Intellectual Property Law

• Published date: 01 December 2013
• Author: TAN Tee Jim SC LLB (Singapore), LLM (London); Advocate and Solicitor (Singapore). NG-LOY Wee Loon LLB (Singapore), LLM (London); Advocate and Solicitor (Singapore); Professor, Faculty of Law, National University of Singapore.
• Date: 01 December 2013

Passing off

Distinctiveness and descriptive marks

19.1 The term ‘distinctiveness’ used in trade mark law has a technical meaning. When this term is used in the first element of goodwill in the action for passing off – the plaintiff must prove that his mark is distinctive of his goods or services – it does not mean that the mark must be unique or novel. Neither does it mean that the plaintiff is the one who created or devised that mark or get-up. A mark that is distinctive of the plaintiff's goods or services simply means that the mark has been used or promoted by the plaintiff in Singapore to the point where the relevant public, when they encounter goods or services bearing this mark or get-up, believe that these goods or services originate from the plaintiff. To be more precise, we should say that the plaintiff has to prove that his mark or get-up has become de facto distinctive of his goods or services. Passing off requires proof of de facto distinctiveness.

19.2 Whether the plaintiff's mark or get-up has acquired de facto distinctiveness is a factual question. In certain cases, the court will impose a higher burden on the plaintiff in this factual inquiry. One of these cases is where the mark or get-up alludes to the quality or some other characteristics of the goods or services in question. For convenience, these marks shall be referred to as ‘descriptive marks’. The leading case in Singapore dealing with descriptive marks is the Court of Appeal's decision in Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd[2000] 1 SLR(R) 687 (‘Lifestyle 1.99’). It is in this case that the appellate court drew a distinction between descriptive marks and ‘fancy’ marks (marks which are not descriptive of any characteristic of the goods or services in question), and held that it was more difficult to prove that a descriptive mark is distinctive than if the mark was fancy. The burden may be higher, but it is not impossible to discharge this higher burden. This is illustrated by the outcome of Lifestyle 1.99. The mark in question was ‘ONE.99 Shop’ used in relation to the business of selling goods at $1.99. The claimant succeeded in crossing the higher threshold to prove that this descriptive mark had become de facto distinctive of its business.

19.3 Lifestyle 1.99 is now joined by the Court of Appeal's decision in The Singapore Professional Golfers' Association v Chen Eng Waye[2013] 2 SLR 495 (‘Singapore Professional Golfers' Association’). The claimant in this case was a non-profit society set up to promote the sport of golf and the interests of its professional golfer members. The claimant's name was ‘The Singapore Professional Golfers' Association’. It also used its shortened name ‘Singapore PGA’ and its initials ‘SPGA’ in the course of its activities. The second defendant, who was a former member of the claimant, set up a limited liability partnership to organise golf tournaments and golf-related activities. The name of this partnership was ‘Singapore Senior PGA LLP’. It also adopted the initials ‘SSPGA’. The claimant commenced an action for passing off.

19.4 On the first element of goodwill, the Court of Appeal reiterated the principle set out in Lifestyle 1.99, viz, the claimant bears a heavy burden of proving that its descriptive mark has become distinctive. Like the claimant in Lifestyle 1.99, the claimant was able to persuade the appellate court that, as a result of its use and promotion of its full name, shortened name and its initials over almost 40 years, the relevant segment of the public (all those who have an actual or potential interest, directly or indirectly, in golfing) had come to associate these names and initials exclusively with the claimant.

19.5 The case is noteworthy for two reasons. First, the Court of Appeal enunciated what was implicit in Lifestyle 1.99, namely, a claimant with a descriptive mark would also face greater difficulties when proving confusion for the purposes of the second element of misrepresentation. The relevant passage of the judgment is the following (Singapore Professional Golfers' Association at [55]):

Where a claimant's name or sign is fancy and therefore highly distinctive in itself, it will be easier to conclude that a likelihood of confusion exists if the defendant uses a similar sign … Whereas if purely descriptive words are used and the association [with the claimant] is not demonstrably strong, the degree of protection will be less and small differences may then be sufficient to enable a defendant to avoid liability … However, this is not a fixed rule of principle and the central question in each case is whether, in all the circumstances, there is a sufficient likelihood of confusion. [emphasis added]

19.6 The last sentence (in italics) serves as a reminder that, although more difficult, it is not impossible to prove confusion in a case involving a descriptive mark. This is demonstrated by the outcome of Singapore Professional Golfers' Association itself: the claimant succeeded in proving that, because of the similarity between the parties' names and the identity between the parties' fields of business, it was likely that the relevant segment of the public would believe that the parties were one and the same or are connected. The slight differences between, for example, the claimant's shortened name ‘Singapore PGA’ and the name of the defendant partnership ‘Singapore Senior PGA LLP’ were not sufficient to displace the likelihood of confusion.

19.7 Second, the Court of Appeal gave the rationale for why trade mark law imposes these higher thresholds in cases involving descriptive marks. The appellate court explained that this was because ‘the law resist[ed] granting a legal monopoly over words of general usage’: Singapore Professional Golfers' Association at [30]. This policy consideration was also given by the Court of Appeal in another case decided in the year under review, namely, Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd[2013] 2 SLR 941 (‘Hai Tong Co’). This was an infringement action brought under the Trade Marks Act (Cap 332, 2005 Rev Ed). The Court of Appeal noted that the distinctiveness of the claimant's trade mark was a relevant factor when determining if the parties' trade marks are similar. The more descriptive (and hence less distinctive) the registered trade mark, the less protection it will receive in the sense that it would be easier for the defendant to argue that the marks are dissimilar. This was because, the appellate court explained, ‘it would be unfair to subsequent entrants to the market if they [were] prevented from using ordinary marks’: Hai Tong Co at [24].

19.8 This policy reason has also been expressed by another Singapore court in this other way: marks which are descriptive of the goods or services are publici juris: Fraser & Neave Ltd v Yeo Hiap Seng Ltd[1981–1982] SLR(R) 279 at [33]. That is, they are public property. The nature of descriptive marks as publici juris has been examined in Ng-Loy Wee Loon, ‘Trade Marks, Language and Culture: The Concept of Distinctiveness and Publici Juris’[2009] Sing JLS 508. In brief, the author argues that, when the law grants a legal monopoly over a descriptive mark to one particular trader, it is depleting the pool of words and symbols which other traders may legitimately desire to use. To adopt descriptive marks to sell one's goods or services has advantages from the marketing point of view. For example, the mark may more immediately make known to the relevant public the purpose or nature of the trader's goods or services (such as the mark ‘Electro-Reflexologist’ for an electric foot reflexology machine: OTO Bodycare Pte Ltd v Hiew Keat Foong[2005] SGHC 133). Or the mark may help to extol the virtues of the trader's goods or services (such as the mark ****, which means ‘life nourishing wine’, for medicated wine: Yomeishu Seizo Co Ltd v Sinma Medical Products (S) Pte Ltd[1991] 1 SLR(R) 246). These marketing advantages make descriptive marks a natural choice for most traders. For this reason, the law should be slow in allowing one particular trader to appropriate a descriptive mark for his own exclusive use.

The ‘hard line’ approach

19.9 The law of passing off in Singapore adopts what is known as the ‘hard line’ approach. What this means is that, to satisfy the first element of goodwill in the action, the claimant must establish that the goodwill he enjoys is attached to a business within Singapore. The ‘hard line’ approach was first laid down in the Privy Council's decision (on appeal from Singapore) in Star Industrial Co Ltd v Yap Kwee Kor[1974–1976] SLR(R) 581. The approach was subsequently...