TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163

Introduction

“What’s in a name?” said Juliet, “[t]hat which we call a rose, by any other name would smell as sweet” (William Shakespeare, Romeo and Juliet (Duke Classics, 2012) at p 56). Despite that brave proclamation, Juliet’s name (Capulet) and Romeo’s (Montague) indicated the families they came from, families whose strife would keep them apart.

In the intellectual property context, a name may likewise be an indication of origin: it may be a trade mark, or its use may be actionable as passing off.

Local cases have considered names like “Taylor” (see Taylor, Fladgate & Yeatman Limited v Taylors Wines Pty Ltd [2014] SGIPOS 11 (“Taylor”)), “Kenzo” (see Kenzo v Tsujimoto Kenzo [2013] SGIPOS 2 (“Kenzo”)), “Valentino” (see Valentino Globe BV v Pacific Rim Industries Inc [2009] 4 SLR(R) 577 (“Valentino (HC)”)), and “Han” (see Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825 (“Han’s”)). The present case involves the name “Luke”, more specifically its possessive form, “Luke’s”.

Background

The parties

The plaintiffs are Singapore companies. The first plaintiff operates a restaurant under the name, “Luke’s Oyster Bar & Chop House” at Gemmill Lane, which opened in May 2011. The second plaintiff operated another restaurant by the same name at The Heeren from 2014 until it closed in December 2020 because its landlord Robinsons ceased operations. The second plaintiff intends to reopen its restaurant at a new location. The plaintiffs’ restaurants are fine dining restaurants.

The first plaintiff is the registered owner of the following mark in Class 43 of the International Classification of Goods and Services (“ICGS”) (the “Luke’s Oyster Bar & Chop House trade mark”):

Trade mark no

Trade mark

Specifications

T1314356Z

Café, providing food and drink, take away food services, preparation of meals, restaurants, catering services, bar services.

The plaintiffs also use an unregistered mark (the “Luke’s Oyster Bar & Chop House logo”):

The Luke’s Oyster Bar & Chop House trade mark and Luke’s Oyster Bar & Chop House logo both contain words other than “Luke’s” – specifically, “Oyster Bar”, “Chop House” and “Travis Masiero Restaurant Group” or “Travis Masiero”. Restaurateur Travis Masiero (“Mr Masiero”), a director and shareholder of the plaintiffs, had named the “Luke’s Oyster Bar & Chop House” restaurants after his son, Lucas. The plaintiffs contend that the word “Luke’s” by itself is distinctive of their restaurant business. The defendants dispute this.

The second defendant is a United States company. It opened the first “Luke’s Lobster” shack on 1 October 2009 in New York City. Directly or through franchisees, some 37 Luke’s Lobster shacks were opened in the United States, Japan, and Taiwan, before the first Luke’s Lobster shack was opened in Singapore on 23 September 2020, at Isetan, Shaw House. That lobster shack in Isetan was opened through the first defendant, the exclusive Singapore franchisee of Luke’s Lobster. Luke’s Lobster shacks are small, casual, self-service restaurants. Much of their business is “grab-and-go”, with limited seating for those who wish to dine in.

In January 2021, the defendants opened a second Luke’s Lobster shack in Singapore at Jewel, Changi Airport. Luke’s Lobster’s frozen seafood products are also available in NTUC FairPrice Finest supermarkets.

Luke’s Lobster gets its name from another Lucas: its co-founder and Chief Executive Officer (“CEO”) Lucas Alexander Holden, who is known as “Luke Holden”.

The second defendant is the registered owner of the following trade marks in Class 43 of the ICGS (the “Luke’s Lobster word mark” and the “Luke’s Lobster logo” respectively, and collectively, the “Luke’s Lobster trade marks”):

Trade mark no

Trade mark

Specifications

40201812193V

Restaurants featuring lobster.

40201809854R

Restaurant services.

The Luke’s Lobster trade marks were registered in Singapore on or about 3 April 2018. The marks have also been registered in other countries.

Luke’s Lobster’s best-selling product is its lobster roll, which has chunks of lobster meat served on a buttered roll:

The lobster roll is the most popular item sold by Luke’s Lobster in Singapore; followed by lobster bisque and the “Luke’s Trio” (half-rolls of lobster, crab, and shrimp). Lobster features prominently, as one might expect from the name “Luke’s Lobster”.

The plaintiffs, however, assert that their Luke’s Oyster Bar & Chop House restaurants also had an established reputation for lobster dishes, although these only accounted for 5% of their restaurants’ revenue, with their lobster rolls only available at lunch, and not listed on their main menu.

The plaintiffs contend that by opening Luke’s Lobster in Singapore, the defendants are liable for trade mark infringement and passing off. Would a customer, however, purchase Luke’s Lobster’s lobster rolls thinking that they came from Luke’s Oyster Bar & Chop House, or that the two establishments were associated in some way?

The proceedings

In July 2020, the plaintiffs came to know that the defendants were intending to open a Luke’s Lobster shack in Singapore. On 7 August 2020, the plaintiffs commenced the present suit, and on 11 August 2020 they sought an interlocutory injunction to restrain the defendants from doing so. The interlocutory injunction was not granted on the balance of convenience; instead an early trial was directed.

The plaintiffs claim against the defendants for:

(a) trade mark infringement under s 27(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”) for using marks that are similar with the plaintiffs’ trade mark in respect of identical services for which that trade mark was registered;

(b) passing off, with the plaintiffs asserting that “Luke’s” is their distinctive name; and

(c) a declaration that the Luke’s Lobster trade marks are invalid pursuant to s 23 of the TMA on the basis that they were registered in breach of ss 8(2)(b) and/or 8(7) of the TMA because there is passing off in respect of “Lukes” [sic].

Besides the declaration of invalidity in [18(c)] above, the plaintiffs seek:

(a) an injunction to restrain the defendants from using any sign that incorporates the word “Luke’s” for goods and services identical or similar to those for which the Luke’s Oyster Bar & Chop House trade mark is registered;

(b) an inquiry as to damages or alternatively, at the plaintiffs’ option, an account of profits; and

(c) an order for the delivery up or destruction upon oath of all infringing material in the defendants’ possession, power, custody or control.

I will first address the claim for trade mark infringement (see [21] below), then the claim for passing off (see [120] below), and finally whether the Luke’s Lobster trade marks are invalid (see [179] below).

Are the defendants liable for trade mark infringement?

Analytical framework

Section 27(2) of the TMA provides as follows:

Whether there is infringement under s 27(2) of the TMA is assessed by the step-by-step approach (The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo”) at [8]):

In Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell (CA)”), the Court of Appeal explained (at [15]):

In comparing the marks, the court will consider visual, phonetic (or aural), and conceptual similarity (Han’s ([3] above) at [105]). This is done mark-for-mark without consideration of any external matter (Han’s at [105]; Staywell (CA) at [20]).

Distinctiveness is a factor integrated into the visual, aural and conceptual analysis of the marks (Staywell (CA) at [30]). Distinctiveness in the ordinary and non-technical sense refers to what is outstanding and memorable about the mark; distinctiveness in the technical sense is contrasted with descriptiveness (Staywell (CA) at [23]-[24]). In Staywell (CA), the court found that, at least in relation to hotels and hospitality services, “Regis” enjoys a substantial degree of technical distinctiveness, and there was a high degree of aural similarity between the competing “St Regis” and “Park Regis” marks because of the distinctiveness of the common “Regis” component in both the technical and non-technical senses (at [31]).

The plaintiffs similarly contend that “Luke’s” in the plaintiffs’ trade mark was, by itself, distinctive of their restaurants. Thus, they argue that the Luke’s Lobster trade marks (both of which have the word “Luke’s”) are similar to the plaintiffs’ trade mark, indeed confusingly so. I address this below.

Similarity of marks

Visual similarity of marks

The plaintiffs contend that here, the dominant and distinctive component of the marks is the word “Luke’s” – that is the most visually noticeable and memorable part of the marks:

(a) in the Luke’s Oyster Bar & Chop House trade mark, the word “Luke’s” is at the top, in a font that is twice the size of the words “Oyster Bar” and “Chop House”, and about three times the size of the words “Travis Masiero Restaurant Group”; and

(b) in the Luke’s Lobster trade marks, “Luke’s” is coupled with “Lobster” (either as a word or as a lobster device).

“Luke’s” is, however, not the only word in the plaintiffs’ mark. The plaintiff did not register “Luke’s” as a trade mark and then use that for restaurants named “Luke’s Oyster Bar & Chop House”. Instead, the plaintiffs registered a trade mark with nine words: Luke’s / Oyster Bar / Chop House / Travis Masiero Restaurant Group.

In Ozone Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459 (“Ozone”), the High Court held that the “GLAMOUR” and “HYSTERIC GLAMOUR” marks were visually dissimilar (and also aurally dissimilar) (at [53] and [56]). In determining the visual similarity of the marks, the court considered the length of the marks, the structure of the marks (ie, whether there are the same number of words), and whether the same letters are used in the marks (at [49]).

Similarly, in Taylor ([3] above), the Assistant Registrar of Trade Marks found that the “Taylor’s” and “Taylors Wakefield” marks were not visually similar (at [73]).

