Hai Tong Company (Pte) Ltd v Ventree Singapore Pte Ltd

• Judgment Date: 15 March 2013
• Date: 15 March 2013
• Docket Number: Civil Appeals Nos 1 and 2 of 2012
• Court: Court of Appeal (Singapore)

Hai Tong Co (Pte) Ltd

Plaintiff

and

Ventree Singapore Pte Ltd and another and another appeal

Defendant

[2013] SGCA 26

Sundaresh Menon CJ

,

Andrew Phang Boon Leong JA

and

V K Rajah JA

Civil Appeals Nos 1 and 2 of 2012

Court of Appeal

Tort—Passing off—Plaintiff was registered proprietor of composite mark comprising words ‘Lady Rose’ and floral device—Composite mark was used on cosmetic products—Defendants imported and sold cosmetic products with sign ‘Rose Lady’—Whether tort of passing off was made out

Trade Marks and Trade Names—Infringement—Plaintiff was registered proprietor of composite mark comprising words ‘Lady Rose’ and floral device—Composite mark was used on cosmetic products—Defendants imported and sold cosmetic products with sign ‘Rose Lady’—Whether infringement under s 27 (2) (b) Trade Marks Act (Cap 332, 2005 Rev Ed) was made out—Section 27 (2) (b) Trade Marks Act (Cap 332, 2005 Rev Ed)

Hai Tong Co (Pte) Ltd (‘Hai Tong’) was the registered proprietor of the

mark (‘the Composite Mark’) and had used it on its range of cosmetics products. Ventree Singapore Pte Ltd (‘Ventree’) was engaged in the business of importing, exporting and distributing, amongst other things, three cosmetics products (‘the allegedly infringing products’) under the brand name ‘Rose Lady’ (‘the Sign’). The Sign was never registered. The allegedly infringing products were sold in peach-coloured packaging printed with the product name, the Sign, and sketches of flowers with five petals in various sizes in the background. Sky (sued as a firm) (‘Sky’) operated a retail department store selling, amongst other things, the allegedly infringing products.

Hai Tong instituted legal proceedings against Ventree and Sky (collectively referred to as ‘the Defendants’), claiming that the Defendants had: (a)infringed the Composite Mark under s 27 (2) (b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (‘the Act’) by importing and offering for sale the allegedly infringing products; and (b)passed off the allegedly infringing products as Hai Tong's goods. The Defendants denied liability and counterclaimed against Hai Tong under s 35 (2) of the Act for groundless threats of trade mark infringement proceedings.

The trial judge (‘the Judge’) allowed Hai Tong's claim for trade mark infringement under s 27 (2) (b) of the Act (and dismissed the Defendants' counterclaim for groundless threats of trade mark infringement proceedings), but dismissed Hai Tong's claim in the tort of passing off. Hai Tong filed Civil Appeal No 1 of 2012 (‘CA 1’) against the Judge's dismissal of its claim in passing off, while the Defendants filed a cross-appeal in Civil Appeal No 2 of2012 (‘CA 2’) against the Judge's decision to allow Hai Tong's claim for trade mark infringement.

Held, dismissing the cross-appeal in CA 2 and allowing the appeal in CA 1:

The decision in CA 2

(1) The Sign was used in the course of trade. When a sign consisted of or incorporated common or generic words that might also describe the product or service in question, it might not be obvious that those words were being used in the course of trade. But the combination of two common words could result in a sign that went beyond merely describing the product in question and serves instead to distinguish it as to its origin. That this was in fact so in this case became even clearer when one of the partners of Sky, in the course of his testimony, conceded that the words ‘Rose Lady’ were used as the name of a particular range of products rather than to describe any of the ingredients in the products. Distinctiveness in the combined use of the two words ‘Rose’ and ‘Lady’ did not have to be acquired through usage, advertising and promotion because at this threshold stage, the court, in considering the allegedly infringing sign, was only concerned with whether or not that sign was being used to distinguish the goods (or services) of a particular trader and not merely to describe or decorate the goods on which it had been applied: at [18] .

(2) It was undisputed that the Sign was used on goods that were identical in nature to those for which the Composite Mark was registered: at [22] .

