Intuition Publishing Ltd v Intuition Consulting Pte Ltd

• Jurisdiction: Singapore
• Judge: Judith Prakash J
• Judgment Date: 25 July 2012
• Neutral Citation: [2012] SGHC 149
• Court: High Court (Singapore)
• Hearing Date: 16 November 2011,17 November 2011,15 November 2011,21 November 2011,13 January 2012
• Docket Number: Suit No 545 of 2010
• Plaintiff Counsel: Max Ng, David Wu and Kho Shu Yan (Gateway Law Corporation)
• Defendant Counsel: Michael Moey Chin Woon (Moey & Yuen)
• Subject Matter: Trade Marks and Trade Names,Infringement,Passing Off,Revocation
• Published date: 05 September 2012

Judith Prakash J:

The plaintiff is a company incorporated in Ireland. It was previously called Financial Courseware and adopted its present name, Intuition Publishing Limited, on 17 April 1998. The plaintiff is in the business of providing technology-enabled learning services to various industries and has clients in the financial services industry, the medical/life sciences industry and in the public sector. It has a subsidiary in Singapore, Intuition Publishing Pte Ltd, which is in the same business.

The plaintiff is the registered proprietor of the following trade marks in Singapore:

Date	Registration Number	Mark	Class	Specification
28 June 1986	T8602731D	INTUITION (“Mark A”)	16	Tapes and cards, none being magnetic; paper; all for the recordal of computer programmes; computer manuals (handbooks) and printed matter; but not including computer manuals or printed matter relating to computer games
30 June 1986	T8602732B	INTUITION (“Mark B”)	9	Computers; electronic data input and output apparatus for use with computers; computer programmes; disc tapes and wires, all being magnetic and for the storage of computer programmes; electronic apparatus for the transmission of data; but not including computer games or goods for use with computer games.
14 Sept 1998	T9809317A	(“Mark C”)	41	Educational and training courses; production of software, video tapes and compact discs used in training and education; publication of educational text and manuals; provision (rental) of electronically viewable training, educational and reference materials in the field of financial services.
14 Sept 1998	T9809318Z	(“Mark D”)	16	Computer manuals and printed matter; books and publications; training, educational and reference books, booklets, instructional materials and newsletters relating to the field of financial services.
14 Sept 1998	T9809319H	(“Mark E”)	9	Computer software, computer programs; computers; electronic data input and output apparatus for use with computers; electronic apparatus for transmission of data; compact discs; instructional and teaching apparatus and instruments; audio and visual tapes, cassettes and discs; pre-recorded computer software used for training, education and reference purposes in the field of financial services.

For ease of reference, the plaintiff’s trademarks will be collectively referred to as the “Marks”. Further, because Marks A and B are identical and consist of the word “INTUITION”, where convenient, these two Marks will be collectively referred to as the “word Marks”. Marks C, D, and E are identical and consist of the word “INTUITION” and a device placed above the word. They will collectively be referred to as the “word plus device Marks”. The plaintiff’s device consists of a globular shape (it looks rather like a light bulb lying on its side) with swirling lines around it.

The defendant is a company which was incorporated in Singapore on 13 November 1999. Its business is to provide bespoke, or customised, consultancy training services to multinational companies in the information technology (“IT”) business. The defendant said it does not sell its products to the public at large, and only offers its services to customers who directly approach it with a brief.

The plaintiff’s complaint in this action is that the defendant has used the following signs which it says infringes the Marks: “intuition” (“Sign A”) “INTUITION” (“Sign B”) “intuition consulting” (“Sign C”) “INTUITION CONSULTING” (“Sign D”) “Intuition Consulting Pte Ltd” (“Sign E”) (“Sign F”) (“Sign G”) The defendant’s signs will be collectively referred to as the “Signs”. The defendant’s device is a stylised drawing of a head and the defendant’s witnesses referred to it affectionately as the “Crazy Wayne” logo.

The defendant’s assertion was that it used Signs A to D until about 2004 and thereafter ceased using them. As for Signs E to G, it commenced using them on various dates after 2001 and now uses all these Signs in the course of its business, either individually or in various combinations.

