No sweet ending for local chocolate maker Aalst Chocolate


The Intellectual Property Office of Singapore (IPOS) recently saw a sticky situation of two trademark disputes involving the same parties: artisanal bakery The Patissier LLP (“The Patissier”) and chocolate maker Aalst Chocolate Pte Ltd (“Aalst Chocolate”). The Patissier was successful in both disputes, where its mark was upheld as valid whereas the opponent Aalst Chocolate’s mark was revoked.

The Patissier is a local boutique bakery specialising in French-style baked goods, with two outlets here. Aalst Chocolate is a Singapore-based company that manufactures and sells chocolates and chocolate-based products. The marks involved in the two disputes are as follows:

No.

Applicant for Invalidation / Revocation
(“attacking”)

Registered Proprietor
(“defending”)

Subject Mark

1

The Patissier LLP

Aalst Chocolate Pte Ltd

2

Aalst Chocolate Pte Ltd

The Patissier LLP

 

In the first dispute, The Patissier sought for Aalst Chocolate’s mark to be revoked on the basis of non-use. What was interesting for this particular case was that the IP Adjudicator had to decide whether actual use by Aalst Chocolate satisfies the use requirement according to Singapore’s Trade Marks Act. Although Aalst Chocolate showed evidence of its use of the mark, it was not used in the exact form that the mark was registered. The IP Adjudicator, Dr Burton Ong, assessed that the mark is distinctive due to a combination of the two components, namely the Pâtissier-hat device, , and the Aalst Chocolate word element, . He further added that using the Pâtissier-hat device on its own would be seen as different from the mark in the eye of the average consumer, hence altering the mark’s distinctive character. As a result, the Aalst Chocolate’s mark registration was revoked.


In the second dispute
, Aalst Chocolate applied to invalidate The Patissier’s mark on the grounds of descriptiveness and non-distinctiveness. The challenged mark contains a French word element, namely “patissier”, which translates to “pastry cook” or “confectioner”. Currently, there is no law or established practice in Singapore, in the context of trademark examination, opposition and post-registration challenge, that marks in a non-English language are automatically, necessarily translated into English for their meaning. IPOS’ Principal Assistant Registrar, Ms See Tho Sok Yee, therefore judged that at the point in time when the mark was registered in 2005, the average consumer in Singapore would not understand the mark to have a meaning. Hence, they were unlikely to understand the French word element to be a descriptor of a characteristic of the goods and services claimed, and therefore, Aalst Chocolate’s grounds for invalidation alleging descriptiveness and non-distinctiveness failed.

Click to read more about The Patissier v Aalst Chocolate and Aalst Chocolate v The Patissier.