So, too, the Court of Appeal found in Polo ([22] above) that the mark was not similar to the “POLO” word mark. The court said (at [24]):

Here, the plaintiffs’ trade mark consists of – Luke’s / Oyster Bar / Chop House / Travis Masiero Restaurant Group: nine words, 51 letters (see [5] above). On the other hand, the Luke’s Lobster word mark has two words, 12 letters; the Luke’s Lobster logo has one word, five letters, and a lobster device (see [11] above).

There are also differences in font, and design. The fonts and typefaces of the Luke’s Oyster Bar & Chop House trade mark and Luke’s Lobster trade marks are noticeably different (see [61] below). In terms of design, the Luke’s Oyster Bar & Chop House trade mark is made up almost exclusively of words (save for a separator between “Oyster Bar” and “Chop House”), while the Luke’s Lobster logo is represented by both a word (“Luke’s”) and a lobster device. Unlike the Luke’s Lobster word mark, which is a simple word mark representing “Luke’s Lobster” in a single file, the Luke’s Oyster Bar & Chop House trade mark is a composite mark comprising “Luke’s”, “Oyster Bar”, “Chop House” and “Travis Masiero Restaurant Group” occupying their respective positions within the mark. The comparison is:

Such differences were also noted in several other cases where the marks were found to be dissimilar:

(a) in Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203 (“Valentino (CA)”), between the opponent’s marks and , and the applicant’s mark ;

(b) in Discovery Communications, LLC v A-Star-Education Discovery Camps Pte Ltd [2020] SGIPOS 4, between the opponent’s mark and the applicant’s mark ; and

(c) in Han’s ([3] above), where the court held that the HAN Cuisine of Naniwa sign (“HAN sign”) was similar to the Han’s word marks but dissimilar to the Han’s composite marks . The court found that the HAN sign had visual similarity with the Han’s word marks but not with the Han’s composite marks, phonetic similarity with all four of the Han’s marks, but was conceptually dissimilar to all of the Han’s marks (particularly with the Han’s composite marks) (at [122]–[143]). In the event, the court found that although the HAN sign was similar to the Han’s word marks, it was not confusingly so (at [183]).

These cases may be contrasted with Staywell (CA) ([23] above), where the Court of Appeal found that Staywell’s mark was similar to Starwood’s “ST. REGIS” word mark (at [38]).

In all the above cases, there was some common element between the marks: “Glamour”, “Taylor”, “Polo”, “Valentino”, “Discovery”, “Han”, “Regis”, but the competing marks were only found to be similar overall in Han’s (in respect of the word marks) and Staywell (CA) (comparing “Park Regis” to “St Regis”).

As for the plaintiffs’ contention that “Luke’s” per se is distinctive of their restaurants, case law indicates that a commonly used personal name (like “Luke”) is considered of low distinctiveness:

(a) in Taylor ([3] above), there was evidence that it was used as the trading name of a number of live businesses in Singapore (at [52]);

(b) in Kenzo ([3] above), that was likewise noted in relation to “Kenzo” and the Principal Assistant Registrar of Trade Marks moreover stated that the average member of the public is equally likely to construe the word “KENZO” as a personal name of Japanese origin, as much as a sign that may serve as a badge of origin (at [40]).

(c) in Luciano Sandrone v European Union Intellectual Property Office (Case T-268/18), the European General Court compared the “DON LUCIANO” and “Luciano Sandrone” marks, and concluded that as the first name “Luciano” was a common first name in Spain, Italy, Portugal and France (at [74]), there was only a weak degree of visual and phonetic similarity between the competing marks (at [78] and [80]), and no likelihood of confusion (at [92]-[103]).

In Singapore, the words “Luke”, “Luke’s” and “Lukes” are found in the registered trading names of various entities:

“Luke” and “Luke’s” also feature in the trade marks of other parties registered in the following classes of the ICGS:

Food products are also sold under the names “Luke’s Organic” and “Tom & Luke” (see: (accessed 17 February 2021); (accessed 17 February 2021)):

In Reed Executive plc and another v Reed Business Information Ltd and others [2004] ETMR 56 (“Reed”), the plaintiff’s registered mark was “REED”, registered for employment agency services, whereas the defendant’s sign was “Reed Business Information”. The English Court of Appeal observed that “Reed” is a common surname, and the additional words “Business Information” in the defendant’s sign would be recognised by the average consumer as serving to differentiate the defendant from Reeds in general (at [37]-[38]). Indeed, the court considered the additional words “as prominent as the word ‘Reed’” (at [39]). In the event, the court found there was no likelihood of confusion (at [105]-[106]).

The court, citing Lord Simonds in Office Cleaning Services v Westminster Window and General Cleaning (1946) 63 RPC 30 (at 43), stated that “where a mark is largely descriptive ‘small differences may suffice’ to avoid confusion” (at [84]). In that cited case, “Office Cleaning Association” was sufficiently different from “Office Cleaning Services” to avoid passing off (at [85]). The court went on to say (at [86]):

The plaintiffs’ trade mark is not “Luke’s”, it is: “Luke’s / Oyster Bar / Chop House / Travis Masiero Restaurant Group” [emphasis added]. Neither are the Luke Lobster trade marks just “Luke’s”: they are “Luke’s Lobster” [emphasis added], with “lobster” either in word form, or graphically depicted by the lobster device. Adopting the English Court of Appeal’s reasoning in Reed, the words “Oyster Bar” “Chop House” and “Travis Masiero Restaurant Group” in the plaintiffs’ trade mark serve to differentiate the plaintiffs’ restaurants from other “Luke’s” establishments, as does the word “Lobster” or the lobster device in the respective Luke’s Lobster trade marks.

The risk inherent in the use of a name in a trade mark, was well noted by the IP Adjudicator Professor David Llewelyn in Valentino SpA v Matsuda & Co [2020] SGIPOS 8 (at [1]):

The words besides “Luke’s” in the plaintiffs’ trade mark serve to differentiate them from “Luke’s” per se, in much the same way as adding a surname to “Luke” or “Luke’s”, eg “Luke Masiero” or “Luke Masiero’s”.

The words “Oyster Bar”, “Chop House” and “Travis Masiero Restaurant Group” in the plaintiffs’ trade mark contribute to the mark as a whole being distinctive of the plaintiffs’ restaurants. Which “Luke’s” are they? They are the Luke’s Oyster Bar & Chop House restaurants that are part of the Travis Masiero Restaurant Group. Having chosen to differentiate themselves in that way, it is ironic that the plaintiffs now seek to focus on “Luke’s”, and to downplay the rest of their trade mark.

In effect, the plaintiffs are claiming a monopoly over “Luke’s” – at least in relation to restaurants.

Such an assertion was roundly rejected in Valentino (HC) ([3] above) where the High Court said (at [36]), “[t]he Appellant certainly does not have a monopoly over the word ‘Valentino’”; and in Valentino (CA) ([34(a)] above), where the Court of Appeal said (at [22]):

I likewise reject the plaintiffs’ attempt to claim a monopoly over “Luke’s”.

I find that the Luke’s Lobster trade marks are not visually similar to the plaintiffs’ Luke’s Oyster Bar & Chop House trade mark, and that the Luke’s Lobster logo is particularly dissimilar.

Phonetic/aural similarity of marks

The plaintiffs submit that aurally, the marks are virtually identical. I do not agree.

In Staywell (CA) ([23] above), the Court of Appeal noted that one approach would be to undertake a quantitative assessment as to whether the competing marks have more syllables in common than not, which was the approach taken in Ozone ([29] above) (at [55]) – on that approach, “St Regis” and “Park Regis” had more syllables in common than not, two out of three (at [32]).

The other approach, which the High Court judge adopted in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another [2013] 1 SLR 489 (“Staywell (HC)”), was to consider if the marks have a dominant and distinctive component when each is read out (at [22]-[23]). The judge found that that was “Regis”, while “St” and “Park” were not as dominant, but not to be ignored (at [24]). The Court of Appeal upheld the finding that the marks were aurally similar (Staywell (CA) at [33]).

Here, the plaintiffs’ trade mark has 15 syllables; the Luke’s Lobster word mark has three syllables, and the Luke’s Lobster logo has one syllable. Only one syllable is common between the competing marks: “Luke’s”. Moreover, “Luke’s” is of low distinctiveness (see [37]-[40] above).

This case is very different from Wagamama Ltd v City Centre Restaurants plc and another [1995] FSR 713 (“Wagamama”) where Wagamama Ltd sued for trade mark infringement and passing off, the comparison being between its “Wagamama” restaurant, and the defendant’s subsequent restaurant “Rajamama”. As the court noted, “Wagamama” means selfishness or wilfulness in Japanese, but it was not in dispute between the parties that the word has no meaning to the overwhelming majority of the population in England (at 717). As such, a significant section of them would regard it as an entirely artificial and meaningless mark (at 732). An artificial mark has greater distinctiveness in the technical sense (see Staywell (CA) at [24]). Moreover, in Wagamama, the court noted that much of the plaintiff’s business is likely to come from oral recommendation, and as such the possibility of confusion and imperfect recollection are significant (at 736). In the event, the plaintiff succeeded in both its trade mark infringement and passing off claims (at 733 and 737). In the present case, “Luke’s” (which per se is of low distinctiveness: see [37]-[40] above) does not have the technical distinctiveness of a word like “Wagamama”, and there was no evidence that much of the plaintiffs’ business is likely to come from oral recommendation.

I find that the Luke’s Lobster trade marks are not phonetically (or aurally) similar to the plaintiffs’ trade mark.

