KOPITIAM Copies, A Cautionary Tale

KOPITIAM Copies, A Cautionary Tale

A curious situation has been simmering in downtown Singapore.? Over at a luxury hotel next to Raffles City Shopping Centre, hotel guests and other customers dine in the upmarket environs of a restaurant kitted out in old world coffee shop charm.? A stone’s throw away on the same road, office executives and students jostle in a food court for an economical and quick disposal of the chore otherwise known as lunch, self-service style.

Almost two microcosms, it looked like no one would bat an eyelid until Kopitiam Investment Pte Ltd filed an application to register “KOPITIAM” as a trade mark in 1999.

As it turns out, the two eating spots go by the same name.

RC Hotels (Pte) Ltd, owner of the hotel’s KOPI TIAM restaurant, caught whiff of the food court operator’s intent and took out an opposition against the registration of “KOPITIAM” as a trade mark.

Neither party was a pushover.? The food court operator was shortlisted and promoted to prospective foreign investors as a successful local company with potential to expand by IE Singapore, a government agency.? The hotel, on the other hand, enjoyed accolades in the local media and significant profits from its KOPI TIAM restaurant since 1986.

Both parties had a shot at negotiating a settlement but talks eventually broke down, paving the way for an opposition hearing in March 2008.

The Opponents had a fine line to tread.? On the one hand, they argued that the Applicants could not register KOPITIAM, which means “coffee shop”, in relation to the services claimed, “cafes, cafeterias, canteens, provision of food and drinks”, as the term was descriptive.? Furthermore, the Applicants’ use of KOPITIAM across their chain of food courts was not substantial enough to displace the primary meaning of KOPITIAM and replace it with a secondary meaning as a trade mark.? On the other hand, the Opponents had to be wary of sabotaging their own position as their restaurant also went by KOPI TIAM.

The IPOS decided that KOPITIAM is so commonly and generically used in the local parlance to mean an eating place or coffee shop which sells a variety of cooked food and beverages that it should not be monopolized by any single trader who provides food and drink.? The mark therefore cannot be registered as a trade mark.? By parity of reasoning, the Principal Assistant Registrar also could not conclude that the Opponents have goodwill in a mark that fundamentally has no capacity to distinguish a trader’s food and beverage services from another’s.

The hotel group may have succeeded in stopping the registration of KOPITIAM by the food court operator, but this does not mean that the food court chain cannot operate under the familiar name anymore.? In future, Kopitiam Investment Pte Ltd will face some difficulty stopping others from using the same name for food courts.? This is of course the same constraint RC Hotels (Pte) Ltd already faces.? A cautionary tale, indeed, on the choice of trade marks.