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

• Judge: Lai Kew Chai J
• Judgment Date: 23 September 2005
• Neutral Citation: [2005] SGHC 175
• Citation: [2005] SGHC 175
• Defendant Counsel: Lee Hwee Khiam Anthony and Chen Yi Jing Alvin (Bih Li and Lee)
• Published date: 26 September 2005
• Plaintiff Counsel: Sukumar s/o Karuppiah and Kwong Sze Ken Adrian (Ravindran Associates)
• Date: 23 September 2005
• Docket Number: Suit No 733 of 2004
• Court: High Court (Singapore)
• Subject Matter: Whether goods to which defendant's sign and plaintiff's mark applying similar,Whether defendant's sign similar to plaintiff's trade mark,Whether defendant's sign capturing distinctiveness of plaintiff's trade mark,Infringement,Whether likelihood of confusion should be direct result of similarity between mark and sign and goods applied thereto,Trade Marks and Trade Names,Whether global assessment test should be adopted,Whether factors extraneous to mark can be considered in assessing likelihood of confusion,Section 27(2)(b) Trade Marks Act (Cap 322, 1999 Rev Ed)

23 September 2005

Lai Kew Chai J:

The facts

1 The plaintiff, The Polo/Lauren Company, LP, is a limited partnership existing under the laws of New York and is the registered proprietor in Singapore of the following trade marks in Class 25 of the International Classification of Goods and Services (“ICGS”):

Trade Mark	Registration Number
POLO (word)	T91/00082H &; T99/007713I
POLO BY RALPH LAUREN (word)	T89/05682Z
RALPH LAUREN & polo; player device	T85/04342A
POLO RALPH LAUREN &; polo player device	T85/03624G
LAUREN RALPH LAUREN	T97/12991A
RALPH LAUREN	T98/05061H

2 The defendant, Shop In Department Store Pte Ltd, is a private company incorporated in Singapore. It operates five stores selling men’s and women’s clothing, bags, handbags, shoes, watches and household goods.

3 The circumstances giving rise to this case are as follows. Sometime in January 2004, one of the defendant’s directors, Ang Chin Pong, decided to import from a factory near Xiamen, China, shoes, bags, handbags and clothes bearing the sign “POLO PACIFIC” because, as he claimed in his affidavit, it was a “sporty and fashionable sounding name”. The mark itself is designed such that the height of the individual alphabets of the two words taper towards the centre so as to appear “wave-like”. The words are black against a white background or white against a black background.

4 Mr Ang, on returning to Singapore, sought advice from M/s Jing Quee & Chin Joo with the view to registering the mark. An application was filed with the Registry of Trade Marks to register the mark in Classes 18 and 25 (No T0407559Z). Instead of waiting for the mark to be registered, the defendant decided, on advice by its solicitors, to start selling goods bearing the sign. The sign was eventually accepted for publication on 2 December 2004.

5 On 1 February 2005, the plaintiff, though its solicitors, filed a Notice of Opposition with the Registrar of Trade Marks. In the meantime, the plaintiff, through its freelance clerk, purchased several articles of clothing bearing the “POLO PACIFIC” sign from two of the defendant’s shops on or about 27 July 2004 and 21 August 2004.

6 In addition to the present state of affairs, there is some history between the parties. It would appear that the defendant had been found selling counterfeit samples of the plaintiff’s goods sometime in December 2002. The parties settled the matter and the defendant made an undertaking dated 25 April 2003 not to infringe the plaintiff’s trade marks in the future (“the Undertaking”).

The issues

7 Arising from these facts are the two claims brought by the plaintiff against the defendant. The first is that the defendant has infringed the plaintiff’s trade marks pursuant to s 27(2)(b) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“TMA”). The second claim is that the defendant has breached its Undertaking with the plaintiff. The plaintiff is therefore contractually entitled to damages for that breach, an injunction to enforce the terms of the Undertaking and costs on an indemnity basis for this portion of the claim.

8 Because the second claim ultimately depends on whether there is an infringement of the plaintiff’s trade marks, I will consider the infringement issue first.

Infringement under section 27(2)(b) TMA – the applicable law

9 The relevant provision for purposes of this case is s 27(2)(b) of the TMA. It 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 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.