Conceptual similarity of marks

The plaintiffs submit that the marks have a high degree of conceptual similarity given that they both denote a food and beverage establishment owned by a person called “Luke” (due to the use of “Luke’s”), and both lobsters and oysters are seafood. That is an over-simplification.

In considering conceptual similarity, the court “seeks to uncover the ideas that lie behind and inform the understanding of the mark as a whole” (Staywell (CA) ([23] above) at [35]).

Here, the phrases “Oyster Bar” and “Chop House” in the plaintiffs’ trade mark bring to mind a place, just like “Kenzo Estate” in Kenzo ([3] above) (at [36]-[37]). The Luke’s Lobster trade marks, on the other hand, bring to mind an animal (the lobster), or a type of food (lobster), rather than a place. While a “Lobster shack” (see [8] above) would be the equivalent of an “Oyster Bar”, here, the Luke’s Lobster trade marks simply state “Luke’s ‘Lobster’” (in word or by the lobster device).

The phrase “Travis Masiero Restaurant Group” in the plaintiffs’ trade mark indicates that the plaintiffs’ Luke’s Oyster Bar & Chop House restaurants are part of a larger group – the Travis Masiero Restaurant Group. Moreover, the restaurant group bears the name “Travis Masiero” rather than “Luke’s” or “Luke’s Oyster Bar & Chop House”. The Luke’s Lobster trade marks, on the other hand, make no reference to any restaurant group, or any person other than the eponymous “Luke”.

Further, the words in the plaintiffs’ trade mark are all in capital letters, upright, and in gold typeface. The impression given is one of formality and sophistication (see Han’s ([3] above) where the same observation was made about the HAN sign (see [34(c)] above) (at [142])). In contrast, the Luke’s Lobster word mark only has the initials “L” capitalised. “LUKE’S” in the Luke’s Lobster logo is curved, with the word forming the body of the lobster, and “lobster” is conveyed by a lobster device rather than a word. The Luke’s Lobster trade marks come across as casual, even playful (especially the Luke’s Lobster logo).

I find that the marks are conceptually dissimilar.

Overall similarity of marks

As discussed above, I consider the marks to be visually dissimilar, phonetically (or aurally) dissimilar, and conceptually dissimilar. On the whole, the Luke’s Lobster trade marks are dissimilar to the Luke’s Oyster Bar & Chop House trade mark, and the Luke’s Lobster logo especially dissimilar.

Similarity of goods or services

The marks are all registered in Class 43 of the ICGS. The plaintiffs’ registration is for (among others) “restaurants”; the defendants’ registrations are for “restaurants featuring lobster” and “restaurant services” (see [5] and [11] above).

In Staywell (CA) ([23] above)), the Court of Appeal stated that registration in the same specification within a class establishes a prima facie case for identity (at [40]). In this regard, I accept that the Luke’s Lobster trade marks are used in relation to goods or services identical with or similar to those for which the plaintiffs’ trade mark is registered.

This does not mean there is no distinction between the defendants’ Luke’s Lobster shacks and the plaintiffs’ restaurants – there is (see [76], [79] and [132]-[140]). But these differences should more appropriately be considered when evaluating the likelihood of confusion. In Staywell (CA), the Court of Appeal stated (at [61]):

That was, however, part of the discussion on likelihood of confusion, rather than in relation to the issue of similarity of services (on which the court had already concluded that the services were identical or similar: Staywell (CA) at [42]-[43]).

Likelihood of confusion

Considerations of marks-similarity and goods/services-similarity

The next question is whether there is likelihood of confusion arising from marks-similarity and goods/services-similarity (see [22]–[23] above). The plaintiffs accept that for trade mark infringement the likelihood of confusion must arise from marks-similarity and goods/services-similarity.

As I have found the defendants’ Luke’s Lobster trade marks to be dissimilar from the plaintiffs’ Luke’s Oyster Bar & Chop House trade mark, strictly speaking, the question of confusion does not arise, as the Court of Appeal observed in Polo ([22] above) (at [25]). But even if there is similarity of marks, and similarity of goods or services, it does not necessarily follow that confusion will automatically arise. A broader approach is appropriate to determine if there is confusion.

The confusion analysis is, however, relevant to the passing off claim, and so I consider if there is likelihood of confusion, assuming that the Luke’s Lobster trade marks are regarded as similar to the plaintiffs’ trade mark. Nevertheless, if there is only a low degree of similarity between the marks, the likelihood of confusion would be low (see Staywell (CA) at [96(a)]).

What needs to be established is a likelihood of confusion as to the origin of the goods or services in question – that extends to the situation where the average consumer mistakenly assumes some kind of economic link or connection between the goods or services of the opposing parties (Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR 941 (“Hai Tong”) at [73]–[74]). The likelihood of confusion required is that which is to be expected amongst a substantial portion of the relevant segment of the public – that does not need to amount to a majority, but it must go beyond a “de minimis” level (Hai Tong at [78(e)]).

“Initial interest confusion” does not constitute “confusion” for the purposes of ss 8(2) and 27(2) of the TMA. As the Court of Appeal stated in Staywell (CA) ([23] above) (at [113]):

In the case of restaurants, the relevant time for evaluating confusion is thus the point of purchase.

In Staywell (CA), the Court of Appeal provided a non-exhaustive list of factors which would be admissible in the confusion inquiry (at [96(a)]-[96(b)]):

(a) Factors relating to the impact of marks-similarity on consumer perception: the degree of similarity of the marks themselves, the reputation of the marks, the impression given by the marks, and the possibility of imperfect recollection of the marks. The greater the similarity between the marks, the greater the likelihood of confusion.

(b) Factors relating to the impact of goods-similarity on consumer perception: factors concerning the very nature of the goods without implicating any steps that are taken by the trader to differentiate the goods. This includes the normal way in or the circumstances under which consumers would purchase goods of that type, whether the products are expensive or inexpensive items, the nature of the goods and whether they would tend to command a greater or lesser degree of fastidiousness and attention on the part of prospective purchasers, and the likely characteristics of the relevant consumers and whether they would or would not tend to apply care or have specialist knowledge in making the purchase.

In relation to restaurants, the following discussion in Han’s ([3] above) is instructive (at [162] and [175]) (see also [34(c)] above):

In the present case, too, the plaintiffs’ restaurants and the defendants’ Luke’s Lobster shacks are brick-and-mortar establishments. The Luke’s Lobster trade marks are indeed prominently displayed at the defendants’ restaurants, as the following photographs show (with the locations of the Luke’s Lobster logo marked):

Having registered the Luke’s Oyster Bar & Chop House trade mark, the plaintiffs then did use it much. It is used on the shopfront window of the plaintiffs’ Gemmill Lane restaurant; it is also on business cards of the plaintiffs’ representatives. However, it is the Luke’s Oyster Bar & Chop House logo (see [6] above) - which is not a registered trade mark - that is used on the plaintiffs’ Facebook and Instagram pages, the plaintiffs’ website, the plaintiffs’ menu, and the plaintiffs’ products. Gregory Ian Coops (“Mr Coops”) of Asian Strategies Pte Ltd (“Asian Strategies”) – which did a survey for the plaintiffs (“the Survey”) – confirmed that the Luke’s Oyster Bar & Chop House logo “was the one that was most commonly in use”. That survey, which the plaintiffs relied on for both its trade mark and passing off claims, did not use the plaintiffs’ registered trade mark at all, but only the unregistered Luke’s Oyster Bar & Chop House logo, a point I will return to (see [192] below).

For the present, I would simply observe that given the limited use of the plaintiffs’ Luke’s Oyster Bar & Chop House trade mark, that mark did not have a strong reputation (and neither were the plaintiffs’ restaurants widely known). Indeed, Mr Coops’ evidence was:

These are some photographs of the Luke’s Oyster Bar & Chop House restaurants:

In Han’s ([3] above), the court noted that restaurant services embrace a broad range of different types of food outlets, and went on to hold that the significant differences in style, price, range and type of food and services offered are relevant in considering the likelihood of confusion - in that case, the plaintiff’s “Han’s” restaurants were relatively inexpensive, whereas the defendant’s “Han Cuisine of Naniwa” restaurant served fine dining Japanese food (at [179]–[181]).

In similar vein is the decision in Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012] 3 SLR 193 (“Subway”), which pre-dated Staywell (CA) ([23] above). Subway concerned the international sandwich chain “Subway” and the defendant’s “Subway Niche” stalls which sold Nyonya kueh, bubble tea, and other local snacks. The court held that it had not been established that even a de minimis section of the public would be confused by the plaintiff’s and the defendant’s marks, which the court had found to be similar (at [41]), and noted (at [51]):

Given the mark-centric approach set out in Staywell (CA) (at [96(a)]), for the inquiry into confusion for the purposes of trade mark infringement, I would first not factor in the significant differences in style, price, range and type of food and services in the present case. Even so, I find that there is no likelihood of confusion, having regard to:

(a) the non-similarity (or low similarity) of the marks (see [63] above);

(b) the sparse use the plaintiffs made of their Luke’s Oyster Bar & Chop House trade mark (see [77] above), coupled with the plaintiffs’ restaurants not being known by many (see [78] above); and

(c) some degree of fastidiousness and attention being expected on the part of prospective purchasers, in relation to restaurant services (see Hai Tong ([71] above) at [85(c)]).

