Intellectual Property Law

Citation(2002) 3 SAL Ann Rev 290
Date01 December 2002
Publication Date01 December 2002
AuthorTAN TEE JIM, SC LLB (Sing), LLM (Lond), Advocate & Solicitor (Singapore) NG-LOY WEE LOON LLB (Sing), LLM (Lond), Advocate & Solicitor (Singapore) Deputy Director, IP Academy, Associate Professor, Faculty of Law, National University of Singapore
Trade marks and passing off
Assessment of likelihood of deception or confusion

16.1 Protection for trade marks in Singapore (statutory or at common law) is premised upon proof of likelihood of deception or confusion among the public arising from the similarity between the two conflicting marks. While this is essentially a question of fact, there are various legal principles governing how the court should go about making this finding of fact. The case Polo/Lauren Co LP v United States Polo Association[2002] 1 SLR 326, is the latest case to give a useful summary of some of these principles.

16.2 The two conflicting marks in this case both depicted a polo player on horseback. One of them belonged to the well-known Polo/Lauren Co LP (“the Polo/Lauren mark”), while the other was the mark of United States Polo Association which had the letters “USPA” beneath the mark (“the USPA mark”). The other difference between these two marks was that the polo player in the Polo/Lauren mark appeared with his polo club on the upswing while the USPA mark showed the player with his polo club on the low swing. Choo Han Teck JC (as he then was) had to decide if the USPA mark was so similar to the Polo/Lauren mark as to cause confusion. If so, its registration was not permitted under ss 15 and 23 of the Trade Marks Act (Cap 332, 1992 Ed). (This Act has been repealed and replaced by the Trade Marks Act (Cap 332, 1999 Ed). The relevant provision under the 1999 Act would be s 8.)

16.3 Choo JC summarised the governing legal principles as follows:

(a) The question whether a particular mark is calculated to deceive or cause confusion is not the same as the question whether the use of the mark will lead to passing off (Re Hack”s Application(1940) 58 RPC 91 at 103).

(b) It is “sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same

source. It is enough if the ordinary person entertains a reasonable doubt” (Re Jellinek”s Application(1946) 63 RPC 59 at 78).

(c) The test is necessarily a question of fact and degree in every case (“Bali” Trade Mark[1969] RPC 472 at 496).

(d) The comparison of the earlier mark and proposed marks “must be assessed taking into account the actual way and manner that the marks are used, and surrounding circumstances such as the similarities between marks and goods on which they are applied” (Kellogg Co v Pacific Food Products Sdn Bhd[1999] 2 SLR 651 at [33]).

(e) “Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted” (Kerly”s Law of Trade Marks and Trade Names (12th Ed, 1986) at para 17—08).

(f) The law is not concerned here with the “moron in a hurry” being confused (Morning Star Co-op Society v Express Newspapers[1979] FSR 113), but with confusion among “a substantial number of persons of ordinary care and intelligence” (Kellogg Co v Pacific Food Products, supra at [32]).

16.4 On (e), which advocates adopting an approach of comparison where the two marks are not put side by side, Choo JC observed that, while this approach might be useful especially if the judge was familiar with the product against which the other was being compared, it was more likely that judges would place the two marks side by side for comparison (as the assistant registrar did, in this case). He saw nothing inherently wrong with this latter approach, and it was one which he himself would prefer to adopt.

16.5 On (g), the learned judicial commissioner elaborated at [9] that, in the context of shoppers, the assessment must be made by reference to someone who is a “common and ordinary consumer [who] can reasonably be expected to spend a modicum of attention and reflect on what he is examining, at least for a moment that is longer than ‘in a flash’”.

16.6 Taking into account matters such as the absence of actual confusion even though the goods bearing the USPA mark had been sold since 1996 (a fact which in itself, Choo JC stressed, was not decisive of the question), and the fact that the products of the two companies were sold exclusively in their

own respective boutiques, the judicial commissioner concluded that the two marks were not sufficiently similar as to cause confusion.

Descriptive marks

16.7 Trade marks which are descriptive of the goods or services sold under them enjoy limited protection, if any. The list of local decisions setting out this established principle —eg, Mechanical Handling Engineering (S) Pte Ltd v Material Handling Engineering Pte Ltd[1993] 2 SLR 205; Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd[2000] 2 SLR 766— sees an addition of one more case: Yunnan Baiyao Group Co Ltd v Tong Jum Chew Pte Ltd[2003] 1 SLR 62.

16.8 The plaintiffs, a public company in China, manufactured a herbal drug known as “Yunnan Paiyao” (meaning “white medicine from Yunnan”). It manufactured this drug for a Chinese government-owned company, Yunnan Medicines & Health Products Import and Export Corporation (“YIE”), which sold this drug in the international markets, including Singapore, under the trade mark “Camellia Yunnan Paiyao” and in a red/yellow packaging. There was no dispute that the brand “Camellia” belonged to YIE. The plaintiffs sold this drug in China under the trade mark “Yunfeng Yunnan Baiyao” and in a red/green/white packaging. The defendants were appointed by YIE as the sole agents in Singapore for the distribution and sale of the “Camellia Yunnan Paiyao”. They were sued by the plaintiffs in passing off, in particular:

(a) for importing and selling “Camellia Yunnan Paiyao” products whose packaging contained a description that they were manufactured by the plaintiffs; and

(b) for importing and selling “Camellia Yunnan Paiyao” products manufactured by the plaintiffs which had passed the product expiry date indicated on the packaging.

16.9 The allegation in (a) was a claim in passing off as to the origin of the product, that is, the defendants attempted to mislead the public into thinking that defendants” products were in fact products of the plaintiffs. However, as pointed out by Choo Han Teck JC (as he then was) at the outset of his judgment, this allegation is of no advantage to the plaintiff unless the plaintiff”s product enjoyed a goodwill which the defendant might benefit from the passing off. In this case, therein lay the difficulty: the plaintiffs could not establish that they had any goodwill to protect; the goodwill in the “Camellia” trade mark and in the red/yellow packaging belonged to YIE, and no one could claim any goodwill in “Yunnan Paiyao” since this mark was descriptive of the product in question. Choo JC drew an analogy to an earlier trade mark case involving another Chinese herbal/medicinal product, Yomeishu Seizo Co Ltd v Sinma Medical Products (S) Pte Ltd[1991] SLR 499, where registration of

a mark comprising three Chinese characters for medicated wine was refused. This was not a case where the descriptive trade mark had acquired a “secondary meaning” through extensive use by the plaintiff (eg, Reddaway v Banham(1896) 13 RPC 218).

16.10 Further, the plaintiffs had not discharged the burden of proving that the defendants” products were not in fact manufactured by the plaintiffs; the evidence showed that the defendants had bought the products from YIE (or, in the case of one shipment, from YIE”s parent company).

Passing off as to quality of goods

16.11 The allegation in (b) — that the defendants were selling products which had passed the product expiry date — was a claim in passing off as to the quality of the product, that is, the defendants attempted to mislead the public into thinking that they were purchasing the genuine (unexpired) product of the plaintiff. This form of passing off is well-accepted: see, eg, AG Spalding & Bros v A W Gamage Ltd(1915) 32 RPC 273 (defendant stopped from selling plaintiff”s old range of footballs as its new range).

16.12...

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