E) Rationale for holding

The Registrar noted that whilst questions of confidentiality are common in IP proceedings, these issues arise mostly in claims for patent infringement and in claims for breach of confidence. He also noted that it is usually the party who is resisting discovery which seeks the protection of confidentiality. However, unlike the above, the present case relates instead to trade mark proceeding and whilst confidential sales and marketing information are usually disclosed voluntarily in trade mark proceedings, the Applicant in the case (who is to rely on such disclosure to support its argument) is the party who wishes to be protected instead. The Registrar emphasized that whilst the common practice in trade mark cases would be for sales and marketing information to be disclosed, he nevertheless accepts the Applicant’s point that the issue at hand is a novel one.

As it does not appear to be any decision which sets out a principled basis as to when confidentiality safeguards would be ordered, the Registrar started from the fundamental question of whether there is a difference in (i) a case where a party is seeking confidentiality protection over information which it voluntarily puts forward in support of its case; and (ii) a situation where it is compelled to provide the information. He found the answer must be a “yes” as a person should generally not be permitted to have his cake and eat it. Going by this reasoning, the Registrar opined that since the Applicant is relying on these figures to argue that it should be entitled to the monopoly right of the Subject Marks, it would only be reasonable that these figures should be made available to other traders whom such monopoly may be asserted. The Registrar further pointed out that it would be unfair to subject the Respondents to confidentiality obligations when such disclosure was never asked by them in the first place. As such, the Registrar found that his starting point would therefore be that confidentiality undertakings should not be imposed in such cases (as the present one).

In the Registrar’s opinion, this does not mean that safeguards should never be imposed, but he opines that the case for imposing such safeguards ought to be compelling and consideration should be taken on the following:

• the importance of the information to the issues in dispute
• the degree to which the information is confidential
• how current the information is
• whether the parties are competitors
• the extent of prejudice to a party should the confidential information be disclosed to its competitor
• the stage of proceedings

With such considerations in mind, the Registrar applied to the present case and found that:

• the parties are direct competitors both in Singapore and abroad.
• the Applicant’s marketing figures are in respect of the Applicant’s products in general and are not specific to products bearing the Subject Marks.
• the Applicant’s sales figures are specific for sales of goods bearing the Subject Marks and indicative of the sales of the Applicant’s products in general
• the sales figures are fairly current (until 2017) whilst the marketing figures are no longer current (date back to 2015)
• the commercial value of the Applicant’s sales figure to the Respondents is clear as the ascertainment of highest sale on products bearing a particular mark from the Applicant’s sales figure would allow the Respondents to focus its resources in promoting products under the same mark
• the damage caused to the Respondents by the Applicant’s disclosure is less apparent as compared to the Applicant itself

Hence in view of balancing the competing interests of the Applicant and the Respondents, the Registrar found that the Applicant’s disclosure should be protected by appropriate confidentiality safeguards at this point of time.

As for the second question as to what these safeguards should be, the Registrar found that the Respondents should be limited to the following:

the Respondents should not use the confidential information for any purposes other than the conduct of the IPOS proceedings in respect of the Subject Marks
the Respondents should disclose the Applicant’s sales figures only to the Respondents’ Singapore solicitors and support staff; specified employees of the Respondents; and IPOS.

Nonetheless, the Registrar found that the Applicant’s request for an indemnity from the Respondents and consent by the Respondents to injunctive relief in the event of any threatened or actual disclosure of the confidential information would go too far as the Registrar emphasized again that the Respondents never requested for such information in the first place and should not then have such onerous obligations imposed on them.