Han's (F & B) Pte Ltd v Gusttimo World Pte Ltd

• Court: High Court (Singapore)
• Judge: George Wei JC
• Judgment Date: 10 February 2015
• Neutral Citation: [2015] SGHC 39
• Citation: [2015] SGHC 39
• Subject Matter: invalidity,Trade Marks and Trade Names,infringement,groundless threat,passing off
• Docket Number: Suit No 255 of 2013
• Defendant Counsel: Suresh s/o Damodara (Damodara Hazra LLP)
• Hearing Date: 05 June 2014,08 April 2014,09 April 2014
• Plaintiff Counsel: Mark Goh Aik Leng and Cheryl Ng Huiling (MG Chambers LLC)
• Published date: 19 January 2017

George Wei JC:

These proceedings concern an action between Han’s (F & B) Pte Ltd (“the Plaintiff”) and Gusttimo World Pte Ltd (“the Defendant”) for trade mark infringement and passing off. Both the Plaintiff and Defendant run businesses in the food and beverage industry. The Plaintiff is the owner of a chain of restaurants named Han’s Café. The Defendant is the owner of a restaurant named HAN Cuisine of Naniwa.

The Plaintiff’s restaurants and its registered marks

The first Han’s restaurant opened its doors in 1980. Then, the Han’s restaurant sold mainly confectionaries. Business has grown steadily over the years, and the Plaintiff now runs 21 Han’s Café outlets island-wide.1Han Choon Fook’s affidavit of evidence-in-chief at paragraph 7. The moving spirit behind the Plaintiff is Han Choon Fook (“Mr Han”). Mr Han is from the Han family that founded the first Han’s restaurant. Mr Han is a director of the Plaintiff.

The Plaintiff’s restaurants specialise in serving quality food and beverages at affordable prices.22 AB at 414. They serve a mixture of local fare, Hainanese-style western sets and pastries. The Plaintiff has also ventured into the Halal food and beverage market with the creation of a sister chain, Hanis Café, in 2006. Both Han’s Café and Mr Han have received numerous local awards and certificates representing business excellence and entrepreneurship.3Han Choon Fook’s affidavit of evidence-in-chief at paragraph 6.

The Plaintiff is the registered proprietor of four marks under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”). The marks may be found in the annexure to this judgment. The four marks were registered on 1 June 2005 in relation to class 43 of the Nice Classification of Goods and Services. The trade marks are specified to cover:4Statement of Claim, Annex A.

Bar; bistro; cafe; cafeteria; canteens; take-away restaurant services; catering services; coffee bar and coffee house; coffee supply services for offices; contract food cooking services; food preparation; preparation of take-away foods and beverages; restaurant; self-service cafeteria services; self-service restaurants; snack bar.

The first two registered marks are the word marks, “Han’s” and “HAN’S”. I shall refer to them collectively as the “Han’s word marks”. The other two marks are composite marks of “Han’s” in a stylised font. By composite, I mean that the word “Han’s” is depicted within a frame that approximately outlines the lettering. The two composite marks are identical save that one is red (“the red Han’s composite mark”) and the other is black. Registration of the red Han’s composite mark is limited to the depiction in red. The Plaintiff does not specify in either its pleadings or its submissions which registered mark it relies on for its infringement claim against the Defendant.

The Defendant’s restaurant and the allegedly infringing sign

The Defendant’s restaurant, HAN Cuisine of Naniwa, is located at Odeon Towers and commenced business in June 2012. The restaurant offers traditional Naniwa cuisine (Naniwa was the name used until the 16th century for what is now Osaka, Japan). Its specialities include meat and vegetable skewers—also known as Kushikatsu—that originate from Osaka. The restaurant also serves sushi, sashimi and other Japanese dishes.

The kitchen of the Defendant’s restaurant is helmed by Chef Seiichiro Arakawa. Chef Arakawa is a Japanese chef who was mentored by a chef of a Michelin-starred restaurant in Kobe, Japan. Dinner sets at the Defendant’s restaurant start at upwards of $100.52 AB at 380–384. The Defendant’s restaurant also has a fairly extensive alcohol menu.62 AB at 388–392.

The Defendant’s restaurant, HAN Cuisine of Naniwa, trades under a sign (“the HAN sign”) which forms the basis of the Plaintiff’s infringement action. The HAN sign may be found in the annexure to this judgment.

The HAN sign is a composite sign comprising three elements: The word “HAN”, which is depicted in a muted gold colour and in a prominent position in the centre of the sign. The phrase “Cuisine of Naniwa” depicted in black, and in a smaller font and subsidiary position to “HAN”. Both “HAN” and “Cuisine of Naniwa” are in a similar typeface—a modified version of the Helvetica font. The Kushikatsu device that encircles the sign. The Kushikatsu device is a stylised depiction of the Japanese meat and vegetable skewers that the Defendant’s restaurant serves. It is styled in a manner that resembles a calligraphy brush-stroke. The Kushikatsu device is said to be in a deep brown colour, but the deep brown is imperceptible and it appears black.

