Chua Beng Hock v FM Skincare Pte Ltd [2025] SGIPOS 2

Background

This case involved an opposition and an application for invalidity brought by an individual, Mr. Chua Beng Hock (the Initiator). The challenge was against trade mark applications and a registered trade mark held by FM Skincare Pte Ltd (the Respondent). The dispute centered around the use and ownership claims related to the “Face of Man” skincare business and associated marks.

A key aspect of the Initiator’s challenge relied on claims of goodwill associated with the “Face of Man” business, copyright ownership, and that the Respondent’s mark conflicted with an earlier well-known trade mark allegedly owned by the Initiator. The Respondent, on the other hand, presented evidence related to the evolution of the business and its authorization to use the marks.

Key Issues

The case required the tribunal to assess several grounds for opposition and invalidity under Singapore’s Trade Marks Act. The main issues included:

1. Whether the Initiator owned the necessary goodwill in the “Face of Man” business and marks to succeed in claims related to passing off or well-known trade marks.
2. Whether the Respondent’s trade mark application was made in bad faith.
3. Whether the Respondent’s mark infringed the Initiator’s copyright.

The Decision

The Principal Assistant Registrar dismissed the opposition and the invalidation application. The Respondent’s trade mark application for the Composite Mark was allowed to proceed to registration.

Reasoning of Tribunal

The tribunal’s decision was based on a careful weighing of the evidence presented through statutory declarations.

• Goodwill Ownership: The tribunal found that while goodwill undoubtedly existed in the “Face of Man” skincare business, the Initiator, Mr. Chua Beng Hock, failed to prove he was the sole owner of that goodwill at the relevant time. Evidence showed public perception associating the business with both “Adam and Chris Chua”. Critically, the Initiator had previously sold his ownership interest in related companies, and his later role as an employee or consultant did not automatically grant him ownership of the company’s goodwill. Relying on established principles (including English law cases like Gromax), the tribunal noted that a co-owner generally cannot bring a passing off action against another co-owner. Since the entity that the tribunal found likely owned the goodwill (FOMPL) was not a party to the proceedings, its goodwill could not be invoked.
• Misrepresentation (Passing Off): Because the Respondent (or its predecessors) had been using and authorising the use of marks essentially the same as the ones challenged, the tribunal found there was no misrepresentation. The use of the marks indicated a connection to the business authorized by the Respondent, which was not found to be an inaccurate connection.
• Well-Known Trade Marks: Similar to the goodwill argument, the Initiator failed to demonstrate he was the owner of the alleged well-known unregistered “faceofman” mark. The protection under this ground is for the proprietor’s interests.
• Bad Faith: The tribunal found that the Respondent’s actions did not amount to bad faith. It concluded that the Respondent had a “legitimate business interest” in the marks as a franchisor and business operator. The tribunal reasoned that trying to bring the Initiator’s business in line, or even excluding it, would not be considered commercially unacceptable behaviour by reasonable persons in the trade, but rather the opposite. Bad faith requires demonstrating dishonesty or conduct that is commercially unacceptable.
• Copyright: The Initiator failed to prove that he owned the copyright in the artistic work used in the Composite Mark.

Significance for Your Business

This case provides several critical lessons for businesses regarding trade marks and legal disputes:

• Proving Ownership is Paramount: Whether claiming common law rights (like goodwill for passing off) or challenging a mark based on earlier rights, you must clearly demonstrate and prove your ownership of those rights. Failure to do so, even if goodwill exists or a mark is well-known, can be fatal to your case.
• Goodwill Follows the Business: Goodwill is tied to the business operation. If your business structure changes (e.g., sales of ownership, franchising, partnerships), ensure your intellectual property rights, including associated goodwill, are clearly assigned or licensed. Employees typically do not own the goodwill of the company they work for.
• Clarity in Corporate & Business Relationships: Disputes often arise from unclear historical relationships or transitions (partnerships, sales, franchising). Documenting who owns what IP, when, and how, especially in complex or evolving business structures, is essential to prevent future challenges or defend against them.
• Joining the Right Parties: If your claim relies on the goodwill of a specific entity (like a company), that entity should ideally be a party to the legal action.
• Importance of Evidence: Legal cases rely heavily on evidence, like statutory declarations. Maintaining clear records related to the history of your brand, business operations, ownership changes, and relationships is crucial for supporting your claims or defenses in potential IP disputes.

In summary, the Chua Beng Hock decision underscores the vital importance of clear ownership, careful documentation of business relationships and IP rights, and the need to present strong evidence when asserting or defending trade mark rights. Businesses should proactively clarify their IP ownership structure to avoid falling into similar pitfalls.