If I then took into account the significant differences in style, price, range and type of food and services in the present case (as the court did in Han’s ([3] above)), that would only accentuate the differences between the plaintiffs’ restaurants and the defendants’ Luke’s Lobster shacks. I elaborate on this at [132]-[140] below.

The plaintiffs’ survey evidence

The plaintiffs relied heavily on the Survey conducted by Asian Strategies, whose principal Mr Coops testified at trial (see [77] above).

The Court of Appeal in Sarika Connoisseur Café Pte ltd v Ferrero SpA [2013] 1 SLR 531 (“Sarika (CA)”) stated, “[s]urvey evidence is relevant in assessing whether there is a likelihood of confusion on the part of the relevant public”, but went on to agree with the High Court judge that survey evidence should not be conclusive; rather it is only one factor in the global confusion analysis (at [64]).

In determining the weight to be accorded to survey evidence, the High Court in Ferrero SpA v Sarika Connoisseur Cafe Pte Ltd [2011] SGHC 176 (“Sarika (HC)”) adopted guidelines from Whitford J’s decision in Imperial Group Ltd v Philip Morris & Co [1984] RPC 293 (“the Whitford Guidelines”), which included (at [134]):

Having regard to the Whitford Guidelines, there were a number of deficiencies in the plaintiffs’ survey evidence. In the event, I place no weight on the findings of the Survey in so far as they are said to show a likelihood of confusion. That too was the fate of the survey in Han’s ([3] above) (at [172]). My review of the plaintiffs’ survey evidence and its shortcomings is at [191]-[241] below.

The plaintiffs’ evidence of actual confusion

The plaintiffs rely not only on the Survey as evidence of likelihood of confusion, they also say that statements made by some participants interviewed by Mr Coops for the Survey show actual confusion. Aside from the Survey, the plaintiffs also point to some emails and a social media post, as evidence of actual confusion.

In particular, the plaintiffs say that the statements of two interviewees (citing verbatim comments no 14 and 22) show that they had, while confused, eaten at the defendants’ Luke’s Lobster shack first before realising that it was not run by the plaintiffs.

This use of a survey is questionable. The Survey is not being relied upon as survey evidence. Instead, it is being used to get out-of-court statements from persons - who are not called as witnesses - whose statements are then put forward as evidence. Ironically, this is precisely what counsel for the plaintiffs had said he would not do, after the evidence had concluded. He had then said:

To rely on the unsworn statements of two of 266 interviewees, without calling them as witnesses, is indeed hearsay as the plaintiffs’ counsel had correctly recognised; it is not survey evidence. The plaintiffs’ evidence of actual confusion is open to the same criticisms levelled against similar evidence in Subway ([81] above) (at [48] and [52]):

In contrast, in Wagamama ([55] above), eight customers actually gave evidence (at 715). Here, none did.

In any event, I do not accept that the verbatim comments the plaintiffs rely on show that those two interviewees had purchased food from the defendants’ Luke’s Lobster shack thinking that it was associated with the Luke’s Oyster Bar & Chop House restaurants in some way.

Comment 14 states (among other things) “when I went there, the service was so bad that I realised it wasn’t Lukes … [it was] like a fast-food place not a restaurant” [emphasis added]. That does not show that the interviewee was confused when the purchase was made from the defendants’ Luke’s Lobster shack. The interviewee appears to have appreciated that the Luke’s Lobster shacks have a fast-food model, and what the service was like (and indeed, that it was distinct from the plaintiffs’ restaurants), before making a purchase.

Comment 22 states, “I saw the sign [Opening Soon]. I thought ‘is this related to Luke’s?’ I thought I’d try it. When I ate there and saw the flyer which said it was from New York I realised it’s not related [to Luke’s].” That too does not show that a purchase was made before the interviewee saw the flyer and realised that the defendants’ Luke’s Lobster shack was not related to Luke’s Oyster Bar & Chop House. At best, it is ambivalent on the point, but the burden is on the plaintiffs to establish otherwise, and they never called that interviewee as a witness to testify to the incident.

In so far as these two comments might show initial interest confusion, that is not sufficient for the plaintiffs’ purposes (see [72] above). If I were inclined to rely on those comments at all, they only show that from the visits to the defendants’ Luke’s Lobster shack, the interviewees had realised that Luke Lobster and the plaintiffs were unconnected; they did not only find this out when they participated in the Survey.

I turn now to the five emails and one Facebook post which the plaintiffs rely on. Again, none of the persons were called as witnesses, and their unsworn out-of-court statements are hearsay. In any event, the contents of the emails and Facebook post do not assist the plaintiffs.

There is first a 4 August 2020 email from one Aaron of Ink Global to the plaintiffs asking for photographs for an article on the upcoming opening of Luke’s Lobster at Isetan. Mr Masiero conceded that it was unclear whether Aaron had intended to contact the plaintiffs or the defendants. The email does not indicate that Aaron thought Luke’s Oyster Bar & Chop House was opening a new outlet at Isetan; it does not even indicate that Aaron knew of the Luke’s Oyster Bar & Chop House restaurants. Moreover, the email does not show any confusion at the point of purchase, it was sent before Luke’s Lobster had even opened in Singapore on 23 September 2020 (see [8] above).

There are then emails from four individuals (whose names/emails I have anonymised). None of them show confusion at point of purchase; the first three were sent before Luke’s Lobster opened in Singapore:

(a) The 17 September 2020 email from one “H” says, “I saw that you guys will open a restaurant at Shaw Centre … When are you opening?” That was in advance of any patronage of the defendants’ Luke’s Lobster shack.

(b) The 19 September 2020 email from one “W” says, “I will like to find out if your restaurant and Luke’s Lobster are affiliated under same parent. [sic] Is there a reservation hotline or online reservation for Luke’s Lobster dining in?” That too was in advance of any patronage of the defendants’ Luke’s Lobster shack. Moreover, it does not show that the sender was confused between Luke’s Lobster and Luke’s Oyster Bar & Chop House – she asks if there is a link.

(c) The 19 September 2020 email from one “M” says, “I’m so excited to see you’re opening a new Luke’s in Orchard! How can I make a reservation for your new outlet?” That was likewise in advance of any patronage of the defendants’ Luke’s Lobster shack.

(d) The 23 October 2020 email from one “S” was the only one of the four sent after Luke’s Lobster had opened in Singapore. It says, “I see you have opened a lobster roll outlet at Isetan. I am assuming it is you anyway. I love your lobster rolls. Congratulations and hope to try it soon! [emphasis added]” That too shows that the sender had yet to make a purchase at the defendants’ Luke’s Lobster shack.

There is then a Facebook post from one “J” on 29 September 2020 with a photograph of a lobster roll and other food, on a table at the Luke’s Lobster shack at Isetan. The location tag she had applied to that photo was that of “Luke’s Oyster Bar & Chop House”, and the suggestion was that she had thought she was dining at Luke’s Oyster Bar & Chop House. However, her other Facebook posts the same day had location tags for “ION Orchard (Singapore, Singapore)” and “Marina Bay Singapore” applied to photos taken at Luke’s Lobster, Isetan. On the plaintiffs’ reasoning, whilst at Isetan, Shaw House, J was confused in thinking that she was in multiple places at the same time: she was actually at Luke’s Lobster, Isetan, but thought she was (a) across the road at ION Orchard; (b) further away at Marina Bay; and (c) at one of the Luke’s Oyster Bar & Chop House restaurants. On social media, one can even location tag a photograph of Marina Bay Sands as “Downtown Chattanooga, Tennessee” – but what would that mean?

J’s Facebook post is not good evidence of confusion at point of purchase, between Luke’s Oyster Bar & Chop House, and Luke’s Lobster. The plaintiffs did not call J as a witness; nor did they lead evidence to show that she was a customer of the plaintiffs’ restaurants, or that she even knew of Luke’s Oyster Bar & Chop House (other than as a location tag which she applied to one of her photos taken at Luke’s Lobster at Isetan that day). One possible explanation is that she could simply have typed, “Luke” (or “Luke’s”) and picked “Luke’s Oyster Bar & Chop House” from various alternatives suggested by Facebook.

Neither the survey evidence, nor the alleged evidence of actual confusion, is of much assistance to the plaintiffs on the issue of confusion. My decision is that the element of likelihood of confusion is not made out.

The “Own Name” Defence under s 28(1)(a) of the TMA

Even if the plaintiffs had made out that the marks are similar, and that there is a likelihood of confusion, the “own name” defence under s 28(1)(a) of the TMA stands to be considered.

Section 28(1) of the TMA reads:

In The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd [2016] 3 SLR 617 (“AMC”), the Court of Appeal summarised the relevant principles to be applied when considering the applicability of the “own name” defence (at [65]–[66]) which included recognition that “[t]he defence is available in relation to the use of corporate names and this includes the use of the full company name as well as the defendant’s trading name” (at [65(b)]). I thus cannot accept the plaintiffs’ submission (citing Premier Luggage and Bags Ltd v Premier Co (UK) Ltd [2003] FSR 5 (“Premier Luggage”) and Asprey & Garrard Ltd v WRA (Guns) Ltd [2002] FSR 31 (“Asprey”)) that the defence is not available in relation to trading names. Moreover, in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] RPC 16 (“Cipriani”), the English Court of Appeal, which accepted that the “own name” defence is available in relation to trading names (at [72]), had stated that Premier Luggage was not authority for the proposition that the defence was unavailable for trading names (at [65]) and that the decision in Asprey had recognised that an established trading name might allow for successful use of the defence (at [67]). In that case, the defendant-company’s name was Cipriani (Grosvenor Street) Ltd (at [59]) but the court considered that it could rely on the defence in relation to its trading name, “Cipriani London” if it established that such use was justified (at [73]).

