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Singapore – An Analysis of Recent Discussions of the High Court on Trademark Infringement and Passing Off

The Singapore High Court had to contend with a tsunami of trademark cases in the first half of 2012 when it adjudicated three major trademark infringement and passing off cases. Before being ‘swept away’ by the wave of IP jurisprudence, we set out below a summary of the facts and decisions.

The first case pitted the fast-food ‘Goliath‘ Subway against a seemingly harmless ‘David‘ Subway Niche. Doctors’ Associates (DA), the proprietor of Subway, sued Lim Eng Wah for allegedly infringing and passing off its Subway trademark, arising from the use of the mark Subway Niche. The action failed on both grounds, i.e. infringement and passing off, primarily because the evidence adduced did not support the claims.

The second case involved an infringement and passing off action against a Singaporean company distributing cosmetic products bearing the mark Rose Lady. The plaintiff, Lady Rose, prevailed on the issue of infringement but failed with respect to passing off.

The third case was a passing off action. Singapore Professional Golfers’ Association (SPGA) pursued Chen Eng Waye who registered Singapore Senior PGA LLP (SSPGA) for his use of SSPGA. While SPGA managed to demonstrate that it had sufficient goodwill, the passing off action failed since the SPGA was unable to prove misrepresentation, stemming from insufficiency of its evidence.

The three cases set out the trend in terms of appraising the admissibility and the probative value apportioned to the evidence by courts in trade mark infringement and passing off actions.

In the Subway case, very little evidence of likelihood of confusion was adduced. Generally, evidence to demonstrate likelihood of confusion assumes the form of surveys tendered as, among other things, expert evidence, interviews, and newspaper articles. However, DA committed a strategic error by not adducing any of this. Instead, DA identified isolated instances of actual confusion by members of the public (some of the instances were described by the employees of DA: where a member of the public mistook an employee of DA to be an employee of Lim); and the search for the term Subway using an online restaurant guide, with both DA and Lim’s restaurants appearing in the search results. This was of no avail as these instances were considered hearsay by the court and were disregarded. The court also clarified that likelihood of confusion may be determined without the assistance of direct survey evidence as surveys are fraught with a multitude of pitfalls including accuracy of the results. The High Court cited a recent precedent (another decision of the High Court) in which the judge expressed doubts as to the ‘probative value’ of market surveys and implied that the accuracy of surveys (i.e. the evidence of confusion) would depend upon the design of the surveys, including the sample size and the phrasing of the questionnaire.

In the Lady Rose case, the passing off action failed partly because the evidence was wanting. Despite the fact that the plaintiff claimed that it had an ongoing incentive promotion programme of providing free goods to retailers, it did not adduce evidence of actual advertising and promotion. The plaintiff was also unable to demonstrate that the benefits of any promotion were extended by the retailers to the public. Further, the plaintiff failed to submit evidence to the effect that there was damage or likelihood of damage. This resulted in the plaintiff’s failure to secure a favourable order in terms of passing off, despite the fact that it prevailed in the infringement action.

In the SPGA case, the evidence adduced to demonstrate that the mark had acquired a secondary meaning came under the radar. SPGA merely made a bald assertion that its mark was distinctive, without furnishing sufficient evidence to that effect. The SPGA’s witness’s assertion regarding the alleged distinctiveness of the mark SPGA was not corroborated by a further witness. Further, SPGA failed to adduce evidence of any confusion arising from the use of the name SSPGA. SPGA’s witness further botched its case on passing off, when he conceded during cross-examination that there are indeed minor differences between SPGA and SSPGA. The High Court reiterated that the outcome did not depend solely or even primarily on instances of actual deception, even though such evidence may be useful.

It is thus of paramount importance to obtain and present evidence which proves the case. Quality and not quantity of evidence appears to be the key. As aptly remarked by author Christopher Hitchens, “That which can be asserted without evidence, can be dismissed without evidence.”