OTO Bodycare Pte Ltd v Hiew Keat Foong

• Jurisdiction: Singapore
• Judge: Tay Yong Kwang J
• Judgment Date: 27 July 2005
• Neutral Citation: [2005] SGHC 133
• Court: High Court (Singapore)
• Year: 2005
• Published date: 28 July 2005
• Plaintiff Counsel: Wong Siew Hong (Infinitus Law Corporation) and Nandakumar Renganathan (T M Hoon and Co)
• Defendant Counsel: Wong Seow Pin (S P Wong and Co)
• Subject Matter: Civil Procedure,Injunctions,Defendant allegedly infringing plaintiff's trade mark and passing off product as plaintiff's,Whether injunction should be granted against defendant,Trade Marks and Trade Names,Infringement,Whether allegedly infringing trade mark similar to plaintiff's trade mark,Whether any likelihood of confusion,Section 27(2) Trade Marks Act (Cap 332, 1999 Rev Ed),Passing off,Elements of passing-off claim,Whether goodwill in plaintiff's name and mark,Whether goodwill in plaintiff's product
• Citation: [2005] SGHC 133

1 This action is in respect of infringement of the “OTO” trademark and of passing off with regard to the defendant’s use of the words “OTC Bodycare” and “Electro-Relaxologist” in connection with an electrical reflexology apparatus which the plaintiff distributes using the name “OTO Electro-Reflexologist”.

The plaintiff’s case

2 According to Yep Gee Kuarn (“Yep”), a director and shareholder of the plaintiff, the plaintiff has been in the business of importing, distributing and marketing fitness, health and body care products since 1993. It is the proprietor of the registered trademark “OTO” which covers, among other things, massage apparatus in Class 10, a category designated for medical and surgical equipment. The word “OTO” (“the plaintiff’s trademark”) is represented in italicised form and set in horizontally striped block letters in a rectangular background (see Annex A). Since 1999, the plaintiff adopted a slightly modified representation of the trademark (see Annex B) in that the word OTO is now in prominent, plain white block text with horizontal stripes on the lower half of the letters, set in a green box. In addition, there is the word “Bodycare”, also in plain white block text set out in smaller type than the word “OTO”, in a red box below the said green box. This new mark is awaiting registration. The central and distinctive theme is the word “OTO” in both instances.

3 In 2002, the plaintiff imported into Singapore an electrical reflexology apparatus which was developed, designed and patented in Korea by a manufacturer there in collaboration with a medical equipment company. This apparatus’ innovative circuitry was patented in 2000. After extensive testing of the apparatus, the plaintiff obtained the rights to market it in Singapore under its own trademark. The plaintiff also coined the term “Electro-Reflexologist” for this apparatus. It was also known as ER839.

4 The apparatus in question did not use rollers like other massage equipment. Instead, it used low-frequency electrical waves to simulate the traditional manual foot reflexology massage by stimulating the body’s muscles and organs through the nerve points on the feet. It was said that this improved blood circulation and promoted health generally.

5 The design of this apparatus featured a sloping rectangular platform angled to the horizontal floor so that the user could rest his feet comfortably on the platform. It had a plain, metallic casing with two rubberised pads on top, shaped like two feet, with each pad divided into seven separate areas. These pads were designed to guide the user intuitively to place his feet on them. The seven separate areas were designed to massage specific areas of the feet with the electrical waves in order to achieve optimal results from the reflexology session. A control panel was built in between the two rubberised pads.

6 The plaintiff asserted that there was goodwill associated with “OTO” and “Electro-Reflexologist”. When it launched the product here in June 2002, it was one of the first electrical reflexology products in the market. Although there were other brands in the market, their designs were dissimilar to that of the plaintiff. The plaintiff advertised extensively and promoted the product through various channels, spending some $1.857m on such advertisement and promotion.

7 The plaintiff had ten exclusive outlets or specialty shops located in various parts of Singapore selling its products. The products were displayed for demonstration in an open concept and the public would be invited to try them out. Trained personnel attended to the prospective customers. One of these outlets was located on the third level of Sim Lim Square at Rochor Canal Road. Road shows were regularly organised at shopping malls in order to have a wider outreach.

8 In the plaintiff’s advertisements, not only was the name “Electro-Reflexologist” emphasised, the picture of the apparatus was also prominently displayed. The product turned out to be very successful. Between June 2002 and April 2004, the plaintiff sold more than 75,000 units of it, earning revenue amounting to some $28m. As a result, the plaintiff claimed that a great deal of public awareness of its product had been generated and the public had come to associate not just “OTO” and “OTO Bodycare” but also “Electro-Reflexologist” and the distinctive shape and get-up of its product with the plaintiff and no one else.