(3) In the inquiry into distinctiveness, the focus was not on whether the defendant's allegedly infringing sign was being used in the course of trade. Rather, having crossed that threshold, it was relevant to examine the distinctiveness of the plaintiff's registered mark. Distinctiveness connoted the sense that the trade mark was capable of saying something meaningful not about the goods or services in question, but rather, about whence these had come: at [27] and [28] .

(4) In the present case, the juxtaposition of the words ‘Lady’ and ‘Rose’ engendered distinctiveness, in that when used together, the words did not convey a sensible meaning. One does not speak of a ‘lady’ rose. Rather, the juxtaposed words conveyed the sense of a name or an appellation rather than having any meaning, and in that sense, the juxtaposed words were inventive and certainly capable of distinguishing the goods dealt with or provided in the course of trade by Hai Tong from those so dealt with or provided by others. The juxtaposed words were therefore not devoid of distinctive character; and in that light, it really did not fall for consideration whether these words had also or separately acquired distinctiveness through use: at [35] .

(5) The thrust of the inquiry into similarity was directed at assessing substantive similarity. The three aspects of this evaluation, namely, visual, aural and conceptual similarities, aided the court's evaluation by signposting its inquiry. They did not serve as a mechanistic formula of any sort. It followed that the law did not require all three similarities (visual, aural and conceptual) to be made out before the registered mark and the allegedly infringing mark might be found to be similar. Conversely, the fact that any one similarity was made out did not necessarily mandate a finding that the two marks were similar. Nor was each aspect of similarity of equal importance. Rather, the relative importance of each would depend on the circumstances, including the nature of the goods and the types of marks involved: at [40 (a)] .

(6) In assessing the similarity between two contesting marks, the court considered them as a whole, but did not take into account any external added matter or circumstances because the comparison was mark for mark: at [40 (b)] .

(7) In assessing the similarity between two contesting marks, the court assumed the viewpoint of the average consumer who would exercise some care and a measure of good sense in making his or her purchases, not that of an unthinking person in a hurry. The average consumer had imperfect recollection so the two contesting marks were not to be compared side by side and examined in detail for the sake of isolating particular points of difference. Instead, the court would consider the general impression that would likely be left by the essential or dominant features of the marks on the average consumer: at [40 (c)] and [40 (d)] .

(8) In assessing the visual similarity of two composite marks, the correct approach was to consider the marks in totality without placing undue emphasis on any particular component of such marks unless such emphasis was warranted on the facts. Having surveyed the authorities in Sinagpore, the UK, the European Union and Australia, Chai Chyau Ling (doing business as Racetech Auto) v Racing Technology Pte Ltd[2009] SGHC 105 and Lee Cooper Group plc v Levi Strauss & Co [1995] AIPR 457 should not be taken as standing for a general proposition of law that words ‘talk’ in composite trade marks: at [41] and [62] .

(9) The length, structure and letters used in the textual component of the Composite Mark and the Sign were identical. It was possible that even allowing for the imperfect recollection of the average consumer who was not looking at the contesting marks one alongside the other, the mere reversal of the elements comprising the marks and the use of distinct and differentiated fonts or styles might conceivably be enough to displace the similarity between the marks. But, as a matter of common sense and having regard to the overall impressions that were likely to be formed, this would not normally be the case, and on the facts, these differences alone did not displace the visual similarity between the Composite Mark and the Sign. The device component of the Composite Mark, which consisted of a single simple stylised rose, was also relatively insignificant: at [63] to [65] .

(10) Both the Composite Mark and the Sign consisted of exactly the same syllables. The only difference was in their syntax in that they were read in inverted order. However, this did not prevent the Composite Mark and the Sign from being aurally similar: at [69] .

(11) In considering whether there was conceptual similarity, the inquiry was directed at the ideas that lay behind or inform the marks or signs in question. The Composite Mark and the Sign were conceptually similar as both evoked the idea of something floral and feminine: at [70] .

(12) There were at least two specific aspects to the element of confusion. The first was mistaking one mark for another (ie, the relevant segment of the public might not even perceive that there were two distinct marks). The second was where the relevant segment of the public might well perceive that the contesting marks were different, but might yet remain confused as to the origin which each mark signified and might perceive that goods bearing the earlier registered mark and those bearing the later allegedly infringing mark emanated from the same source that had chosen to diversify its range of marks for any of a multitude of marketing or promotional reasons or that the two sets of goods emanated from sources that were economically linked or associated. However, the mere association by...