The Defendant displays the sign at the restaurant front, various locations in and outside the restaurant, and on its menus and tablemats. The Defendant has also registered and maintains a website at the domain http://www.han.com.sg.

The Defendant is majority-owned by Dr Lee Se Heon. Dr Lee is also a director of the Defendant. Dr Lee began running the Defendant as a food and beverage business in 2008. The Defendant operates other restaurants, which are said to be trendy and serve high-end cuisine.

Prior to 2008, Dr Lee was involved in very different fields of business. In 1957, Dr Lee’s father founded Hankuk Glass Industries Inc (“Hankuk”) in Korea, which dealt in the production of fine glass products. Dr Lee eventually became the chief executive officer in the company which had evolved into the HanGlas group. In 2001, Dr Lee moved to Singapore and incorporated an information technology startup named SL Interactive Pte Ltd.

In 2007, a French company acquired an interest in the HanGlas group. It was about then that Dr Lee decided to refocus his Singapore business from information technology to food and beverage. SL Interactive Pte Ltd was renamed Gusttimo World Pte Ltd, which is the defendant in this action. In 2011, the Defendant decided to open a high-end restaurant in Singapore specialising in Osaka cuisine that incorporated Korean and Chinese elements.

The reasons why the name HAN Cuisine of Naniwa was chosen are discussed in greater detail later. But I would point out at this juncture that the word “HAN” had a long association with Dr Lee’s family. It formed part of the name of Dr Lee’s family company. It was also part of a registered trademark, “HANGLAS” with a square device, that Hankuk registered in Singapore in 2004.

The arguments

The Plaintiff claims that the HAN sign infringes the Han’s trade marks. The Plaintiff claims in addition that the Defendant is passing off its business as the Plaintiff’s, and that the use of the sign was calculated to deceive and with the deliberate objective of passing off.

The Plaintiff seeks an injunction restraining the Defendant from trading under the HAN sign, and an inquiry to damages or an account of profits. It also seeks an order for full discovery of the infringing materials and articles, and an order that the Defendant transfers the domain, http://www.han.com.sg, to the Plaintiff.

The Defendant denies the allegations of infringement and passing off. The Defendant counterclaims against the Plaintiff for groundless threats of infringement proceedings. The Defendant also seeks a declaration that the Plaintiff’s registered marks are invalid because they are devoid of distinctiveness, or alternatively, because the Plaintiff obtained the registration of the marks through misrepresentations and in bad faith. While invalidity because of misrepresentation and bad faith was pleaded, these points were not argued in submissions, and rightly so. I will therefore not address them.

The issues

The issues that arise fall broadly into four categories: validity, infringement, passing off and groundless threat.

The first issue is whether the Han’s trade marks are invalid under s 23 of the TMA because they do not satisfy the definition of a trade mark or are devoid of any distinctive character.

The second issue is whether the Defendant’s use of the HAN sign infringes the Han’s trade marks under s 27 of the TMA. This raises the following subsidiary issues: whether the HAN sign is similar to the Han’s trade marks; whether the HAN sign is used in relation to goods or services identical with or similar to those for which the Han’s trade marks are registered; and whether on account of the presence of the first two conditions, there exists a likelihood of confusion on the part of the relevant public.

The third issue is whether the Defendant is liable for passing off its business as being connected to or associated with the Plaintiff’s. This raises the following subsidiary issues: whether the Plaintiff has goodwill in the trade marks attached to the goods and services that it supplies; whether the Defendant made a misrepresentation that will lead to a likelihood of confusion; and whether the Plaintiff has or is likely to have suffered damage as a consequence.

The fourth issue is whether the Plaintiff is liable for making a groundless threat of infringement proceedings against the Defendant under s 35 of the TMA.

The witnesses and evidence

Both the Plaintiff and the Defendant called a factual and expert witness each. Mr Han was the Plaintiff’s factual witness. He gave evidence on the history of the Plaintiff and its business model and strategies. He also gave some evidence on the future plans of the Plaintiff, in particular, the possibility of the Plaintiff expanding into a more upmarket food and beverage market segment.

Dr Lee was the Defendant’s factual witness. Dr Lee gave evidence of the business of the Defendant’s restaurant. He also gave evidence on how the restaurant came into being, in particular, how he settled on the name HAN Cuisine of Naniwa.

The Plaintiff called Shinde Prasad Vasantrao as its expert. Mr Prasad was a director at the marketing branch of Ipsos ASI (“Ipsos Marketing”), a French advertising research...