10 It is not disputed that the sign used by the defendant was used in the course of trade and that it was also used without the consent of the plaintiff. As such, I only need to consider whether (a) the defendant’s sign is similar to the plaintiff’s mark; (b) whether the sign was used in relation to goods similar or identical to the mark; and (c) if so, whether there is a likelihood of confusion by reason of the similarity. The question of infringement under s 27 (2)(b) of the TMA is novel in Singapore, and as such, counsel for both parties took the opportunity to present two approaches to the construction of the provision. The test of infringement, however, has been extensively discussed in relation to other sections under the TMA.

11 The plaintiff argued that this court should follow the classic formulation as stated in a string of cases including British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”), Saville Perfumery Ld v June Perfect Ld and F W Woolworth & Co Ld (1941) 58 RPC 147 (“June Perfect”) and Wagamama Ltd v City Centre Restaurants Plc [1995] FSR 713 (“Wagamama”). The legislation considered in those cases are in pari materia with s 27(2)(b) of the TMA. Under this approach, it is necessary to show step-by-step that there is a likelihood of confusion because the marks are similar and the goods for which the mark is used are identical or similar to those covered by the registration. The plaintiff further contended that the test by which confusion is assessed is extremely strict such that the court cannot take into account added matter or circumstances in assessing whether there is a likelihood of confusion in relation to the way the defendant uses its sign.

12 The defendant, predictably, argued for a more global approach, one which has its roots in a European effort to harmonise their trade marks regime. This is seen in the tenth recital in the preamble to the First Directive 89/104/EEC of the Council of European Communities, of 21 December 1998, to Approximate the Laws of the Member States Relating to Trade Marks (OJ EC No L40 of 11.2.1989) (“the Directive”), where it is stated that “it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion” and that an appreciation of the likelihood of confusion depends on numerous elements, in particular, the recognition of the trade mark in the market, any association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods and services identified. This so-called “global assessment test” was endorsed in the leading European Court of Justice (“ECJ”) decision in Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 (“Sabel”) and followed by the English Court of Appeal in The European Limited v The Economist Newspaper Limited [1998] FSR 283 (“The European”).

13 The plaintiff submitted that the global assessment test should not be applied for a few reasons. Firstly, the approach is the result of trade policies and other considerations peculiar to the European Union (“EU”) and they are not an implementation of any particular legal system or tradition. Secondly, to import this approach would require the constant monitoring of European jurisprudence without the benefit of proximity and other considerations reflected in EU law. Thirdly, for a common law jurisdiction making a name for itself, accepting EU law would be a retrograde step. Fourthly, there are problems reconciling the different rights acquired under domestic and European law. Fifthly, there is resistance in the UK to the ECJ’s decision (although this was on a different point in Arsenal Football Club Plc v Reed [2001] RPC 46). Finally, the ECJ decisions do not publish dissents and are a compromise between the judges.

14 I accept the basic proposition that the global assessment test should not apply, but not for the reasons canvassed by the plaintiff. As Singapore globalises and as plaintiffs and defendants themselves operate in many jurisdictions, our local jurisprudence has benefited and can only benefit from examining the jurisprudence of other jurisdictions apart from the English. For example, the Singapore Court of Appeal recently undertook a review of cases from the United States, Australia, Canada and England in another trade marks case in McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177 (“McDonald’s”). While foreign cases may be based on policies that we have yet to take into account, this is no reason to reject them out of hand especially if they are sound in principle. Singapore’s trade marks regime was amended to take into account its international obligations and there is no reason to be blind to the efforts of others in coming to terms with an issue of immense economic importance. If the decisions of foreign jurisdictions are to be rejected (including the English position), it must be because of their incompatibility with our own legislation or their unsuitability to our local circumstances or their inherent insensibility or unsoundness.

15 There are two reasons why I reject the global assessment test. First, the global assessment test is not in pari materia with our legislation and, in fact, confuses the elements of infringement required under s 27(2)(b) of the TMA. It is clear from the plain words of s 27(2)(b) that the likelihood of confusion, if any, must be the direct result of the similarity between the registered mark and the disputed sign and between the goods and services used in relation thereto. The provision does not make it an infringement if the likelihood of confusion is caused by some other factor. Neither does it make similarity merely one among other factors that may be considered. This is obviously sound because the TMA protects the proprietary rights of the owner’s trade mark and nothing else. This conceptual clarity is lost if we adopt the global assessment test which takes as its ultimate test the question of whether there is a likelihood of confusion: see Sabel ([12] supra); The European ([12] supra); Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117 (“Cano...