Motherhood Pte Ltd v Lau Elaine

JurisdictionSingapore
Judgment Date25 November 2013
Date25 November 2013
Docket NumberSuit No 720 of 2012
CourtHigh Court (Singapore)
Motherhood Pte Ltd
Plaintiff
and
Lau Elaine and others
Defendant

Chan Seng Onn J

Suit No 720 of 2012

High Court

Tort—Passing off—Misrepresentation—Parties using same descriptive term in titles of magazines covering similar issues—Whether there was likelihood of confusion

Tort—Passing off—Misrepresentation—Plaintiff using descriptive term as trade mark for decades—Defendant conceding that Plaintiff possessed goodwill—Whether Plaintiff's mark should nonetheless receive lesser degree of protection because of its descriptive nature

Trade Marks and Trade Names—Well-known trade mark—Section 55 (2) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names—Well-known trade mark—Section 55 (3) (a) Trade Marks Act (Cap 332, 2005 Rev Ed)

Motherhood Magazine (‘the Plaintiff's Magazine’) was a monthly print periodical dealing with issues relating to pregnancy, motherhood, parenting and childcare (‘parenting issues’). It had been published in Singapore since 1983 by Eastern Holdings Ltd and/or Eastern Publishing Pte Ltd (collectively, ‘Eastern’). Since the formation of the Plaintiff in 1999, the Plaintiff's Magazine had been published by the Plaintiff and Eastern. The Plaintiff and Eastern also published other associated periodicals on parenting issues and held an annual exhibition in Singapore promoting goods and services relating to parenting issues under the ‘Motherhood’ mark (the ‘Motherhood’ and ‘Motherhood Magazine’ marks will be referred to collectively as ‘the Motherhood Marks’). The intellectual property rights in the business, including the Motherhood Marks, were assigned by Eastern to the Plaintiff on 15 May 2012.

From June 2009 to November 2011, the defendants (‘the Defendants’) published an online periodical relating to parenting issues (‘the Defendants' Magazine’). The Defendants' Magazine was named ‘Today's Motherhood’ (‘the Disputed Mark’). In addition, the Defendants published a one-off special commemorative print issue of the magazine in September 2011 for distribution at a children's enrichment and education fair.

On 28 September 2011, the Plaintiff's solicitors wrote to the Defendants claiming that the Defendants' use of the Disputed Mark constituted an act of passing off and demanded that the Defendants cease using any names that were confusingly similar to the Motherhood Marks. The Defendants strongly denied all allegations of passing off but nonetheless undertook a rebranding exercise in January 2012 in which they changed the name of their magazine to ‘The New Age Parents’. The Defendants informed the Plaintiff of the rebranding exercise on 20 February 2012.

However, the Plaintiff was not satisfied as back issues of the Defendants' Magazine with the cover page bearing the Disputed Mark remained available to the public on the Defendants' website. Although those back issues were completely removed from the Defendants' website by July 2012, the Plaintiff commenced proceedings on 29 August 2012 against the Defendants for passing off and under ss 55 (2) and 55 (3) (a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (‘TMA’).

Held, dismissing the claim:

(1) In order to establish passing off, the Plaintiff had to establish the ‘classical trinity’ of goodwill, misrepresentation and damage: at [11] .

(2) Where goodwill was said to consist in a descriptive mark, the plaintiff had to establish that the descriptive mark had become so well associated with his goods or services such that it did not merely convey to the purchasing public the nature of his good or services but that they originated from him. This requirement was satisfied here given that the Plaintiff had used the Motherhood Marks in Singapore since 1983 and advertised it on various media: at [15] .

(3) It was well established that a descriptive mark would generally receive a lesser degree of protection, such that small differences might be sufficient to enable a defendant to avoid liability. The mere fact that the Motherhood Marks had acquired a secondary meaning through prolonged use did not necessarily imply that they should receive the same level of protection as fancy or inherently distinctive marks, as a mark's descriptive nature was relevant not just for determining whether the plaintiff had goodwill, but also in assessing whether the two marks were confusingly similar for the purpose of establishing misrepresentation. Thus, although it was undisputed that the Plaintiff possessed goodwill with respect to the Motherhood Marks, the court could still take into account the descriptive nature of the marks in determining the level of protection that they should be granted: at [18] , [20] , [21] and [23] .

(4) The Defendants' use of the Disputed Mark was not likely to cause confusion to the relevant public, and the element of misrepresentation was not made out. First, the two marks were sufficiently dissimilar both visually and aurally. Second, the Plaintiff's actual or potential customers comprised individuals who were keen on learning about the best childcare techniques for their children and were not content to simply ‘wing it’ when it came to parenting. Such customers would be more discerning and educated, and would not be easily confused by superficial similarities in the titles of two magazines. Third, magazine consumers in Singapore were accustomed to seeing different magazines on the same topic using the same descriptive term in their titles, and would not be too quick to assume that such magazines had to necessarily originate from the same publisher. Fourth, the evidence did not support the inference that the first defendant had intended to ride on the Plaintiff's goodwill: at [27] , [29] , [31] , [32] and [35] .

