Doctor's Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE)

• Jurisdiction: Singapore
• Court: High Court (Singapore)
• Judge: Judith Prakash J
• Judgment Date: 18 April 2012
• Neutral Citation: [2012] SGHC 84
• Citation: [2012] SGHC 84
• Docket Number: Originating Summons No 462 of 2010
• Date: 18 April 2012
• Subject Matter: Goodwill,Infringement,Passing Off,Defence of prior use,Well known marks,Tort,Trademarks
• Published date: 27 April 2012
• Plaintiff Counsel: Max Ng and David Wu (Gateway Law Corporation)
• Hearing Date: 04 October 2011,27 October 2011,05 October 2011
• Defendant Counsel: Engelin Teh SC and Thomas Sim (Engeline Teh Practice LLC)

Judith Prakash J: Introduction

This action was commenced by Doctor’s Associates Inc (“the plaintiff”) against Lim Eng Wah (“the defendant”) for trademark infringement under the Trade Marks Act (Cap 332, 2000 Rev Ed) (the “Act”) and passing off of the former’s registered “SUBWAY” trademarks through the latter’s use of the “SUBWAY niche” sign.

Parties to the dispute

The plaintiff is an American corporation with its head office in Florida and owns and operates the franchise for the popular sandwich chain named “SUBWAY”. Through a series of license agreements, the plaintiff licensed a Netherlands company named Subway International B.V. to act as the franchisor of SUBWAY in countries outside the United States. The plaintiff opened its first Italian sandwich or “submarine” sandwich store in 1965 in the United States under the name “Pete’s Super Submarine” and in 1967 amended its name to “SUBWAY”. The first franchised SUBWAY outlet opened in Connecticut in 1974. The first SUBWAY outlet in Singapore opened in 1996. At present, there are 34,891 stores in 98 countries which operate under the SUBWAY mark; in particular, there are 92 SUBWAY outlets in Singapore. Each SUBWAY outlet sells, inter alia, sandwiches under the trade name “SUBWAY”; the primary offerings are foot-long and 6-inch long sandwiches made on freshly baked bread rolls with a choice of fillings.

The plaintiff is the registered proprietor of the “SUBWAY” word mark (“the SUBWAY mark”) in relation to the following classes in Singapore:

Date registered	Class	TM Reg No	Specification
25 May 1989	30	T8903282C	Bread rolls and sandwiches
25 May 1989	32	T8903283A	Non-alcoholic beverages
18 Sep 1995	42	T9508869Z	Restaurant services
3 Sep 2004	29	T0511828D	Garden salads, vegetable and meat salads; milk-based beverages consisting primarily of milk and fruit; potato chips; combination meals consisting primarily of vegetable and meat salads, a soft snack and a soft drink for consumption on and off the premises
3 Sept 2004	30	T0511829B	Sandwiches and wrap sandwiches; baked foods for consumption on or off the premises; snacks namely pretzels, corn chips, tortilla chips, puffed corn curls, popped corn, cakes, pastries, cookies; dressings for salads, sandwiches and wraps, namely, salad dressing used on salads, sandwiches and wraps; combination meals consisting primarily of a sandwich, a snack and a soft drink for consumption on or off the premises
3 Sept 2004	32	T0511830F	Soft drinks, fruit-based, beverage consisting primarily of fruit and crushed ice and fruit juice drinks containing water all for consumption on or off the premises
3 Sept 2004	43	T0511831D	Restaurant services, sandwich shop services; catering services; take-out food services.

The infringement complained of is in relation to the SUBWAY marks registered under classes 30 (T8903282C) and 30 (T0511829B) viz the defendant’s sale of sandwiches, and class 43 (T0511831D) viz the defendant’s operation of a SUBWAY niche cafe. The mark commonly used by the plaintiff in trade is a stylised version of the SUBWAY word mark, reproduced below:

The defendant operates a chain of stalls in Singapore under the name “Subway niche” which sell nonya kueh, bubble tea and other local snacks. The defendant first applied the alleged offending “SUBWAY NICHE” sign in relation to the sale of local snacks in 1987 at an outlet in Wisma Atria. The first Subway niche outlet opened in Singapore two years before the defendant registered its first two SUBWAY marks and nine years before the first SUBWAY outlet opened in Singapore. As at 15 December 2009, there were eight Subway niche outlets in Singapore – one of which was a restaurant-style cafe with seating facilities.

