It is more common to find Singaporean businesses complaining about trademark piracy in Indonesia. But Bali's hippest beach club, bar and restaurant Ku De Ta (left) was annoyed to find a replica Ku De Ta open atop the prestigious Marina Bay Sands Integrated Resort in Singapore(below).
So the Indonesian Ku De Ta owners brought cases in Singapore based on their well known mark, against the Singapore registered trademark owner, Nine Squares (an Australian Company) who licensed use the mark to one Chris Au who in turn assigned this right to use to the Defendant operator, Ku De Ta SG Pte Ltd.
The cases are for invalidation of the mark, as well as an injunction to restrain use. It involves both the restaurant / club in the Marina Bay Sands resort and it's website http://www.kudeta.com.sg/. The case is being contested, because the operators and the registrant differ. At least one of the parties is suspected to have a connection to the Bali business. Since separate invalidation proceedings from the infringement case have been brought, the defendant in the litigation sought to have the injunction case struck out with a preliminary application, although unsuccessfully. Presumably too much has been invested with such a high profile operation in Singapore's premier resort for the defendant to walk away.
The Bali business which is widely known throughout the Asian beach and club scene, appears to have a strong case given the common law protections for reputation in Singapore. But the defendants may have too much at stake to give up quickly. As one Bali hotelier put it to IP Komodo, if only they had registered their marks properly in the first place around the region in which they are so well known, the trouble, legal costs and wasted energy of litigation against a trademark copycat might have been avoided.
Indeed your conclusion would/could have been the solution (but it was not adopted) so I think it's just sour grapes of wrath. I hope KudeTa in Bali wins because it would make good headlines not good law. Logic dictates the reputation in SG is insufficient and I can't see the damage to Bali outfit since they didn't bother to protect their brand nor intend ever to open up in SG
ReplyDeleteIt is said that the Ku De Ta bar is known all around Asia. If their owners can indeed prove the well-known status of their mark, I then think that if they win the case, it would be a correct application of the law.
ReplyDeleteRegarding damages, the Bali business could claim the risk of confusion. Consumers in Singapore could wrongly believe that the Ku De Ta bar in Singapore is somehow related to the one in Bali. Most of the IP owners do not realize the importance of registering their trademarks/IP or do not bother to do so until an infringement occurs.