(5) The Plaintiff argued that it was likely to suffer damage by both ‘blurring’ and ‘tarnishment’. The Plaintiff could only suffer such damage if the element of misrepresentation was made out; if there was no likelihood of confusion by the relevant public between the two marks, there could be no issue of sales or advertising being mistakenly diverted from the Plaintiff to the Defendants, nor could the Plaintiff's goodwill be tarnished by any deficiencies in the quality of the Defendants' Magazine. Since the Defendants did not commit any misrepresentation, it followed that the damage element was not established: at [36] and [37] .

(6) With respect to the claim under s 55 (2) of the TMA, the key issue was whether the Motherhood Marks and the Disputed Mark were similar and whether there was any likelihood of confusion. This issue had already been discussed in relation to the misrepresentation element for passing off, and for the reasons mentioned, s 55 (2) was not satisfied: at [42] .

(7) Section 55 (3) (a) also required a likelihood of confusion to be shown before an injunction could be obtained thereunder. Since the Defendants' use of the Disputed Mark was not likely to engender confusion, the Plaintiff's claim under s 55 (3) (a) was also dismissed: at [44] .

[Observation: The Defendants' rebranding exercise was completed even before the Plaintiff filed the suit, and there was no reason to believe that the Defendants would revert to the original title if they were not restrained from doing so. Consequently, even if the court had found that the Disputed Mark was similar to the Motherhood Marks and was likely to cause confusion, it would not have been minded to grant the injunctions sought by the Plaintiff, simply because the Defendants had already stopped using the Disputed Mark by the time the action was commenced: at [46] .]

CIR, The v Muller & Co's Margarine Ltd [1901] AC 217 (refd)

Doctor's Associates Inc v Lim Eng Wah [2012] 3 SLR 193 (refd)

Emap National Publications Ltd v Security Publications Ltd [1997] FSR 891 (refd)

Healthy Food Media Ltd v Healthy Options Ltd [2005] NZHC 230 (refd)

Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd [2000] 1 SLR (R) 687; [2000] 2 SLR 766 (folld)

London Lubricants (1920) Ltd's Application to Register a Trade Mark, Re (1925) 42 RPC 264 (folld)

Morgan-Grampian plc v Training Personnel Ltd [1992] FSR 267 (refd)

Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR (R) 216; [2009] 3 SLR 216 (folld)

Ozone Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459 (refd)

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2006] 2 SLR (R) 690; [2006] 2 SLR 690 (refd)

Singapore Professional Golfers' Association, The v Chen Eng Waye [2013] 2 SLR 495 (folld)

Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd [2000] 2 SLR (R) 214; [2000] 3 SLR 145 (refd)

Trade Marks Act (Cap 332, 2005 Rev Ed) ss 55 (2) , 55 (3) (a) (consd) ;ss 2 (1) , 2 (7) , 2 (8) , 2 (9) , 55 (1)

Wun Rizwi and Ow Shi Jack (RHTLaw Taylor Wessing LLP) for the plaintiff

Thomas Sim Yuan Po and Lee Xian Cong (Engelin Teh Practice LLC) for thedefendants.

Chan Seng Onn J

Introduction

1 This was an action by Motherhood Pte Ltd (‘the Plaintiff’) against Lau Elaine, Lim Poh Heng and TNAP Services LLP (‘the Defendants’) for passing off and under ss 55 (2) and 55 (3) (a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (‘TMA’). I reserved judgment after the trial and eventually dismissed the Plaintiff's claim on 3 October 2013. As the Plaintiff has filed an appeal, I now give my full reasons.

The facts

2 Motherhood Magazine (‘the Plaintiff's Magazine’) is a monthly print periodical dealing with issues relating to pregnancy, motherhood, parenting and childcare (‘parenting issues’). It has been published in Singapore since 1983 by Eastern Holdings Ltd and/or Eastern Publishing Pte Ltd (collectively, ‘Eastern’). Since the formation of the Plaintiff in 1999, the Plaintiff's Magazine has been published by the Plaintiff and Eastern. The Plaintiff and Eastern also publish other periodicals associated with the Plaintiff's Magazine on an annual basis under the names ‘Motherhood Baby Plus’, ‘Motherhood Guide to Childcare’ and ‘Motherhood...

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1 books & journal articles
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review No. 2014, December 2014
    • 1 Diciembre 2014
    ...There are three intellectual property cases reported in 2014. Two of them are High Court cases, namely, Motherhood Pte Ltd v Lau Elaine[2014] 1 SLR 1008 and Invenpro (M) Sdn Bhd v JCS Automation Pte Ltd[2014] 2 SLR 1045. They apply well-established principles of trade mark and copyright law......

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