Johnson & Johnson, one of the world’s most comprehensive and broadly based manufacturer of health care products for the consumer, pharmaceutical, and medical devices and diagnostics markets recently secured a landmark decision in Singapore which cemented protection of its intangible IP rights when the High Court ruled that there has been an infringement of its CAREFREE trademark.
The facts of the Case: Johnson & Johnson’s v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) 2006 SGHC 241
Johnson & Johnson registered its trademark “CAREFREE” in Singapore and several other countries for covering catamenial and hygiene products such as napkins and sanitary tampons. This mark has been extensively used worldwide since 1965 and goods sold bearing the “CAREFREE” mark have been sold in Singapore for more than 15 years. A Japanese company, i.e. Uni-Charm Corporation applied for the registration of its trademark “CAREREE” in respect of “napkins and pads for wear by person prone to incontinence”. This subsequently led to Johnson & Johnson lodging a notice of opposition against the said application.
In their grounds of opposition, Johnson & Johnson alleged that the “CAREFREE” mark has secured valuable goodwill and reputation through long and extensive use. It has also become well known to the trade and public and is distinctive of its goods. They contended that the “CAREFREE” mark so nearly resembled their mark, and as a result, confusion and deception are likely to arise.
They further alleged that that the use by the Applicant of the “CAREFREE” mark was calculated to deceive and cause confusion, and would lead to such goods being passed off as and mistaken as Johnson & Johnson’s goods.
The High Court’s Approach
In considering the issue of deceptiveness and confusion, the High Court had to determine the following:
a) Whether there was a similarity between the two concerned marks;
b) Whether the goods to be sold under the “CAREFREE” mark were identical with, or similar to those sold under the “CAREFREE” mark; and
c) Whether there existed a likelihood of confusion on the part of the public.
It was held that as far as visual similarity was concerned, the two conflicting marks were visually similar. Taking into account the fact of Singapore being a multi-lingual nation, it was significant to consider that as a norm, it was understood that non-speaking English audiences will pay little attention to verbal or textual, as opposed to visual references.
In ascertaining acoustic or phonetic similarity between the two marks, the court referring to the case of Arisctoc, Ld v Rysta, Ld (1945) 62 RPC 65 at 72, Luxmoore LJ quoted
…the sound of one word resembling too nearly the sound of another ….. must nearly depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived.
Applying this rationale to the case, the court was of the view that there was phonetic similarity between the two conflicting marks.
The Court also took cognizance of the similarity of the goods covered by both the marks. While Uni-Charm’s goods concerned “napkins and pads for wear by persons prone to incontinence”, whereas Johnson & Johnson’s goods pertained to “catamenial products, sanitary tampons, napkins and napkin belts for hygiene”, the court considered “hygiene” to refer to the degree that people keep themselves or their surroundings clean to prevent disease. As Uni-Charm’s incontinence pads are also for the purposes of hygiene, it was arguable that they were similar to Johnson & Johnson’s “CAREFREE” products. Further, the physical nature of sanitary napkins and napkins for incontinence were similar. Both contain similar material and are to a certain extent, competitive, in that some people suffering from urinary incontinence may use sanitary napkins instead.
Decision of the Court
Coming to a conclusion as to the above findings, the Court held that the public is likely to be confused if the respective goods are sold under the “CAREFREE” and “CAREFREE” marks because of similarity of the marks and the goods to which the marks are intended to be used on. It is likely that the public will think that the defendant’s goods originate from the plaintiff by virtue of the earlier registered trade mark “CAREFREE”.
This decision reflects and echoes the vision Singapore envisaged towards its recognition of IP as the future engineer of Singapore’s economic growth as demonstrated by Mr. Ko Kheng Hwa the Managing Director of the Singapore Economic Development Board at the Europe Asia Patent Information Conference, which was held at Singapore in 2002. Such decisions would encourage more foreign participation and investment into the international trade, as foreign investors and world renowned multi national companies would be at ease, knowing very well that their IP rights are indeed afforded protection to the fullest. The vision is nearly a reality.
As Singapore is rapidly moving towards a knowledge-driven globalized economy underpinned by innovation and enterprise, intellectual capital will be the lifeblood of the next economy. To sustain this economic growth, it is crucial to expand substantially Singapore’s capacity to create, commercialize, manage, and more importantly, protect intellectual property or IP.
Moving along towards this positive direction, the recognition of Singapore as an Asian powerhouse of strong IP industry has helped international companies build and commercialize their intellectual property more effectively, thereby strengthening their competitiveness in the innovation-driven economy.