“Luke’s Lobster” is a trading name which the second defendant, Lukes Seafood LLC, has used since 2009, two years prior to the opening of the first of the plaintiffs’ Luke’s Oyster Bar & Chop House restaurants in 2011 (see [4] and [8] above). In this regard, I would treat the Luke’s Lobster logo where “Lobster” is conveyed by way of a lobster device rather than a word, as no different from the “Luke’s Lobster” word mark (where “Lobster” is conveyed by words).

I further accept that the second defendant’s use of “Luke’s Lobster” for its Singapore lobster shacks is in accordance with the “honest practices” proviso to s 28 of the TMA. Not only did the use of the trade name “Luke’s Lobster” pre-date the opening of the plaintiffs’ Luke’s Oyster Bar & Chop House restaurants, “Luke’s Lobster” is named after its co-founder and CEO Luke Holden (“Mr Holden”) (in this regard, nothing turns on the use of the English “Luke” rather the Latin “Lucas” which is formally Mr Holden’s first name (see [10] above), especially since it was another Lucas – Mr Masiero’s son – that the Luke’s Oyster Bar & Chop House restaurants were named after (see [7] above)). In AMC, the Court of Appeal cited Cipriani (at [66]), which recognised that in principle an individual can use the defence “in relation to an adopted name by which he or she is known for business purposes or generally, for example an actor’s stage name or a writer’s nom de plume”, and that a corporate entity should be able to do likewise (at [47]).

Moreover, the Luke’s Lobster trade marks were successfully registered in 2018 (see [12] above): the plaintiffs did not oppose that registration, nor did the Registry of Trade Marks cite the plaintiffs’ trade mark against the applications.

In contrast, the Korean Intellectual Property Office had issued a provisional refusal against registration of the Luke’s Lobster logo, citing the plaintiffs’ registration for their Luke’s Oyster Bar & Chop House trade mark; the second defendant had filed a non-use cancellation action in Korea.

In Hong Kong, the second defendant also filed a non-use revocation action against the plaintiffs’ Luke’s Oyster Bar & Chop House trade mark – that was resolved on the basis of the plaintiffs’ proposal for co-existence and withdrawal of the revocation action. Notably, the plaintiffs’ solicitors wrote, “[o]ur client is of the view that your client’s [ie, the second defendant] target customers base is likely to be very different from our client’s target customer base”.

Given the Singapore registrations, which were unopposed, and how the position in Hong Kong had been resolved, it was reasonable for the second defendant to think that it could open lobster shacks in Singapore under the name “Luke’s Lobster” (as all its other shacks were named), and that the plaintiffs would likely not object.

I thus find that the second defendant is entitled to rely on the “own name” defence.

The first defendant too is entitled to rely on the “own name” defence. The first defendant is the exclusive licensee of the second defendant, and under the Franchise Agreement between them, the first defendant has been given the same rights and remedies as the second defendant in respect of defending against or initiating any litigation in Singapore related to or in connection with the “Licensed Marks”, save as expressly excluded under that agreement. Section 45(1) of the TMA recognises that: “[a]n exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.”

The plaintiffs submitted that even if the second defendant could rely on the “own name” defence, the first defendant could not – because of matters that related particularly to the first defendant:

(a) the first defendant’s CEO, Vijay Kumar s/o Sreekumar Pillai (“Mr Pillai”) had, for at least 10 years, known the plaintiffs’ directors Mr Masiero and Jeremy Muller (“Mr Muller”) (whose company, Peccavi Wines Pte Ltd, was also a shareholder of the plaintiffs);

(b) in 2011 Mr Pillai had proposed to Mr Masiero to cooperate in a restaurant business;

(c) Mr Pillai had over the years visited the Luke’s Oyster Bar & Chop House restaurants at least 10 times, and must know that they serve seafood including lobsters;

(d) Mr Pillai had referred to the plaintiffs’ restaurants as “Luke’s” in a WhatsApp message to Mr Muller;

(e) the first defendant would have done all the necessary due diligence before bringing in a new brand – like Luke’s Lobster; and

(f) Mr Pillai had intimate knowledge of the plaintiffs’ business and goodwill, and so it would be unfair of the first defendant as franchisee to be able to rely on the “own name” defence, even if the second defendant could do so.

I do not agree with the plaintiffs’ contentions on this. The successful, and unopposed, registrations of the Luke’s Lobster trade marks in Singapore would have indicated not only to the second defendant, but also to the first defendant and Mr Pillai, that Luke’s Lobster could likely open in Singapore without issue. Moreover, I do not believe Mr Pillai thought there was a likelihood of confusion between Luke’s Lobster, and Luke’s Oyster Bar & Chop House.

The “Registered Mark” defence under s 28(3) of the TMA

Section 28(3) of the TMA reads:

Unless the registration of the Luke’s Lobster trade marks is declared invalid, the second defendant as the owner of the marks is entitled to use them, without that use being an infringement of the plaintiffs’ Luke Oyster Bar & Chop House trade mark; and the first defendant as the second defendant’s exclusive licensee is likewise entitled to the defence (as discussed at [113] above).

I consider the plaintiffs’ claim for invalidity at [179] below.

Even without the “Registered Mark” defence, the plaintiffs’ trade mark infringement claim would fail for the reasons I have stated above, and I dismiss that claim.

Are the defendants liable for passing off?

The tort of passing off requires proof of goodwill, misrepresentation, and damage: Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR(R) 216 (“Novelty”) at [36].

Goodwill

I accept that the plaintiffs had goodwill in their Luke’s Oyster Bar & Chop House restaurant business: there is an “attractive force that brings in custom”, ie customers to the restaurants (see Novelty at [39], citing Lord Macnaghten in The Commissioners of Inland Revenue v Muller & Co’s Margarine Limited [1901] AC 217 at 223–224).

What is the get-up that is distinctive of the plaintiffs’ business? Is it the name of the restaurants (“Luke’s Oyster Bar & Chop House”), the plaintiffs’ registered trade mark and unregistered logo, the plaintiffs’ food and beverage offerings, or some combination of these and perhaps other factors besides? The plaintiffs contend that “Luke’s” by itself is distinctive of their business, but in my analysis of their trade mark infringement claim, I have already rejected that (see [43]-[46] above). The plaintiffs’ goodwill is not associated with “Luke’s” simpliciter. Rather, the plaintiffs’ restaurants are known as oyster bars and chop houses. “Oyster Bar” and “Chop House” are not only in the name of the restaurants - “Luke’s Oyster Bar & Chop House” - but also in both the Luke’s Oyster Bar & Chop House trade mark and the unregistered Luke’s Oyster Bar & Chop House logo. The plaintiffs’ goodwill is also associated with the Travis Masiero Restaurant Group (which is part of their trade mark), and restaurateur Mr Masiero (whose name is part of their logo).

Misrepresentation

Whether there is misrepresentation must be tested against what the plaintiffs’ restaurants’ goodwill is associated with, ie, not “Luke’s”, but “Luke’s Oyster Bar & Chop House”, as part of the Travis Masiero Restaurant Group.

As I have found in analysing the trade mark infringement claim, a personal name like “Luke” (or its possessive form, “Luke’s”) is of low distinctiveness, and the average consumer will be sensitive to additional words and/or features that accompany (and qualify) “Luke’s” (see [43] above): they would distinguish between the Luke’s Oyster Bar & Chop House trade mark and the Luke’s Lobster trade marks.

As the court in Han’s ([3] above) noted, in a passing off claim (at [199]):

In the present case, the less mark-centric the approach, the lower the likelihood of any misrepresentation or confusion, for there are many differences between the two sides.

In assessing misrepresentation and confusion, I accept the defendants’ submission that initial interest confusion is insufficient for passing off, just as it is insufficient for the purposes of trade mark infringement. In Law of Intellectual Property of Singapore (Sweet & Maxwell, 2nd Ed, 2014), the learned author Professor Ng-Loy Wee Loon, SC (who had been the amicus curiae in Staywell (CA) ([23] above)) stated that (at para 18.3.7):

Indeed, it would not make sense if Starwood should fail in opposing the registration of Staywell’s “Park Regis” marks because initial interest confusion does not suffice for trade mark purposes, but could then successfully sue Staywell in passing off for using those registered marks.

In England too, the doctrine of initial interest confusion does not apply in a passing off claim: see Moroccanoil Israel Ltd v Aldi Stores Ltd [2015] ECC 6 (at [25]).

The plaintiffs contend that initial interest confusion can suffice in the passing off context. They rely on a commentary in Christopher Wadlow, The Law of Passing Off: Unfair Competition by Misrepresentation (Sweet & Maxwell, 5th Ed, 2016) (“The Law of Passing Off”) at para 5-181 on Knight v Beyond Properties Pty Ltd and others [2007] EWHC 1251 (Ch) (“Knight v Beyond Properties”), which suggests that - in the context of a television programme – if initial confusion would cause damage to the claimant’s goodwill, that should be sufficient. However, in Knight v Beyond Properties, the court drew a distinction between the viewing of a television programme and cases concerning the sale of goods in a shop; and accepted that in the latter, confusion must persist until the point of sale, which is the “critical time” before damage may result (at [81]). Indeed, that provides the relevant comparison in our case, which concerns restaurants with food products that are bought, not television programmes that are viewed. Furthermore, in The Law of Passing Off, Professor Christopher Wadlow (“Prof Wadlow”) commented that Knight v Beyond Properties should not be taken as standing for the proposition that initial interest confusion is sufficient for establishing passing off (at para 5-182). I proceed on the basis that even for their passing off claim, the plaintiffs must establish confusion at point of purchase, not initial interest confusion.

