TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another

• Court: High Court Appellate Division (Singapore)
• Judge: Belinda Ang Saw Ean JAD
• Judgment Date: 18 February 2022
• Neutral Citation: [2022] SGHC(A) 4
• Citation: [2022] SGHC(A) 4
• Docket Number: Civil Appeal No 80 of 2021
• Published date: 23 February 2022
• Plaintiff Counsel: Lim Jun Hao Alvin and Tay Wei Wen Zachary (Withers KhattarWong LLP)
• Defendant Counsel: Pang Sze Ray Melvin, Ong Eu Jin and Hoh Zi Quan Marcus (Amica Law LLC)
• Subject Matter: Intellectual Property,Trade marks and trade names,Infringement,Invalidity,Defences,Passing off
• Hearing Date: 04 February 2022

See Kee Oon J (delivering the grounds of decision of the court):

This appeal arose from the appellants’ claims in Suit 723 of 2020 for trade mark infringement and passing off, and a declaration of invalidity of the respondents’ two registered trade marks. The dispute centred on the common use of the name “Luke’s” for the parties’ respective dining establishments, which are known as “Luke’s Oyster Bar & Chop House” and “Luke’s Lobster” respectively.

The trial judge (the “Judge”) dismissed the claim, setting out detailed reasons in his written judgment (the “Judgment”): see TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163. He found no trade mark infringement or passing off. Consequently, the claim for invalidity of the two trade marks failed. The Judge thus did not grant an injunction to prohibit the continued use of the trade marks. The Judge found that the respondents could also rely on the “own name” and the “registered mark” defences under ss 28(1)(a) and 28(3) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (the “TMA”) respectively.

In their appeal, the appellants largely repeated their main arguments below. The appellants sought to re-emphasise their arguments as to the distinctiveness of their “Luke’s” brand. They essentially asserted that as they had become known as “Luke’s” to their customers, there was acquired distinctiveness in the name “Luke’s”. In short, “Luke’s” simpliciter was distinctive of their business through use.

Trade mark infringement

In considering the similarity of the marks, the settled law is that the comparison is done “mark-for-mark without consideration of any external matter”: see Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825 at [105] and Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell”) at [20]. We accepted the Judge’s application of the law and his reasons as stated in the Judgment (at [27]–[63]) that the appellants’ arguments on distinctiveness and similarity are not persuasive. When each of the respective marks were viewed as a whole, the competing marks are clearly differentiated in the visual, aural and conceptual sense. The relevant visual comparisons can be found in the Judgment and we need not reproduce them here.

In our view, the major flaw with the appellants’ arguments on distinctiveness, as the Judge rightly noted (at [28] and [43] of the Judgment), was that the appellants’ registered trade mark is not “Luke’s”. Their trade mark comprises nine words: “Luke’s Oyster Bar Chop House Travis Masiero Restaurant Group”. Moreover, they did not use their registered nine-word trade mark exclusively but had also used an unregistered seven-word logo (omitting the words “Restaurant Group”). On the evidence of the appellants’ own witness Mr Gregory Ian Coops, the logo was what was “most commonly in use”¹ and their restaurants “would not be known by the general population” but only “a very, very narrow audience”.²

In oral submissions before us, the appellants placed considerable reliance on the principle of acquired distinctiveness. This was premised on their branding purportedly having arisen from being known as “Luke’s” simpliciter. In our view, this argument was misplaced. Even if “Luke’s” may have been a convenient shorthand reference, “Luke’s” simpliciter was never used by the appellants in a standalone fashion on their business cards, Internet website or social media.³ We acknowledged that there are instances where “Luke’s” simpliciter was used on the shopfront to the appellants’ restaurants and the restaurant’s cutlery.⁴ However, this use was inconsistent as their restaurant windows used the composite nine-word mark.⁵ This inconsistency also applied to the appellants’ use of their unregistered logo in various forms. The various instances of inconsistent usage thus compromised the appellants’ trade mark infringement claim. Put differently, the appellants’ argument on acquired distinctiveness leveraged on usage of their unregistered logo and the restaurant’s cutlery to shore up their case on trade mark infringement. In our view, such an approach was not permissible.

As the Court of Appeal emphasised in Staywell (at [29]), even if distinctiveness is found in any particular dominant component of a mark, this “must ultimately be related back to the impression given by the mark as a whole”. The entire string of words in the appellants’ trade mark and even taking into consideration their unregistered logo, read as a whole, do not perform a purely descriptive function. Taking the mark as a composite, rather than with a sole focus on the word “Luke’s” (notwithstanding that the word is cast in outsized font), these words are what constitute the appellants’ brand. These words therefore also serve to differentiate the appellants’ brand from other establishments bearing a similar name. This was precisely how the Judge went about his analysis, as can be discerned from [43]–[49] of the Judgment.

It is also settled law that commonly used personal names are not particularly distinctive:...