Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc.

• Jurisdiction: Singapore
• Judgment Date: 29 November 2013
• Date: 29 November 2013
• Docket Number: Civil Appeals Nos 147 and 148 of 2012
• Court: Court of Appeal (Singapore)

Staywell Hospitality Group Pty Ltd

Plaintiff

and

Starwood Hotels & Resorts Worldwide, Inc and another and another appeal

Defendant

[2013] SGCA 65

Sundaresh Menon CJ

,

Chao Hick Tin JA

and

VKRajah JA

Civil Appeals Nos 147 and 148 of 2012

Court of Appeal

Trade Marks And Trade Names—Registration criteria—Conflicts with earlier marks—Applicant seeking registration of trade mark in respect of hotel services—Whether there were grounds for opposition under s 8 (2) (b) Trade Marks Act (Cap 332, 2005 Rev Ed) — Section 8 (2) (b) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks And Trade Names—Registration criteria—Conflicts with earlier marks—Applicant seeking registration of trade mark in respect of hotel services—Whether there were grounds for opposition under s 8 (4) (b) (i) Trade Marks Act (Cap 332, 2005 Rev Ed) —Section 8 (4) (b) (i) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks And Trade Names—Registration criteria—Conflicts with earlier marks—Applicant seeking registration of trade mark in respect of hotel services—Whether there were grounds for opposition under s 8 (7) (a) Trade Marks Act (Cap 332, 2005 Rev Ed) — Section 8 (7) (a) Trade Marks Act (Cap 332, 2005 Rev Ed)

Tort—Passing off—Goodwill—Foreign business seeking to establish goodwill in Singapore—Whether pre-trading activity sufficient to establish goodwill—Section 8 (7) (a) Trade Marks Act (Cap 332, 2005 Rev Ed)

Staywell Hospitality Group Pty Ltd (‘Staywell’) applied to register a series of two marks (‘the Applicant Mark’) in Singapore under Classes 35 and 43, which related to advertising and marketing services, and hotel and food and beverage services respectively. Sheraton International, Inc and Starwood Hotels & Resorts Worldwide, Inc (collectively, ‘the Opponents’), which owned the Singapore-registered word mark ST. REGIS (‘the Opponent Mark’) in respect of hotel and food and beverage services, opposed the registration before the Principal Assistant Registrar (‘PAR’) of the Registry of Trade Marks. The Opponents relied on, inter alia, ss 8 (2) (b), 8 (4) (b) (i) and 8 (7) (a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (‘the Act’). The PAR allowed the opposition under ss 8 (2) (b) and 8 (4) (b) (i) of the Act and rejected the opposition under s 8 (7) (a) of the Act. Staywell appealed against the PAR's decision in respect of ss 8 (2) (b) and 8 (4) (b) (i) of the Act, while the Opponents appealed against the rejection of the opposition under s 8 (7) (a) of the Act. The High Court judge (‘the Judge’) allowed Staywell's appeal in relation to ss 8 (2) (b) and 8 (4) (b) (i) of the Act, finding that although the parties' marks were similar and the services in relation to which the marks were used were similar, there was no likelihood of confusion. She dismissed the appeal in relation to s 8 (7) (a) of the Act, finding that there was no goodwill in the Opponent's ST. REGIS Singapore hotel at the date of Staywell's application to register the Applicant Mark.

The Opponents appealed against the whole of the Judge's decision. Staywell cross-appealed against the Judge's finding that the Applicant and Opponent Marks were aurally and conceptually similar.

Held, allowing the appeal in part and dismissing the cross-appeal:

(1) There was no particular or notably low threshold to be crossed when assessing whether competing marks were similar. The three aspects of similarity, viz, visual, aural and conceptual similarity did not invite formulaic consideration, but were to be applied as signposts towards answering the question of whether or not the marks as a whole were similar: at [16] , [17] and [18] .

(2) The assessment of the similarity of marks was to be done mark-for-mark without consideration of external matter. The relative importance of each aspect of marks-similarity, having regard to the nature of the goods and services in relation to which the marks were used, was to be considered at the stage of assessing whether there was a likelihood of confusion (‘the confusion inquiry’): at [20] .

(3) The court was entitled to have special regard to the distinctive or dominant components of a mark, even while assessing the similarity of the two marks each as composite wholes: at [23] .

(4) The Applicant and Opponent marks had a substantial degree of aural similarity and a fair degree of conceptual similarity. On the whole, the marks were similar: at [38] .

