Groundless Threats: Singapore's High Court Sets Out The Ground Rules

• Published date: 15 November 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Davies Collison Cave
• Author: Ms Esther Seow and Benita Lau

Triple D Trading Pte Ltd v Fanco Fan Marketing Pte Ltd [2022] SGHC 226 concerned trade mark infringement proceedings between two fan retailers. Fanco succeeded in its counter-claim that Triple D's mark was registered in bad faith. A second counter-claim of groundless threat of trade mark infringement failed. This article summarises Singapore's position on groundless threats and the High Court's comments on a possible area for development.

What is the relevant test?

1. party making a groundless threat claim ("plaintiff") must prove that:
2. the other party ("defendant") made a threat to sue for trade mark infringement;
3. the threat related to acts other than:
4. 1. the application of the mark to goods or to material used or intended to be used for labelling or packaging goods
   2. the importation of goods to which, or to the packaging of which, the mark has been applied; or
   3. the supply of services under the mark; and

3. the plaintiff is an aggrieved person.

A plaintiff who establishes these elements is entitled to relief unless the defendant proves that the acts complained of did in fact constitute infringement.

Is there a threat?

The Court will employ the perspective of a "reasonable person" to determine if a threat was made. It is possible for a threat to be made out even if the defendant did not use specific legal language (e.g. expressing an intention to issue a writ).

In this case, the following statements in the defendant's letters amounted to threats to sue:

"... actions amount to infringement... notice to cease and desist from using the brand name..."

"... reserves its rights to take action... for infringement of trademark and seek all applicable reliefs and orders"

What acts did the threats relate to?

The groundless threat framework does not protect those at the "source" of infringement, namely traders manufacturing or importing goods or supplying services under the mark. These acts are expressly excluded from the provisions on groundless threats.

In this case, Triple D alleged that Fanco had "marketed" and "advertised" its goods under the mark. The Judge held that such threats went beyond the excluded acts. Nothing in the relevant provisions indicated that "further acts such as sale or advertising" would be...