1 By this originating motion, the applicants, Davidoff Extension SA, seek an order that the Register of Trade Marks be rectified by expunging thereform the whole entry relating to the trade mark no 77412 `Davidoff` registered in the name of the respondents, Davidoff Commercio E Industria Ltda.

2 At the end of the hearing, I made an order in terms of the motion and ordered the respondents to pay costs. I now give my reasons.

3 The grounds of the application are that:

4 The contentions of the applicants are that the respondents are not the proper proprietors of the trade mark `Davidoff` and their use of the trade mark is not bona fide and that there would be not only likelihood of deception but in fact there is actual deception.

5 The following facts are not in dispute.

6 The trade mark `Davidoff` is derived from the name of Mr Zino Davidoff who owned a tobacco shop in Geneva which he inherited from his father who established it in 1912.

7 In May 1940 Mr Zino Davidoff established a company, Davidoff et Cie, and this tobacco shop existed under that name under Zino Davidoff`s management, stocking a line of full size cigars called `Davidoff` made from Cuban tobacco.

8 In 1969 Mr Zino Davidoff sold a majority interest in Davidoff et Cie to Oettinger Imex AG of Basle, one of the leading tobacco wholesale and retail traders in Switzerland.

9 In 1973 the applicants, Davidoff Extensio SA, were established. In 1980 Zino Davidoff SA were established.

10 Davidoff et Ciet, Davidoff Extensio SA and Zino Davidoff SA (the Davidoff Group) had common shareholders. Oettinger Imex AG are the majority shareholders in the Davidoff Group and have a distribution agreement with the Davidoff Group to market Davidoff cigars and smoking accessories world-wide.

11 Davidoff cigars, a high class quality cigars, and smoking accessories, are produced by the Davidoff Group and these cigars are manufactured in Cuba out of Havana tobacco under the directions of Mr Zino Davidoff by the state-owned enterprise Cubatobacco since 1969 and known internationally as Davidoff No 1, 2 and 3. The Davidoff Group has a close collaboration with Cubatobacco.

12 Mr Zino Davidoff is still involved in the Davidoff Group. He is a minority shareholder in all the three companies and sits on the board of the three companies. He is involved in the sale of Davidoff cigars and smoking accessories and helped in the promotion of Davidoff cigars internationally.

13 The Davidoff chain of exclusive shops was opened all over the world, including Singapore, stocking and selling and dealing in top quality cigars, including the Davidoff cigars and smoking accessories.

14 The first registration of the trade mark `Davidoff` by the Davidoff Group was made in Switzerland in December 1969.

15 The Davidoff Group and Cubatobacco have registered the trade mark `Davidoff` in many countries all over the world and there are many pending applications all over the world.

16 The respondents applied for the registration of the trade mark `Davidoff` in Singapore on 12 September 1978, and the application was approved and registered on 10 October 1980 - registration no 77412.

17 The respondent company was incorporated in Brazil in 1978. After its incorporation the respondents registered the trade mark `Davidoff` under their name in various parts of the world.

18 In April 1979 the Davidoff Group applied for the registration of the trade mark `Davidoff` in Singapore under the name of their agent Bluebell (HK) Ltd The application was held in abeyance in view of the earlier application of the respondents.

19 The point taken by the respondents is that the applicants are not the proprietors of the mark. It is submitted that under s 11(1) of the Trade Marks Act (Cap 206), two conditions must be satisfied:

20 It is submitted that the applicants were not the persons intended to be the user of the mark in Singapore. According to the agent Bluebell (HK) Pte Ltd, the Singapore agent purchased Davidoff cigars from and made payments to Oettinger lmex AG. So the principals are Oettinger Imex AG and not the applicants. The publicity concerning Davidoff cigars was to be paid for by Bluebell. In fact, all the advertisements and magazine articles did not make any reference to the applicants. It was Bluebell itself which applied for the trade mark `Davidoff` to be registered in Singapore in April 1979. It is submitted that the applicants are not the proprietors of the mark.

21 It is submitted that when the applicants made their application in April 1979, the mark had not been used or was in use in Singapore at the time of the application to the Registrar.

22 The respondents submit that the application is misconceived and should be dismissed.

23 The application here is for the rectification of the Register of Trade Marks and under s 39 of the Trade Marks Act, `any person aggrieved ... by any entry made in the register without sufficient cause, or by any entry wrongfully remaining in the register` may make an application that the Register be rectified by expunging or varying the entry.