Background to the dispute

The defendant applied two versions of the Subway niche sign to the sale of its goods: first, the word mark “SUBWAY NICHE” (in various stylised forms) and second, a circular mark featuring the phrase “Subway niche”. The offending marks are reproduced below for convenience:

On 29 October 2007, the plaintiff sent the defendant a “cease and desist” letter which alleged that the defendant’s use of the offending mark constituted infringement of the plaintiff’s rights. In response, the defendant rejected the plaintiff’s demands and denied having infringed the plaintiff’s trade mark rights. The plaintiff began legal proceedings on 17 October 2008 but this action was struck off on 14 September 2009 due to the plaintiff’s failure to comply with an unless order to furnish S$19,000 as security for the defendant’s costs.

The present action was started on 12 May 2010. By the originating summons filed herein, the plaintiff asked for the following reliefs: a declaration that the SUBWAY mark is well known in Singapore (in line with the Act); a declaration that the continuing use of the offending mark amounts to an infringement of the SUBWAY mark in Singapore; further or in the alternative, a declaration that the plaintiff is entitled to restrain by injunction the use of the offending mark in Singapore (in the course of trade and without the plaintiff’s consent) in relation to any goods or services; a declaration that the plaintiff is entitled to restrain by injunction the use of the offending mark in Singapore (in the course of trade and without the plaintiff’s consent) in relation to an identical or similar goods or services as those described in the classes under which the SUBWAY mark is registered; a declaration that the plaintiff is entitled to restrain by injunction the use in Singapore, in the course of trade and without the plaintiff’s consent, the mark “SUBWAY NICHE” which incorporates or employs the SUBWAY mark; an injunction to restrain the defendant, whether by himself, his officers, servants agents, or any of them from continuing to use the offending mark in trade, whether as a business identifier or a trade sign, and thereby infringing the SUBWAY mark; further or in the alternative; an injunction to restrain the defendant whether by himself, his officers, servants agents, or any of them from using and / or extending the use of the offending mark to goods or services for which the plaintiffs are well known, in particular to “sandwiches, wrap sandwiches, bread rolls, salads and salad dressing for salads, sandwiches and wraps” and; an order that the defendant whether by himself, his officers, servants agents, or any of them be restrained from passing off by advertising, marketing, selling or otherwise distributing goods and services by reference to the use of the word “SUBWAY” when such goods or services of the defendant are not actually associated or connected to the plaintiff; delivery up of all infringing material; damages.

The defendant resisted the proceedings and several affidavits were filed by both sides. Thereafter, an application was made by the plaintiff to cross-examine the defendant and his employees, Mdm Chen Kim Eng (“Mdm Chen”) and Mdm Ong Fei Yan (“Mdm Ong”) on issues of fact that were raised in the defendant’s fifth affidavit and Mdms Ong and Chen’s respective affidavits. This application was granted by the Assistant Registrar. Although there was some very minor dispute about the scope of the cross-examination, essentially, it centred on one issue of fact: when the defendant began selling sandwiches under the SUBWAY NICHE mark. It is the plaintiff’s case that the defendant only started selling sandwiches in 2001 (ie after the plaintiff registered its SUBWAY marks). However, the defendant and his two witnesses disputed this in their affidavits and subsequently when cross-examined - they maintained that the defendant has been continuously selling sandwiches since 1987.

The plaintiff founds its claim for trademark infringement under s 27(2)(b) and s 27(3) of the Act. It also avers that the defendant is liable under the tort of passing off. The defendant’s position is that the requirements mandated by ss 27(2)(b) and 27(3) have not been made out. Further, he asserts that he has a complete defence under s 28(2) of the Act. As for the tort of passing off, the defendant avers that this has not been made out and in any case he has a positive defence of antecedent/concurrent user. The defendant also contends that the plaintiff is estopped from receiving the relief sought or any relief at all by reason of either the doctrine of laches or estoppel by acquiescence.

Issues before this Court

There are three issues that fall for consideration: Was there infringement under s 27(2)(b) of the Act? Was there infringement under s 27(3) of the Act (read with s 55)? Is the defendant liable under the tort of passing off?

Analysis Issue 1: Infringement under s 27(2)(b) of the Act The applicable law

Section s 27(2)(b) of the Act provides:

Acts amounting to infringement of registered trade mark

27. —(1)

...

(2) A person infringes a registered trade mark if without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because —

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(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public.

Following The Polo/Lauren Co. LP v Shop in Department Store Pte Ltd [2006] (“Polo”) 2 SLR at [7]-[8] per Chao JA, the three-step approach enunciated by the House of Lords in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”) is to be used to determine whether the requirements of s 27 (2)(b) have been met. In short, infringement will be found if the following are present (Polo at [8] per Chao Hick Tin JA):

First, the alleged offending sign must be shown to be similar to the...