Chai Chyau Ling (doing business as Racetech Auto) v Racing Technology Pte Ltd

• Jurisdiction: Singapore
• Judge: Chan Seng Onn J
• Judgment Date: 04 May 2009
• Neutral Citation: [2009] SGHC 105
• Citation: [2009] SGHC 105
• Published date: 08 May 2009
• Court: High Court (Singapore)
• Plaintiff Counsel: G Radakrishnan (Infinitus Law Corporation)
• Defendant Counsel: Patrick Chin (Chin Patrick & Co) (instructed) and G Dinagaran (Thomas Tham Dinagaran & Company)
• Subject Matter: Trade Marks and Trade Names

4 May 2009

Chan Seng Onn J:

Introduction

1 This is an appeal brought by Racing Technology Pte Ltd (“the Appellant”) against the decision of AR Teo Guan Siew (“the AR”) delivered on 6 October 2008.

2 In the application before the AR, the plaintiff, Chai Chyau Ling doing business as Racetech Auto (the Respondent in this appeal), had claimed infringement of her registered trade mark and passing off of her trade name and trade mark. Eventually, the AR awarded summary judgment under O 14 of the Rules of Court (Cap. 322, R 5, 2006 Rev Ed) to the Respondent. Being dissatisfied with the AR’s decision, the Appellant brought the present appeal.

3 After hearing arguments from counsel on both sides, I concurred with the findings of the AR and accordingly dismissed the appeal. My reasons are given below.

Background facts

4 Both the Appellant and the Respondent are in the business of vehicle-related services. The Respondent is the registered sole-proprietor of the business ‘Racetech Auto’ (“Racetech”), though the business, which was registered on 24 October 1998, is actually run by her husband, one Teo Seng Yew, also known as Roland Teo (“Roland Teo”).

5 The Respondent is also the registered proprietor in Singapore of the trade mark “RACETECH” (“the Trade Mark”) under registration number T0623173D in class 37. The Trade Mark, which is of a unique typeface and registered without limitation of colour, was registered on 20 October 2006 with the disclaimer that the registration gave no right “to exclusive use separately of “Race” and “Tech””.

6 Prior to Racetech’s registration on 24 Oct 1998 and the registration of the Trade Mark on 20 October 2006, Roland Teo had actually been carrying out the same business as Racetech, only that it was under the trade name, ‘Racetech Autosports Accessories’ (“RAA”), which was registered in September 1988. Roland Teo was the sole registered proprietor of the business, which trade name was ‘Racetech’ and the Respondent then assisted him with the accounts and administrative work, as is the case today with Racetech. On 15 October 1998, RAA de-registered, shortly before Racetech was registered. The Respondent acquired from RAA the goodwill in the business relating to vehicle-related services using the trade mark and trade name Racetech. There were thus no operational changes. The change was merely cosmetic, with the same business being registered under the Respondent’s name now, and the business reflecting a truncation of ‘Racetech Auto Accessories’ in the new name ‘Racetech Auto’.

7 During the period 1988 to 1998 when RAA was in business, it used ‘Racetech’ as its trade name and “RACETECH” then unregistered as a trade mark, to provide vehicle-related services. According to the Respondent, she had been advised by her solicitors to strengthen her claim of infringement and passing off of the Trade Mark by registering it, as the Respondent had by then discovered the Appellant’s use of ‘RACETECH/Racetech’ in its services.

8 The Appellant is presently a subsidiary under the Fong Kim Group of Companies. On 1^st October 1978, Fong Kim Exhaust System (“Fong Kim”) was incorporated, and was engaged in the business of vehicle-related services, including the repair, maintenance, modification and performance enhancement of vehicles. In short, it provided similar, if not identical, services as the Respondent.

9 In 2002, Fong Kim was converted into a private limited company (“Fong Kim Pte Ltd”). In 2004, the then Managing Director of Fong Kim Pte Ltd, one Tan Kim Hui also known as Ricky Tan (“Ricky Tan”), decided to set up Racing Technology Pte Ltd, the Appellant in this appeal. The Appellant was incorporated on 2^nd May 2006 and its logo comprises the words “RACE TECH” (“the Logo”) in a typeface similar, at least to an untrained eye, to that of the Respondent’s “RACETECH”. The Appellant did not register its Logo as a trade mark.