In the present case, the defendants did not use the name “Luke’s Lobster” for their lobster shacks because they wanted to capitalise on the goodwill of Luke’s Oyster Bar & Chop House. To the contrary, the name “Luke’s Lobster” was in use some two years before the first Luke’s Oyster Bar & Chop House restaurant was opened (see [8] above); and all of the second defendant’s lobster shacks (ie, including those outside of Singapore) are called “Luke’s Lobster”. The fact that the name was chosen bona fide makes a finding of deception less likely (AMC ([105] above) at [105]; Han’s ([3] above) at [201]).

There are also many significant differences in style, price, range and type of food and services, between the two sides. For example, in Han’s, the court noted the stark difference in the market segments targeted by the parties, respectively. The Han’s restaurants were known for being “value for money”, and “affordable and good”, with the most expensive item on its menu being the $16.80 NZ Prime Sirloin Steak with Black Pepper Sauce (at [203]). The Han Cuisine of Naniwa restaurant on the other hand served omakase- and kaiseki-style sets, the Japanese equivalents of western fine dining; and it had a substantial wine and alcohol menu (at [203]).

The same comparisons may be made in the present case, save that the plaintiffs’ restaurants are the fine dining ones, and the defendants’ Luke Lobster shacks the simpler and relatively cheaper ones.

The plaintiffs describe their Luke’s Oyster Bar & Chop House restaurants as fine dining restaurants with an “elegant yet personable and comfortable” dining atmosphere. The contrast with the defendants’ Luke’s Lobster shacks was well put by Mr Masiero himself in his Affidavit of Evidence-in-Chief (“AEIC”):

Indeed, as the photographs I have set out above show, the plaintiffs’ restaurants are spacious fine dining establishments (see [79] above), whereas the defendants’ Luke’s Lobster shacks are small, casual, grab-and-go outlets with limited seating (see [76] above).

Mr Masiero further noted that HungryGoWhere assesses the average price of a trip to the Luke’s Oyster Bar & Chop House restaurant at The Heeren at $108, and a trip to the one at Gemmill Lane at $153; he says this is “unsurprising”.

In contrast, the mains at the defendants’ Luke’s Lobster shacks are: lobster roll ($25.50), crab roll ($23.50), shrimp roll ($21.50), and the Luke’s Trio – halves of each of the above three rolls ($33.50).

Besides a two-page food menu (which also covers beer and some cocktails), the plaintiffs’ restaurants have a 20-page wine and drinks list with a number of wines above $1,000, all the way up to $10,380 for the 1995 Screaming Eagle red wine from Napa Valley.

In an obvious attempt to play up similarities between Luke’s Oyster Bar & Chop House, and the defendants’ Luke’s Lobster shacks, the plaintiffs claimed that amongst their best known and best-selling dishes are “Luke’s Lobster Roll(s); lobster pot pie; whole steamed lobster; Jumbo Lump Crab Cakes; oysters and Signature Foley ‘George Bank Scallops’” [emphasis in original].

The plaintiffs’ own evidence is that lobster-related dishes have contributed only around 5% of their restaurants’ total revenue (see [15] above). The defendants’ Luke’s Lobster restaurants, on the other hand, are overwhelmingly lobster shacks.

I do accept that the plaintiffs’ restaurants have some reputation for, and goodwill in, lobster dishes, including lobster rolls. The plaintiffs’ restaurants have been named in media articles as being among the places in Singapore selling lobster rolls – see, eg Rebecca Lynne Tan, “8 places for lobster rolls in Singapore”, The Straits Times (12 May 2017). But it is as an Oyster Bar, and Chop House, that the plaintiffs’ restaurants are better known for.

The plaintiffs contend that the second defendant’s outlet in Portland Pier, Maine, USA is a “flagship full service restaurant”, and so that Luke’s Lobster outlet has more similarities with the plaintiffs’ restaurants. The Luke’s Lobster shacks in Singapore, however, do not offer as many menu items, or wait service, unlike the Portland Pier one. Nor is there any evidence that the defendants intend to open a Luke’s Lobster outlet in Singapore that is like the Portland Pier one. The evidence of Mr Holden was that the Portland Pier outlet was not a full service restaurant as one would understand that concept: one could have wait service, but one could also order direct; and most of the sales were over the phone or through an online application. Moreover, the time from ordering to food service was almost the same time as in any other Luke’s Lobster shack, it was very much an in-and-out concept, and the outlet turned tables probably three times faster than any other wait-staff model within Portland.

Ultimately, the plaintiffs get nowhere seeking to focus on the Luke’s Lobster outlet in Portland Pier– it is more relevant to compare the plaintiffs’ restaurants with the Luke’s Lobster shacks in Singapore, and the differences are stark (see [134]-[143] above).

The plaintiffs also point to their “Lobster Shack” takeaway event, which ran for two weekends in June 2020, to argue that they and the defendants were not in dissimilar market segments.

That Lobster Shack event was, however, only run for those two weekends, during the near ten-week period in 2020 when dining-in was not allowed (from the start of the “circuit breaker” on 7 April 2020 until dining-in resumed with Phase 2 of re-opening on 19 June 2020). During that event, Luke’s Oyster Bar & Chop House sold lobster rolls at $30 (admittedly, a price closer to the defendants’ $25.50), but since then, the lobster roll has gone back to being a $48 lunch item at the plaintiffs’ restaurants. Indeed, Mr Masiero testified that that the takeaway market “is not a sustainable business model for any restaurant”, whilst also saying that he was keeping his options open.

It is quite clear, though, that if the plaintiffs do expand into the takeaway market, they do not intend to use the name “Luke’s Oyster Bar & Chop House”. For their Lobster Shack event in June 2020, they used the following mark (the “Lobster Shack mark”):

That mark did not bear the name “Luke’s Oyster Bar & Chop House”, or indeed, “Luke’s”.

On 10 September 2020, however, the plaintiffs applied to register the following as a trade mark in Class 43 of the ICGS (the “Lobster Shack by Luke’s mark”):

That was some three months after the plaintiffs’ Lobster Shack event in June 2020. Moreover, the plaintiffs’ application for an injunction against Luke’s Lobster opening in Singapore was pending, headed for a hearing on 16 September 2020. The words, “An Ode to the New England Summer” as used in the Lobster Shack mark were replaced by the words, “by Luke’s”, at a time when the plaintiffs were asserting that “Luke’s” per se is distinctive of them.

The Registry of Trade Marks declined to allow registration of the Lobster Shack by Luke’s mark on the basis that it conflicted with the registered Luke’s Lobster trade marks. Indeed, the plaintiffs’ proposed new mark is confusingly similar to the Luke’s Lobster trade marks, because it uses “Lobster” in conjunction with “Luke’s”. That does not, however, mean that the Luke’s Lobster trade marks are confusingly similar to the plaintiffs’ existing Luke’s Oyster Bar & Chop House trade mark and unregistered Luke’s Oyster Bar & Chop House logo – they are not.

The plaintiffs’ failed attempt to register the Lobster Shack by Luke’s mark as a trade mark, does not show that the plaintiffs genuinely wish to expand into the takeaway/grab and go/lobster shack market under that name. Rather, they simply wished to stop Luke’s Lobster from using its own name in Singapore.

There was also evidence of very long queues at the Luke’s Lobster shack at Isetan. On the other hand, the plaintiffs’ customers were described by Mr Coops as busy people, the sort that go to fine dining restaurants. .The plaintiffs’ customers would likely not be the kind to queue up at the defendants’ Luke’s Lobster shacks (although 6%, ie, some 16 out of 266 interviewees who responded to the Survey (see [84] above), said they had been there, and, in particular, two of them - whose verbatim comments were relied on by the plaintiffs as evidence of confusion (see [94]-[95] above) - had eaten there).

The many differences between the plaintiffs’ restaurants, and the defendants’ Luke’s Lobster shacks in Singapore, reinforce my conclusion that there was no misrepresentation by the defendants’ use of the name “Luke’s Lobster”, and hence no likelihood of confusion. My analysis of the issue of confusion in relation to the trade mark infringement claim (see [76]-[82] above), the plaintiffs’ survey evidence (see [84]-[87] above), and the plaintiffs’ evidence of actual confusion (see [98]-[102] above), is also relevant to the passing off claim – indeed, with a wider range of extraneous factors in play, the plaintiffs’ case for passing off is weaker than their claim for trade mark infringement, which I have already found to be without merit.

Damage

Given the absence of misrepresentation and confusion, the element of damage is also not made out.

