Whether swish nightclub Ku De Ta gets to keep its name at Marina Bay Sands will be among key issues to be decided at a trial of a trademark dispute between the MBS club's owners and the founding partners of Ku De Ta in Bali.
The case gained traction after High Court Assistant Registrar Elaine Chew Yi-Ling last week dismissed an application by owners of the MBS nightclub to strike out a trademark infringement lawsuit brought by the Ku De Ta Bali partnership.
The partnership - comprising Australians Guy Neale, Aki Kotzamichalis and Arthur Chondros; Indonesian Made Wiranatha and the White Horse Trading Co - is seeking a court order to stop the Singapore club from using the Ku De Ta name at its Sky Park venue at MBS, and in its corporate materials and website, KU DÉ TA Singapore - Ultimate Lifestyle Venue.
In addition, the Bali club partners also seek an accounting of profits made by the MBS nightclub from its use of the Ku De Ta name.
The partnership, which ran the Bali club since 2000 under the Ku De Ta trademark registered in Indonesia, said the alleged infringement was discovered after the partners did a search of the trade name in the Singapore Registry of Trademarks in December 2009.
According to the suit, Nine Squares, an Australian firm founded by Mr Chondros, had, "without the consent or authorisation" of the partnership, registered two trademarks in Singapore in 2004 and 2009 incorporating the name Ku De Ta, and then licensed the marks to a Hong Kong businessman Chris Au, who assigned the marks for use at MBS.
The partnership, which said its trademark rights are violated under section 55 of the Trade Marks Act, is also seeking to invalidate the trademarks registered by Nine Squares in Singapore.
At issue is whether the Ku De Ta trademarks registered by Nine Squares was lawful.
Mr Au, in an affidavit, argued the partnership has "no valid cause of action" because the trademark is a registered mark in Singapore and is registered to Nine Squares, which he said was used by Mr Chondros to manage and operate Ku De Ta Bali. Mr Au also claims Mr Chondros is the owner of the Ku De Ta trademark as well as of "any associated goodwill outside of Indonesia through Nine Squares".
But Assistant Registrar Chew disagreed. "If the defendant's literal interpretation of (Sections) 55 and 55A(2) of the Trade Marks Act were adopted, the owner of a well-known mark would not be entitled to request the prohibition of the use of a conflicting mark so long as the latter is a registered trade mark," she wrote in her grounds of decision issued last Thursday.
In dismissing the MBS club's claim that no valid cause of action could be made out, Assistant Registrar Chew wrote: "On the contrary, the plaintiffs had set out clearly in their pleadings that 'Nine Squares had no right to apply for the registration of or to register the name/mark Ku De Ta in the Singapore Registry of Trade Marks.' It has also clearly expressed its intention to seek the invalidation of the Nine Squares Registered Marks. These facts, if proven, would be sufficient to found a valid cause of action against the defendant."
Assistant Registrar Chew also disagreed with the Singapore club's claims that "procedurally, it was premature" for the Bali partnership to seek restraining orders before the Nine Squares registered trademarks were properly invalidated.
"The prolonged use of an invalidly registered trade mark could result in substantial dilution of the goodwill accruing to the well known mark, which is a form of damage not easily compensable in monetary terms," she wrote.
Ku De Ta braces for battle to keep name
The case gained traction after High Court Assistant Registrar Elaine Chew Yi-Ling last week dismissed an application by owners of the MBS nightclub to strike out a trademark infringement lawsuit brought by the Ku De Ta Bali partnership.
The partnership - comprising Australians Guy Neale, Aki Kotzamichalis and Arthur Chondros; Indonesian Made Wiranatha and the White Horse Trading Co - is seeking a court order to stop the Singapore club from using the Ku De Ta name at its Sky Park venue at MBS, and in its corporate materials and website, KU DÉ TA Singapore - Ultimate Lifestyle Venue.
In addition, the Bali club partners also seek an accounting of profits made by the MBS nightclub from its use of the Ku De Ta name.
The partnership, which ran the Bali club since 2000 under the Ku De Ta trademark registered in Indonesia, said the alleged infringement was discovered after the partners did a search of the trade name in the Singapore Registry of Trademarks in December 2009.
According to the suit, Nine Squares, an Australian firm founded by Mr Chondros, had, "without the consent or authorisation" of the partnership, registered two trademarks in Singapore in 2004 and 2009 incorporating the name Ku De Ta, and then licensed the marks to a Hong Kong businessman Chris Au, who assigned the marks for use at MBS.
The partnership, which said its trademark rights are violated under section 55 of the Trade Marks Act, is also seeking to invalidate the trademarks registered by Nine Squares in Singapore.
At issue is whether the Ku De Ta trademarks registered by Nine Squares was lawful.
Mr Au, in an affidavit, argued the partnership has "no valid cause of action" because the trademark is a registered mark in Singapore and is registered to Nine Squares, which he said was used by Mr Chondros to manage and operate Ku De Ta Bali. Mr Au also claims Mr Chondros is the owner of the Ku De Ta trademark as well as of "any associated goodwill outside of Indonesia through Nine Squares".
But Assistant Registrar Chew disagreed. "If the defendant's literal interpretation of (Sections) 55 and 55A(2) of the Trade Marks Act were adopted, the owner of a well-known mark would not be entitled to request the prohibition of the use of a conflicting mark so long as the latter is a registered trade mark," she wrote in her grounds of decision issued last Thursday.
In dismissing the MBS club's claim that no valid cause of action could be made out, Assistant Registrar Chew wrote: "On the contrary, the plaintiffs had set out clearly in their pleadings that 'Nine Squares had no right to apply for the registration of or to register the name/mark Ku De Ta in the Singapore Registry of Trade Marks.' It has also clearly expressed its intention to seek the invalidation of the Nine Squares Registered Marks. These facts, if proven, would be sufficient to found a valid cause of action against the defendant."
Assistant Registrar Chew also disagreed with the Singapore club's claims that "procedurally, it was premature" for the Bali partnership to seek restraining orders before the Nine Squares registered trademarks were properly invalidated.
"The prolonged use of an invalidly registered trade mark could result in substantial dilution of the goodwill accruing to the well known mark, which is a form of damage not easily compensable in monetary terms," she wrote.
Ku De Ta braces for battle to keep name