10 Before the Respondent commenced the application for summary judgment, it had through its lawyers from CK Teo & Co., sent two letters dated 5th December 2007 and 18th December 2007 respectively, requesting the Appellant to desist from using the Logo as a trade name or mark for its business. However, the Appellant only replied through its lawyers that it hoped the Respondent would “hold hands in the interim”. Another letter was sent by the Respondent’s new solicitors, Infinitus Corporation, dated 26 March 2008, where it informed the Appellant that it would commence legal action if the Appellant did not agree to the Respondent’s demands by close of business on 2 April 2008. The Appellant’s solicitors, Kertar & Co., then replied in a letter dated 2 April 2008 that it was taking instructions from its client and would “revert soonest” and to “please hold hands in the interim”. The Respondent’s rejoinder through its solicitors was that “we are prepared to hold our hands only until close of business Wednesday, 9 April 2008.” It appears that the Appellants thereafter neglected to give a substantive reply to the Respondent’s concerns and pursuant to their previous correspondence, the Respondent commenced Suit No 422/2008/J for infringement and passing off of the Trade Mark as reflected in a letter dated 19 June 2008.

Hearing before the AR

Submissions of the Plaintiff (Respondent)

11 In its written submissions, the Respondent alleged that the Appellant had infringed its Trade Mark by dint of the Appellant’s advertising in motoring magazines, through use of its signage and the trade name/Logo, “Racetech”/ “RACE TECH”, and by rendering services under the trade name/Logo without the Respondent’s consent. The Respondent also alleged infringement in the Appellant’s website address www.racetech.com.sg (the “domain name”) and email address, sales@racetech.com.sg. The Respondent’s email address is racetech@singnet.com.sg. It was the Respondent’s assertion that the Appellant’s acts of rendering services, amongst other things, under the trade name/Logo without the Respondent’s consent was likely to confuse the public given that the services rendered by the Appellant were similar to the registered services of the Respondent and therefore, the Appellant had infringed the latter’s Trade Mark and flouted section 27(2) of the Trade Marks Act (Cap. 332, 2005 Rev Ed) (the “TMA”).

12 Additionally, the Respondent also alleged passing off of its Trade Mark and trade name by dint of the Appellant’s use of the trade name “Racetech” in its corporate signage and domain name.

13 The Respondent claimed that having acquired valuable goodwill in the business of provision of vehicle-related services under the Trade Mark “RACETECH” and substantial reputation in it, it had sustained losses and damages through the Appellant’s infringement of its Trade Mark and passing off of its trade name and Trade Mark. Consequently, it claimed inter alia, an injunction restraining the Appellant (and its relevant personnel) from invoking the use of a trade mark identical with or similar to the Trade Mark and an inquiry into damages occasioned to the Respondent.

Submissions of the Defendant (Appellant)

14 In the interests of economy and coherence, only the arguments which directly pertain to the Respondent’s allegations and are hence relevant to the Appellant’s defence are enumerated here. The three main planks of the Appellant’s arguments were that (i) its “RACE TECH” Logo is dissimilar to the Respondent’s “RACETECH”, drawing a distinction between the typeface, colours, lettering and spacing of the letters in the respective marks; (ii) the Respondent had actually copied the Appellant’s Logo and registered the Trade Mark in bad faith and/or the Trade Mark is devoid of any distinctive character and is hence invalid; and (iii) the Appellant had the consent of the Respondent to continue the use of the trade name/Logo RACETECH/Racetech.

15 In claiming for damages and losses, the Appellant alleged that it had acquired goodwill and reputation in the trade name “RACE TECH” and that there was publicity of its Logo before the Respondent registered the Trade Mark on 20 October 2006. Further, it alleged that RAA had never been in the business of vehicle-related services and hence the Respondent could never have acquired any goodwill when the business was registered as ‘Racetech Auto’. The Appellant counterclaimed against the Respondent, inter alia, for revocation of the Trade Mark under s 22 TMA; a declaration of invalidity under s 23 TMA and passing off of its distinctive trade name of “RACE TECH”.

The AR’s decision

16 The AR’s findings were three-fold:

(i) that the Appellant’s logo was “identical to the [Respondent’s]” and that “[e]ven if not identical, the sign [was] clearly similar such that there exists likelihood of confusion.”;

(ii) the Appellant could not avail itself of a s 28 TMA defence for even if the Appellant had used the mark before the Respondent’s registration of the Trade Mark, the Respondent’s prior use dating back to 1988 (when RAA was in business) would defeat the Appellant’s s 28 defence; and

(iii) the alleged consent from the Respondent to the Appellant in using the RACETECH mark was “only a bare allegation from the [Appellant’s] employee with no details or documentary support at all”.

In finding that the Appellant had raised no triable issue, the AR found that summary judgment was warranted and that there had indeed been infringement and passing off of the Trade Mark.

17 It is worth mentioning at this stage that before the AR, the Appellant had “concede[d]” that the s 28(2) defence was not available to it. In view of this, I do not think it productive to address this argument in full since it has plainly been disposed of before the AR and by the Appellant’s counsel no less. Suffice to say, s 28(2) which provides that use of an infringing trade mark prior to the registration of the infringed trade mark is a defence, cannot apply to the facts of this case.

18 Dissatisfied with the AR’s decision, the...