Courts (Singapore) v. Big Box Corporation
12 May 2017
In early 2015, the Proprietor sent furniture giant, Courts, a warning letter, stating that Courts was infringing their registered mark by advertising their Tampines store as “COURTS BIG BOX MEGASTORE”. Courts subsequently applied in March 2015 for a removal of the “BIG BOX” trade mark, claiming that it was generic and describes the retail warehouse concept, instead of the unique services provided by the Proprietor. IP adjudicator, Mr David Llewelyn, found that from the perspective of an average consumer in Singapore, "BIG BOX" would not have been viewed as descriptive, generic or devoid of distinctive character as an indication of the trade origin of the retail services for which it was registered. Hence, the application by Courts for the “BIG BOX” trade mark to be removed was refused. The case was decided upon at the Intellectual Property Office of Singapore.
This case highlighted the significance of an average consumer’s perception of certain terms that are used in arriving at a legal decision. In this particular case, while the term “big box” has become descriptive of a large retail or warehouse establishment in areas such as America, the term has not taken on such a meaning in Singapore. Hence, Courts was unsuccessful in its efforts to remove the “BIG BOX” trade mark.