9 The defendant was a sole proprietor trading as Blackgold Asia Pacific which had a place of business at Tong Eng Building at Cecil Street. In early 2004, he was using a shop in Chinatown Point as his warehouse and office. In June 2004, after the plaintiff commenced this action against him, the defendant incorporated a new company known as Infinitus Pleasures Pte Ltd which had its registered office in Aljunied Road.

10 Around December 2003, the plaintiff became aware that the defendant was selling a foot reflexology apparatus known as HL1016, which was identical to or substantially similar in design to the plaintiff’s product, in the atrium of Sim Lim Square. The defendant also rented part of a shop on the second level of Sim Lim Square to sell ink cartridges for inkjet printers. He apparently also had an outlet on the fourth level. Subsequent investigations revealed that the defendant stocked his goods at the Chinatown Point premises and also sold the product from that location.

11 At Sim Lim Square, the defendant displayed a few large colour posters with the words “OTC BODYCARE” with “OTC” in white set in a red box and with horizontal stripes running through the letters (see Annex C). The letters were in a plain, bold typeface such that the letter “C” would appear like the letter “O”. The letters “TM” in white appeared as a superscript to “OTC”. The word “BODYCARE” was also in white set against a green background with the word “JAPAN” in small black type below it. The colour scheme of the defendant’s posters was identical to that of the plaintiff except that colours were interchanged. I shall refer to this logo as “the defendant’s mark”.

12 The flyers distributed by the defendant also had the defendant’s mark at the top and bottom of the page. At the bottom of the page, there were also the words, “Finest Quality Product Brought to you by OTC Bodycare”. There was no entity known as OTC Bodycare. The flyers stated that there was a “Chinese New Year offer” which was valid from 1 January to 21 January 2004.

13 When the plaintiff’s investigators visited the Chinatown Point premises, they saw three posters measuring about 80cm by 60cm depicting the defendant’s mark and the words “SLIMMING BEAUTY & HEALTH” below it. These posters were pasted across the top glass panel of the premises. The plaintiff was of the view that “OTC” and the defendant’s layout were deceptively similar to the plaintiff’s trademark and the new mark such that there was infringement of trademark and passing off.

14 On some of the flyers distributed by the defendant, there was a little sticker which stated, “Visit Our Authorized Agent at the Atrium Of Sim Lim Square”. The plaintiff had a sales outlet on the third level of that commercial building. Adopting the same sales methods used by the plaintiff, the defendant’s products were laid out on the floor in the atrium and prospective customers were invited to try the products. The defendant also used red and blue armchairs which were identical to those used by the plaintiff at its road shows. This, the plaintiff believed, was calculated to create the impression that the defendant was an agent of a larger organisation called OTC Bodycare Japan and that this organisation was related to OTO Bodycare. The tactic employed by the defendant could result in consumers being misled into thinking that he was an agent of the plaintiff. In any event, the geographical source stated in the defendant’s mark was false as the defendant’s disclosed documents revealed that his goods originated from China and not Japan. The statement in the defendant’s flyers, “90,000 units sold in Japan during first month of launch”, was also false as the product had not been marketed in Japan. It was also untrue, as claimed in the flyers, that the defendant’s product was patented.

15 The defendant’s product was named “Electro-Relaxologist”, a word visually and phonetically similar to the plaintiff’s “Electro-Reflexologist”. Its design was virtually identical to that of the plaintiff’s product in its physical dimensions, its rectangular shape, its sloping platform, the metallic casing, the rubberised footpads and the operation panel between the two footpads. The name and design were therefore copies of the plaintiff’s product.

16 The packaging of the defendant’s product resembled that of the plaintiff’s. The name of the defendant’s product was placed at the top right hand corner of the box, just like the plaintiff’s. On the front and back panels of the defendant’s packaging, there was a picture of an attractive young Caucasian woman placed just as in the plaintiff’s packaging, although a different model was used and a different seating posture was adopted. The model on the plaintiff’s box was dressed in a bathrobe while the model on the defendant’s box was in street clothes. Immediately under the text box of the plaintiff’s packaging, there were three lines describing the product’s virtues. These were copied by the defendant and three more lines were added by him.

17 On one of the side panels of the plaintiff’s box, there was a text box with descriptive words of the plaintiff’s product. The defendant copied the words but replaced “Reflex” with “Relax” indiscriminately, thereby rendering the sentences in his boxes meaningless. On the other side panel, there was a graphic of the human feet. This was again copied by the defendant with the substitution of the words mentioned earlier. In fact, at two points, the word “Reflex” was apparently overlooked...