The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 06 April 2006
• Neutral Citation: [2006] SGCA 14
• Docket Number: Civil Appeal No 67 of 2005
• Date: 06 April 2006
• Year: 2006
• Published date: 19 April 2006
• Plaintiff Counsel: M Ravindran, Sukumar Karuppiah and Adrian Kwong (Ravindran Associates)
• Citation: [2006] SGCA 14
• Defendant Counsel: Anthony Lee Hwee Khiam and Alvin Chen Yi Jing (Bih Li & Lee)
• Court: Court of Appeal (Singapore)
• Subject Matter: Section 27(2)(b) Trade Marks Act (Cap 332, 1999 Rev Ed),Whether respondent's sign similar to appellant's word mark,Appellant alleging respondent's sign infringing appellant's registered word mark,Whether goods to which defendant's sign and plaintiff's mark applying similar,Applicable test for infringement under s 27(2)(b) Trade Marks Act,Infringement,Trade Marks and Trade Names,Whether likelihood of confusion on the part of the public existing

6 April 2006

Chao Hick Tin JA (delivering the judgment of the court):

1 This was an appeal against the decision of Lai Kew Chai J (“Lai J” or “the trial judge”) where he dismissed the action instituted by The Polo/Lauren Company, LP (“the appellant”) against Shop In Department Store Pte Ltd (“the respondent”) for an alleged infringement of the appellant’s trade mark under s 27(2)(b) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“the Act”). We heard the appeal on 21 February 2006 and dismissed it. Our reasons are now set out.

The facts

2 The appellant is an entity constituted under the laws of the State of New York, USA. It is the proprietor of six trade marks registered under the Act under class 25 of the International Classification of Goods and Services (“ICGS”), namely, “POLO” (word mark), “POLO BY RALPH LAUREN” (word mark), “RALPH LAUREN & polo player device”, “POLO RALPH LAUREN & polo player device”, “LAUREN RALPH LAUREN” and “RALPH LAUREN”. The respondent is a private limited company incorporated in Singapore. Unlike the appellant’s goods, which are sold at upmarket boutiques located in prime shopping areas and are accordingly pricey, the respondent operates five suburban stores, selling things such as clothing, bags, handbags, shoes, watches and household stuff at prices affordable to the masses.

3 For the purposes of the action and the appeal, only the word mark “POLO” was in issue. Sometime in early 2004, the respondent imported clothing, handbags and shoes manufactured in China which bore the following sign:

It would be noted that this sign bears a different font, typeface and design. On 7 May 2004 the respondent, after consulting its solicitors, applied to the Registry of Trade Marks to have the sign “POLO PACIFIC” registered under classes 18 and 25 of ICGS which application was, on 2 December 2004, accepted by the Registry for publication. Soon thereafter, the appellant raised opposition to the registration of the sign. That opposition proceeding is pending.

4 In the meantime, the respondent started selling in its stores goods bearing the “POLO PACIFIC” sign. This came to the attention of the appellant who sent agents to obtain evidence of the sales which sales it considered to be in breach of its rights under the trade mark “POLO”. On 6 September 2004, the appellant commenced the present action. We should add that, in the action, besides relying on s 27(2) of the Act, the appellant had also alleged that the respondent had breached an undertaking which it gave to the appellant on 25 April 2003, in relation to an earlier event in 2002 when the respondent was alleged to have infringed the appellant’s trade marks. In the undertaking, the respondent declared that it would not infringe the appellant’s marks in the future.

The approach to section 27(2) of the Act

5 Section 27(2) of the Act reads:

A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because —

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public.

6 For the purposes of the action, para (a) of sub-s (2) was not in issue as it was not alleged that the infringing sign of the respondent was identical to the appellant’s registered mark. It was para (b) of that subsection that the appellant was relying on. The wording of s 27(2)(b) is clear. For it to apply, it must first be shown that the sign of the respondent is similar to that of the appellant’s mark and that they are both used in relation to identical or similar goods or services, and, on account of both these factors, there exists a likelihood of confusion on the part of the public.