The plaintiff’s claim against the defendant has been brought under ss 27(1), 27(2), 27(3) of the Trade Marks Act (Cap 332, 2000 Rev Ed) (“the Act”). The plaintiff also has a claim in passing off. The defendant has denied that these claims have any legal basis. The defendant also seeks to rely on the defence afforded by s 28(1)(a)(i) of the Act, and has made a counterclaim for revocation of the Marks on the basis of non-use for a consecutive period of five years or more.

Background

On 23 May 2007, Mr Simon Banks (“Mr Banks”), the Executive Vice President of the plaintiff, had a telephone conversation with the defendant’s Chief Operating Office, Mr Robert Plant (“Mr Plant”). According to Mr Banks he had explained to Mr Plant the extent of the plaintiff’s rights to the Marks, but the response was that the defendant did not provide identical products and/or services since the defendant did not deal with pre-prepared courses. Mr Plant told Mr Banks that the plaintiff and the defendant were in completely different industries.

The plaintiff said that it subsequently discovered that the defendant had been offering similar, if not identical, goods and/or services as those provided by the plaintiff even before May 2007. This prompted the plaintiff to instruct its Irish solicitors to send a cease and desist letter to the defendant on 8 August 2008, demanding that the defendant immediately cease its use of the “INTUITION” mark and transfer the domain name to the plaintiff. This was followed by a second letter when there was no response from the defendant. It was only the third cease and desist letter sent on 26 November 2008 by the plaintiff’s Singapore lawyers that provoked a response. On 22 December 2008, the defendant refused to accede to the plaintiff’s demands.

The plaintiff’s Singapore lawyers subsequently sent another letter to the defendant’s solicitors. The defendant once again rejected the plaintiff’s demands, prompting the plaintiff to commence the present action some time later.

The plaintiff’s evidence was that when it was established in 1985, it supplied computer-based education and training to persons working in the financial markets. Since then it has grown to become a leading provider of technology-enabled learning to a broad range of industries including financial services, medicine and life science and to the government and public sector. The plaintiff says that it is a leading developer of “eLearning” content – both custom and off-the-shelf products. It designs and delivers learning programs that align training investments with business results. All the plaintiff’s courses may be delivered via the internet, through corporate intranets or via CD-Roms. It provides products and services that enable its clients to author, manage and deploy a range of learning activities including eLearning, mobile learning and instructor-led events.

The defendant emphasised that it does not market its services to the general public. It named Hewlett-Packard, Cisco Systems and Nokia as providing 80% of its business while another 18% comes from Microsoft, Intel and Google. The remaining two percent is from other multinational IT companies. The services provided by the defendant to its customers are channel and sales programs; design services (that is putting content together for training purposes); product sales training; business acumen training; consulting services; and materials used in relation to the foregoing. The defendant said that it only provides bespoke services and products. There are no “ready-made”, off-the-shelf, products that a customer can buy online. The defendant designs courses to meet each client’s specific requirements and prepares specific course materials for each course in coordination with the client concerned.

Pleadings

The plaintiff’s Statement of Claim (Amendment No. 1) contains the following particulars of infringement in relation to the Marks: a. The Defendant has since 1999 provided bespoke consulting and training services under the INTUITION Sign. In particular, the Plaintiff relies on the fact that these services have been offered by the Defendant on its website, namely www.intuition.com.sg (the “Defendant’s Website”), since 2000. b. According to the Defendant’s Website, the Defendant provides consulting services on: “channel profitability”; “business strategy design”; “route-to-market planning”; “partner advisory boards”; “services strategy”; and “sales deployment”. The Defendant claims that these consulting services are aimed at helping its customers implement effective channel strategies, build partner loyalty and develop sales force effectiveness. c. According to the Defendant’s Website, the Defendant provides business acumen training on: “training”; “instructional design”; “channel, sales, finance and business management programs”; “content research and development”; “blended learning frameworks”; “traditional and web 2.0 deployment”; and “post-training monitoring and ROI modeling”. In particular, the Plaintiff relies on the fact that the Defendant offers training courses on: channel finance; business finance; financial management; organisational strategy; strategic thinking; business strategy planning; profit-driven sales techniques; profit sales strategy; building a business profit strategy; and retail management. The Defendant claims that its business acumen training provides blended learning solutions based on best practices in high-tech channels and sales. d. According to the Defendant’s Website, the Defendant provides product sales training on: “sales process alignment”; “product sales enablement”; “training content creation”; “sales message simplification”; “presentation design”; and...