(5) Where a good or service in relation to which registration was sought fell within the ambit of a specification in which an incumbent mark had been registered, the goods or services in question were to be regarded prima facie as identical. There was no qualitative difference between the parties' hotel services in this case which would displace their prima facie identity: at [40] , [41] and [42] .

(6) There was a difference between the approach to the confusion inquiry in opposition and infringement proceedings. In the former, the court would have regard to the full range of actual and notional uses of the marks; whereas in the latter, the court would compare the full range of notional fair uses of the incumbent mark against the actual use to which the allegedly infringing mark had been put: at [56] , [60] , [61] and [62] .

(7) Certain factors external to the similarity between the competing marks and the similarity between the competing goods and services (‘extraneous factors’), could be considered by the court conducting the confusion inquiry in both opposition and infringement proceedings. The permissible extraneous factors were those that were intrinsic to the very nature of the goods and services in relation to which the competing marks were used, and which affected the impact that the similarity of the marks and products had on the consumer. Impermissible extraneous factors were those which were created by the trader's differentiating steps: at [95] and [96] .

(8) In opposition proceedings, it would generally not be relevant to consider extraneous factors that related to the actual and particular circumstances and ways in which each competing mark was used on the goods or services in question: at [84] .

(9) The distinct marketing methods adopted by Staywell and the Opponents were not legitimate considerations in the confusion inquiry. The notional fair uses to which the Applicant and Opponent Marks could be put, spanned the spectrum of four to six-star hotel segments. Having regard to the common practice of hotel chains operating differently-branded hotels which were united by a common denominator in their names, it was likely that the use of the common denominator ‘Regis’ in the Applicant and Opponent Marks would create confusion as to the existence of an economic link between the parties' hotels: at [102] and [103] .

(10) The concept of initial interest confusion was not and ought not to be part of Singapore law, for reasons of policy, impracticability and inconsistency with our statutory scheme. Confusion which arose in the initial stages of the purchasing process but was dispelled by the time of purchase did not constitute confusion for the purpose of s 8 (2) of the Act: at [113] to [116] .

(11) The relevant damage under s 8 (4) (b) (i) of the Act, to the interests of a proprietor of a well-known trade mark, had to be something other than the perception of a confusing connection between the competing marks: at [122] .

(12) Where the field of trade in which the defendant in infringement proceedings or the applicant for registration operated was in close proximity to or was a natural extension of that of the well-known trade mark proprietor's business, damage under s 8 (4) (b) (i) of the Act in the form of a restriction of business expansion opportunities would generally be inferred. The markets in which the Opponents and Staywell operated were proximate, giving rise to a likelihood that the Opponents' business expansion opportunities would be prejudiced: at [125] , [126] and [127] .

(13) Goodwill under the law of passing off could be generated by pre-trading activity which unequivocally evinced the trader's intention to enter the Singapore market, and which was sufficient to generate an attractive force which would bring in custom when the business in Singapore eventually materialised. The evidence of advertising activity adduced by the Opponents was insufficient to warrant a finding that there was an attractive force that would bring custom to the ST. REGIS Singapore as at the date Staywell applied to register the Applicant Mark: at [142] , [145] , [147] and [148] .

32 Red plc v WHG (International) Ltd [2012] RPC 19 (refd)

Advanced Perimeter Systems Ltd v Keycorp Ltd [2012] RPC 14 (refd)

Alain Bernadin et Compagnie v Pavilion Properties Ltd [1967] FSR 341 (refd)

Amway Corp v Eurway International Ltd [1974] RPC 82 (refd)

Anheuser-Busch Inc v Budejovicky Budvar NP [1984] FSR 413 (refd)

Athletes Foot Marketing Associates Inc, The v Cobra Sports Ltd [1980] RPC 343 (refd)

Berlei (UK) Ltd v Bali Brassiere Co Inc [1969] 1 WLR 1306 (refd)

Bongrain SA's Trade Mark Application (No 2134604) [2003] EWHC 531 (Ch) (refd)

BP Amoco plc v John Kelly Ltd [2002] FSR 5 (refd)

British Broadcasting Corp v Talbot Motor Co Ltd [1981] FSR 228 (refd)

British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (refd)

Brookfield Communications, Inc v West Coast Entertainment Corp 174 F 3 d 1036 (9th Cir, 1999) (not folld)

BUD and BUDWEISER BUDBRÄU Trade Marks [2003] RPC 25 (refd)

Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117 (refd)

CDLHotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR (R) 975; [1998] 2 SLR 550 (refd)

Checkpoint Systems, Inc v Check Point Software Technologies, Inc 269 F 3 d 270 (3 d Cir, 2001) (refd)

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

City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 (not folld)

Compass Publishing BV v Compass...