Even if there had been some likelihood of confusion, the plaintiffs have a poor case on damage. I glean the following main contentions on the issue:

(a) confusion would lead to some of the plaintiffs’ customers patronising the defendants’ Luke’s Lobster shacks instead of the plaintiffs’ restaurants (direct loss of sales, or blurring);

(b) confusion would lead to some of the plaintiffs’ customers being disappointed with the plaintiffs, because of the lower level of service or standards at the defendants’ restaurants (tarnishment);

(c) the plaintiffs have been restricted from expanding into the takeaway/grab and go/lobster shack market (restriction on expansion);

(d) the plaintiffs would have lost the “exclusivity” in their trade name “Luke’s”;

(e) there is damage arising from the plaintiffs’ customers being confused into thinking that there is an economic association between the plaintiffs and the defendants, exacerbated by both sides running restaurants and thus being competitors.

Direct loss of sales

The plaintiffs cite The Law of Passing Off ([130] above) (at para 4-27) for the proposition that direct loss of sales is the major head of damage in most cases in which the parties are in actual competition. However, the plaintiffs adduce no evidence of direct loss of sales. They do not, for instance, provide sales figures before and after Luke’s Lobster opened in Singapore, to show that that they had lost customers to the defendants. Instead, they simply rely on the Survey to say it showed that confusion was likely; and so it was likely that they had lost, and would lose, business to the defendants. As I have stated above (at [84]-[87] above), I do not consider the plaintiffs’ survey evidence reliable. What is more, none of the 266 participants interviewed for the Survey said that they had eaten at the defendants’ restaurants instead of the plaintiffs’ restaurants. Even the two who provided comments about eating at the defendants’ restaurant (see [94]-[95] above) did not say that if they had not eaten there on those occasions, they would have gone to the plaintiffs’ restaurants instead.

Blurring/tarnishment

Citing Novelty ([120] above) and CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR (R) 975, the plaintiffs contend that confusion would result in:

(a) blurring, ie, loss of the plaintiffs’ business to the defendants; and

(b) tarnishment, ie, the plaintiffs’ customers will think less well of the plaintiffs, because the defendants’ restaurant is not a fine dining establishment like the plaintiffs’ restaurants, but one with lower levels of service and standards.

I have addressed the “blurring” argument in the previous section - the plaintiffs have not shown that they had lost and/or would lose business to the defendants’ restaurants (see [159] above). As for tarnishment, the different dining experiences offered by the plaintiffs and defendants go against the plaintiffs at the misrepresentation/confusion stage of the analysis (see [132]-[146] above).

The plaintiffs’ argument is that the value of their “brand and reputation as a restaurant offering fine dining services” may suffer if it is confused with the defendants’ restaurants, which offers a “fast-food type experience” [emphasis in original]. There is some inconsistency between the plaintiffs’ arguments that, on the one hand, they wish to expand into the takeaway / grab and go / lobster shack market; but on the other hand, they say their brand and reputation would be tarnished to be associated with a fast-food type experience like that.

The evidence shows that the plaintiffs’ brand and reputation is indeed that of restaurants offering fine dining services (see [133]-[140] above). However, the plaintiffs did not think the name “Luke’s” would suffer by being associated with a “lobster shack” when the plaintiffs sought to register the Lobster Shack by Luke’s mark as a trade mark (see [151] above). I do not accept that if a customer of Luke’s Lobster perceived some association between the defendants’ and the plaintiffs’ restaurants, the plaintiffs’ reputation and brand would suffer thereby just because Luke’s Lobster does not offer a fine dining experience.

Restriction on expansion

The plaintiffs cite Novelty ([120] above) (at [117]), which in turn cited Alfred Dunhill Limited v Sunoptic SA [1979] FSR 337, where the English Court of Appeal prevented the defendant from marketing sunglasses under the name “Dunhill” (which the plaintiff used to sell tobacco products). In that case, there was evidence that the plaintiff was planning to produce sunglasses.

The plaintiffs say that they have been restricted from expanding into the takeaway / grab and go / lobster shack market. That is not so.

There is nothing to stop the plaintiffs from expanding into the takeaway / grab and go / lobster shack market. They are free to do so under the name of their restaurants, Luke’s Oyster Bar & Chop House. In that regard, they can use the registered Luke’s Oyster Bar & Chop House trade mark, the unregistered Luke’s Oyster Bar & Chop House logo, and perhaps even the Lobster Shack mark which they used for the Lobster Shack event during the period in between April-June 2020 when dining-in was not allowed. However, from the evidence, including the fact that the Lobster Shack event only lasted two weekends in June 2020 (see [147] above), it does not however appear that the plaintiffs seriously intend to expand into the takeaway / grab and go / lobster shack market - in this vein, as I noted earlier, the plaintiffs’ failed attempt to register the Lobster Shack by Luke’s mark does not show its genuine intention to expand into that market (see [154] above).

Loss of exclusivity in the trade name “Luke’s”

As I have decided in relation to the trade mark infringement claim, the plaintiffs’ trade name is “Luke’s Oyster Bar & Chop House” rather than “Luke’s”, and in any event they have no monopoly or exclusivity over “Luke’s” as a trade name (see [43], [46] and [49] above).

Confusion per se as damage

The plaintiffs argue that confusion in terms of its customers perceiving an economic association between themselves and the defendants is damage, exacerbated by both sides running restaurants and thus being competitors.

I do not accept that confusion per se is equivalent to damage. If damage were presumed once misrepresentation and confusion were proved, that would make it meaningless to regard damage as an element of a passing off claim. I have already stated that in a passing off claim, as in a trade mark infringement claim, initial interest confusion is not sufficient if confusion is not established at the point of purchase (see [72] and [130] above).

In Novelty ([120] above), the Court of Appeal (at [123]) considered Taylor Bros Ltd v Taylors Group Ltd [1988] 2 NZLR 1. In that case, the Wellington Court of Appeal thought that damage had been caused to the plaintiff (which ran a dry-cleaning business under the style “Taylors”, “Taylors Drycleaners” and “Taylors Drycleaning”) by the defendant (which likewise operated a dry-cleaning business in Wellington) trading under the name “Taylors”, because “Taylors” was distinctive of the plaintiff in the field of businesses associated with textile cleaning in the region and there will be a “natural tendency to treat the parties as associated”. However, the Court of Appeal in Novelty commented (at [124]):

In The Law of Passing Off ([130] above), Prof Wadlow suggests that (at para 4-41):

In other words, confusion per se is not damage, but if confusion in a particular case is inherently likely to cause damage, the plaintiff would then not need to go further in proving damage. In the present case, I am not satisfied as to confusion in the first place, and even if there were initial interest confusion, that would not persist to point of purchase and is not inherently likely to cause damage.

In view of the above, I dismiss the plaintiffs’ passing off claim.

Defences

In the circumstances, strictly speaking I do not need to decide on the defences raised to the passing off claim, viz, the defence of prior or concurrent user, and the “own name” defence. I will only make the following brief remarks.

The defence of prior or concurrent user

I accept that the plaintiffs would have established goodwill in “Luke’s Oyster Bar & Chop House” by 2013, some two years after the first of the plaintiffs’ restaurants was opened in 2011, by which time it had achieved revenues of about $4.7m and won an international accolade for the Gemmill Lane restaurant. Luke’s Lobster, on the other hand, only opened in Singapore in September 2020, with pre-launch publicity earlier that year.

In Staywell (CA) ([23] above), the Court of Appeal accepted that goodwill can be generated by pre-trading or pre-business activities (at [140]) which, although need not be revenue-generating, should unequivocally evince the intention of the party to enter into the Singapore market (at [142]). In relation to Luke’s Lobster in the present case, that would not have been until 2020. Luke’s Lobster did have a reputation amongst Singaporeans even earlier than that, but that alone would not amount to Luke’s Lobster having goodwill in Singapore prior to 2020. The defendants argue that the substantial reputation of Luke’s Lobster suffices to negate the reputation of the plaintiffs (and they argue that allows them to rely on the defence of prior or concurrent user even if Luke’s Lobster had no goodwill in Singapore at the material time), but the evidence does not support such an extreme position. Instead, the plaintiffs had their own reputation (and goodwill) in Luke’s Oyster Bar & Chop House, and Luke’s Lobster had its own reputation. As such, I would not have been inclined to accept the defence of prior or concurrent user.

The “own name” defence

The defendants advance the “own name” defence despite AMC ([105] above) where the Court of Appeal expressed the obiter view that the “own name” defence is not a defence to a claim in passing off (at [103]) (see also Taco Company of Australia Inc and another v Taco Bell Pty Ltd and others (1982) 42 ALR 177).

I would not add to the observations in AMC. The point can be decided on another occasion.

Are the Luke’s Lobster trade marks invalid?

The plaintiffs seek a declaration that the Luke’s Lobster trade marks are invalid pursuant to s 23 of the TMA as they were registered in breach of ss 8(2)(b) and/or 8(7) of the TMA. Specifically, the plaintiffs invoke s 8(7) against the defendants for “passing off the [plaintiffs’] distinctive tradename ‘LUKES’ [sic]”.

Section 23(3) of the TMA states:

Section 8(2)(b) of the TMA states:

Section 8(7) of the TMA states:

Whether the Luke’s Lobster trade marks offend against s 8(2)

The plaintiffs submit that the principles relating to infringement under s 27 of the TMA equally apply to s 8(2), and that cases which considered the issue of similarity of marks, similarity of goods/services, and confusion under ss 8(2) and 27(2) of the TMA are applied as authorities interchangeably.

If that were the case, then it would follow from my dismissal of the plaintiffs’ trade mark infringement claim (see [119] above), that the plaintiffs’ claim for invalidity of the Luke’s Lobster trade marks would also fail.