7 The trial judge, applying the three-step approach enunciated in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”), held that the sign “POLO PACIFIC” was not similar to “POLO” and that there was no likelihood of confusion on the part of the public. Consequently, he held that the respondent had not infringed the appellant’s mark within the meaning of s 27(2)(b). We should add that the trial judge did not accept the respondent’s argument that the better approach should be the global assessment test enunciated by the European Court of Justice in cases such as Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 and Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117 which focused on the ultimate question whether or not there was a likelihood of confusion. In that test, all the other matters mentioned in s 27(2)(b) would be just factors or circumstances to enable the court to come to the ultimate issue as to confusion.

8 In our opinion, having examined the express wording of s 27(2)(b), the step-by-step approach adopted in British Sugar is conceptually more appropriate and is in line with the structure of the provision. It seems to us that there will be infringement under that provision only if three conditions are present. First, the alleged offending sign must be shown to be similar to the registered mark. Second, both the sign and the mark must be used in relation to similar goods or services. Third, on account of the presence of the first two conditions, there exists a likelihood of confusion on the part of the public. As the judge rightly pointed out, s 27(2)(b) does not make it an infringement if the likelihood of confusion is caused by some other factor. While we can see some link and overlap between the first and the third conditions, it is clear that they are different. The fact that a sign is similar to a registered mark does not automatically mean that there will be a likelihood of confusion on the part of the public. That is a question of fact to be determined by the court, taking into account all the relevant circumstances. Moreover, the question of similarity is really a matter of degree. In a broad sort of sense, the greater the similarity between a mark and a sign, the greater will be the likelihood of confusion. However, if either of the first two conditions is not satisfied there will not be any need to go into the third question of determining whether there exists a likelihood of confusion. Neither does it mean that if the mark and the sign are similar, and they are used on similar goods, that there will ipso facto be confusion in the minds of the public. If that was intended, s 27(2)(b) would have been phrased differently. As presently worded, there is no presumption of confusion once the two aspects of similarity are present. To determine the existence of confusion, the court is entitled to look outside the mark and the sign, as well as the articles, to assess whether there exists a likelihood of confusion: see Kellogg Co v Pacific Food Products Sdn Bhd [1999] 2 SLR 651 and McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177. While these two latter cases related to opposition proceedings under s 15 of the then Trade Marks Act (Cap 332, 1992 Rev Ed), there is no reason why the concept of “likely to cause confusion” under that provision should be any different from the concept of “likelihood of confusion” under the present s 27(2)(b). As we see it, the global assessment test is likely to confound the final issue of confusion with the first two prerequisite conditions. Accordingly, we endorse the British Sugar approach which was adopted by Lai J.

9 Having said that, we do not think that, in practice, the end result will be likely to be any different whether the court is to apply the British Sugar test or the global assessment test. It seems to us that in a given situation, whichever test the court is to apply, the final conclusion is likely to be the same. In other words, if either the first or second condition is not satisfied, applying the global assessment test would not be likely to bring about a different result. Here, we would agree with what Assoc Prof Ng-Loy Wee Loon said in her case note on the judgment below entitled “The Polo Match in Singapore: England vs Europe?, The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd ” soon to be published in the European Intellectual Property Review:

Naturally, because the question of similarity between goods depends on the facts of each case, it is highly likely that this doctrinal difference in the two approaches will not have a material impact in practice. Two tribunals comparing the same two sets of goods may very well come to the same conclusion on the question of similarity between the goods, even though one tribunal is applying the English approach whilst the other tribunal is applying the European approach and has to be less strict on this issue.

Similarity between the mark and the sign

10 We now turn to consider the first question of whether there is similarity between the appellant’s mark and the respondent’s sign. The trial judge was of the opinion that the two are not visually, aurally or conceptually similar although the respondent has used the word “polo” as the first word of its composite sign. He said (at [2005] 4 SLR 816 at [26]–[28]):

The decided cases suggest that there are three aspects to similarity: visual, aural or phonetic, and conceptual. In terms of visual similarity, it is clear that the mark and the sign share one common denominator: the word “POLO”. In cases where there is a common denominator, it is important to look at the differences between the mark and the sign in order to decide whether the challenged sign has been able to distinguish itself sufficiently and substantially … In Samsonite Corp v Montres Rolex SA [1995] AIPR 244 … it was held that just because the registered mark was wholly included in the challenged sign, it...