24 It is clear that the applicants are a `person aggrieved` under s 39. In William Powell v Birmingham Vinegar Brewery Co Ltd [1894] AC 8, it was held that where the applicant is in the same trade as the person who has registered the trade mark, and where the existence of the entry upon the register would or might limit the legal rights of the applicant so that he could not lawfully do that which he could otherwise have lawfully done, he has a locus standi to be heard as a `person aggrieved`.

25 It is not disputed that the applicants are in the same trade as the respondents, namely, the manufacture and sale of tobacco and tobacco products especially cigars and that they desire to deal in the goods covered by the respondents` registration.

26 The existence of the respondents` registered trade mark on the Register would limit and restrict the legal rights of the applicants in their sale of `Davidoff` goods, including cigars, by excluding the applicants from the tobacco trade in Singapore. The applicants are restricted from lawfully doing which they could lawfully do but for the respondents` wrongful entry on the Register. (See Re Apollinaris Co`s TM [1891] 2 Ch 186 and Powell`s TM [1894] AC 8)

27 The applicants, through the Davidoff Group, are the owners of the trade mark and have used the trade mark `Davidoff` by way of sale in September 1979 in Singapore, before the respondents` first actual user in September 1982, when the first Davidoff shop was opened in Singapore at the Singapore Hilton Hotel. There had been advertising and promotions of the shop in magazines circulating in Singapore. A person who has before registration used the registered trade mark is a person aggrieved ( Zonophone TM (1903) 20 RPC 450).

28 It is clear from the evidence that the trade mark `Davidoff` has long been associated with the Davidoff Group as owners. The trade mark `Davidoff` originated with Mr Zino Davidoff who is still involved with the Davidoff Group. The trade mark `Davidoff` was first registered in Switzerland by Davidoff et Cie in Switzerland in December 1969. Prior to 1979, consumers in Singapore ordered Davidoff cigars from the applicants` office in Basle.

29 The name Davidoff gained an extensive reputation and this reputation is still upheld even today. The respondents, a company which came into being in 1978 long after the establishment of the Davidoff Group, must have been aware of this fact since they are in the same trade. The respondents` trade mark is identical to that of the Davidoff Group`s. These facts clearly indicate that the respondents did not independently devise the trade mark but in fact copied it or stolen it and cannot claim to be the proprietors thereof.

30 The respondents were well aware of the prior claim to the proprietorship of the trade mark `Davidoff` by the applicants. The respondents have not sufficiently explained their choice of the `Davidoff` trade mark. The applicants` trade mark had acquired a sufficient reputation in this country, at the date of the application by the respondents for the registration of their mark, as to merit protection. The respondents were not entitled to registration at the time of their application (see Pelican TM [1974] RPC 692).

31 Members of the public had been deceived into thinking that the respondents` cigars were manufactured by the applicants. Letters of complaint had been received by the Davidoff Group after customers had purchased the respondents` cigars thinking that they were the applicants` cigars.

32 There is great similarity, if not exactness, in the applicants` and the respondents` cigars as to the boxes, labels and warranties and the size of cigars. The respondents even went to the extent of fixing a label on their boxes guiding the consumer to the Davidoff stores if there was any complaint with the result that the applicants received complaints.

33 The respondents have also followed the applicants` range of Chateau Marguax cigars which only the applicants have the authority to link it to the Davidoff name. A customer who purchased the respondents` box of Chateau Marguax cigars had returned it to the applicants with a complaint.

34 The respondents have also duplicated the applicants` Mini Cigarillos. A customer who had purchased the respondents` Mini Cigarillos at the Changi Airport had returned the box to the applicants with a complaint.

35 It is clear that having regard to the use of the applicants` earlier mark, the mark of the respondents had actually deceived or caused confusion to the public. Under s 15(1) of the Trade Marks Act, it is provided:

36 It is clear from the authorities that the court always has a discretion under s 39 to rectify or not in the light of all the circumstances of the case. The merits or demerits of the applicants are of little relevance, at least where a likelihood of confusion is established, as the question is not between the applicants on the one hand and the respondents on the other, but between the public and the respondent (see Kerly`s Law of Trade Marks and Trade Names , 11th Ed, paras 11-29 p 175).

37 The registration of the trade mark had been attempted and made by the Davidoff Group under the names of various companies, Cubatobacco and Bluebell. This did not create confusion as the trade mark belongs to the Davidoff Group as a whole. If the court is to refuse the applicants` application to rectify the Register, this would result in the applicants` inability to use their genuine `Davidoff` trade mark devised by it and which it has attached to its goods from the very commencement of their operations.

38 I was of the view that, in all the circumstances of the case, the court should exercise its discretion to expunge the respondents` registered trade mark from the Register.

39 For these reasons I granted the application of the applicants.

40 Order accordingly