However, the defendants point out that in Staywell (CA) ([23] above), the Court of Appeal had - while noting that the text of the relevant sections of the TMA was essentially the same - recognised a distinction between opposition and infringement proceedings in the analysis of likelihood of confusion (at [55]-[56]). It was very fair of the defendants to point this out, for the distinction could work to their disadvantage.

The Court of Appeal explained the distinction as follows (Staywell (CA) at [56], [60] and [61]):

What I decided on marks-similarity and goods/services-similarly in the context of trade mark infringement applies equally to the invalidity claim. As for the confusion analysis, broadening that to include notional fair uses to which the Luke’s Lobster trade marks may be put, does not lead to any difference in the outcome. I find that the marks are not confusingly similar, whether in relation to the actual or notional fair uses of the Luke’s Lobster trade marks.

Whether the Luke’s Lobster trade marks offend against s 8(7)

In view of my decision to dismiss the plaintiffs’ passing off claim (see [173] above), it follows that the Luke’s Lobster trade marks do not offend against s 8(7) of the TMA. The use of the Luke’s Lobster trade marks is not liable to be prevented by the law of passing off.

I thus dismiss the plaintiffs’ claim that the Luke’s Lobster trade marks are invalid.

Harking back to the trade mark infringement claim, my decision against the plaintiffs on their invalidity claim also means that the defendants have the benefit of the “registered mark” defence under s 28(3) of the TMA (see [116]-[117] above).

The plaintiffs’ survey evidence

These are my comments on the plaintiffs’ survey evidence (see [84] above), which they had put forward to support a finding of confusion for both its trade mark and passing off claims.

First and foremost, the Survey used the Luke’s Oyster Bar & Chop House logo (which is not a registered trade mark) rather than the registered Luke’s Oyster Bar & Chop House trade mark. This was ironic when the plaintiffs were claiming for infringement of a registered trade mark. It was also unhelpful for the court to have to extrapolate, from the Survey which used the plaintiffs’ unregistered logo, how the interviewees might have responded had the plaintiffs’ registered trade mark instead been used for the Survey.

The plaintiffs suggest that there is no real difference between their registered trade mark and unregistered logo, but I do not agree.

Most notably, the Luke’s Oyster Bar & Chop House logo omits the words “Restaurant Group”. Whilst “Travis Masiero” is retained, the logo does not expressly refer to the Luke’s Oyster Bar & Chop House restaurants being part of the Travis Masiero Restaurant Group. While there is still a stated association with Mr Masiero, interviewees might well be unaware of the Travis Masiero Restaurant Group. If the Luke’s Oyster Bar & Chop House trade mark had been used instead, the interviewees would have seen “Travis Masiero Restaurant Group” in the registered trade mark itself. I cannot conclude that the results of the Survey would have been the same had the registered trade mark been used instead of the unregistered logo.

In Han’s ([3] above), one deficiency of the survey was that its questions did not include an apostrophe in the spelling of “Han’s”; the respondents were simply asked whether “H-A-N-S” sounded similar to “H-A-N” (at [166]). Another deficiency was that the survey was conducted over the telephone and so the Han’s marks and the HAN sign (see [34(c)] above) were not shown to the respondents (at [165]). A third deficiency was that there was no reference to the phrase “Cuisine of Naniwa” or the Kushikatsu device in the HAN sign (at [167]).

The phrase “Travis Masiero Restaurant Group” is a significant part of the Luke’s Oyster Bar & Chop House trade mark (see [46] and [60] above) that was not shown as part of the Survey. It was a deficiency for the Survey not to use the plaintiffs’ registered trade mark (but instead the unregistered Luke’s Oyster Bar & Chop House logo) for comparison with the Luke’s Lobster trade marks.

Second, the interviewees did not represent the relevant cross-section of the public, contrary to the Whitford Guidelines (see [86] above). There were 266 participants interviewed for the Survey. They were drawn from the plaintiffs’ mailing list of 18,000 persons. From that mailing list, names were randomly generated, emails were sent to invite their participation (12,000 of such emails were sent), and ultimately 266 participated in the Survey.

The 266 participants were all customers of the plaintiffs: 80% had visited both of the plaintiffs’ restaurants, the remaining 20% had visited one.

The plaintiffs acknowledge that the relevant cross-section of the public comprises the plaintiffs’ actual and potential customers. But the interviewees for the Survey included no potential customers – all of them were actual customers. I cannot conclude that the plaintiffs’ potential customers would have responded in the same way as their actual customers; nor can I postulate how the results of the Survey would have turned out, if potential customers had been included in the sample group.

Third, the survey evidence should directly ascertain the cause of any confusion, and this was not done. In Sarika (HC) ([86] above), this was noted as a shortcoming of the surveys used in that case (at [136]). As the court explained, confusion for the purposes of s 27(2) of the TMA must arise from marks-similarity and goods/services-similarity (at [136]). The survey evidence would be unhelpful if the interviewees had applied a different test in concluding that they were confused.

In Han’s ([3] above), the court found the survey question that was the most relevant to establishing actual confusion to be deficient as a result of how it was phrased – it was leading and would “lead the interviewee into a field of speculation upon which he would not otherwise have embarked” (at [169]–[171]). With that and the other deficiencies (discussed at [195] above), the court placed no weight on the survey findings in so far as they were said to show actual confusion or the likelihood of confusion (at [172]).

Here, the interviewees were not asked any question to ascertain the cause of any confusion.

Moreover, the questions in the Survey were not limited to marks-similarity and goods/services-similarity. As I noted at the outset, the registered Luke’s Oyster Bar & Chop House trade mark was not even shown to the interviewees, instead it was the unregistered Luke’s Oyster Bar & Chop House logo that was shown to them. As all the interviewees were customers of the plaintiffs, in answering the questions, they would likely have drawn on their experience of having dined at the plaintiffs’ restaurants. However, some 36% of them - more than a third – had not heard of Luke’s Lobster in Singapore, and of those who had heard of Luke’s Lobster, only a fraction would have actually been there (the Survey records 6% of interviewees commenting that they had been there including two interviewees who had eaten there: see [155] above). Since the interviewees were much more familiar with Luke’s Oyster Bar & Chop House than with Luke’s Lobster, the responses obtained may thus have taken into account extraneous considerations other than those relating to marks-similarity and goods/services-similarity, which the Court of Appeal in Staywell (CA) ([23] above) had said should not feature in the confusion analysis in a trade mark claim. That would be exacerbated by some interviewees having never heard of Luke’s Lobster or been to the defendants’ restaurants before.

Fourth, I do not consider the Survey to be fair; it was leading or otherwise problematic in various ways. This too was contrary to the Whitford Guidelines.

One of the key objectives of the Survey was to establish “whether LUKE’s [ie, the plaintiffs] customers routinely and commonly refer to ‘LUKE’s’ or by reference to any other trade names such as ‘LUKE’s Oyster Bar’ or ‘Luke’s Oyster Bar & Chop House’”.

Emails were sent to by Mr Masiero to persons on the plaintiffs’ mailing list to invite them to participate in the Survey (see [197] above) (“the Email”). An example of the Email appears below:

The Email bore the unregistered Luke’s Oyster Bar & Chop House logo, rather than the plaintiffs’ registered Luke’s Oyster Bar & Chop House trade mark which carried the phrase “Travis Masiero Restaurant Group”. The first sentence of the Email read, “[t]his is Travis from Luke’s”.

This was unhelpful. One of the key objectives of the Survey was to find out if the participants referred to the plaintiffs’ restaurants as “Luke’s”, and here was restaurateur Mr Masiero doing just that in his initial email inviting participants for the Survey. In effect, Mr Masiero was saying to them, “I refer to my restaurants as ‘Luke’s’”, before they were then asked in the Survey, “what do you refer to the restaurants as?” This was leading. The fact that the Survey may have been conducted a couple of weeks after the Email, does not render the Email insignificant.

When the Survey was conducted (in the period of 11 December 2020 to 5 January 2021), the defendants had already opened their first Luke’s Lobster shack in Singapore – the one at Isetan, Shaw House, opened in September 2020 (see [8] above).

The interviewees were first asked some introductory questions, including Question 3 which showed four restaurant logos including the unregistered Luke’s Oyster Bar & Chop House logo (but not those of Luke’s Lobster’s yet).

Then, interviewees were asked Question 6 (with reference to the restaurants identified by the logos shown in Question 3 - including the Luke’s Oyster Bar & Chop House logo): “If you were … going to meet friends or colleagues for lunch or dinner at each of these … how would you refer to the restaurant to them in your conversation or text message?” 76% responded “Luke’s”, 19% responded “Luke’s” together with either Gemmill Lane or The Heeren (where the plaintiffs’ restaurants were respectively located), and only 6% responded with a fuller name, “Luke’s Oyster Bar & Chop House”, “Luke’s Oyster Bar”, or “Luke’s Chop House”.

By its nature, Question 6 would tend to elicit responses with more casual references to the plaintiffs’ restaurants, as compared to, eg, “what is the name of this restaurant?” While one objective of the Survey was to find out if the plaintiffs’ customers referred to the plaintiffs’ restaurants as “Luke’s”, other objectives were to establish “the reaction of customers to [the Luke’s Lobster trade marks] (i.e. whether they perceive a link between these marks and [the plaintiffs])”, and “whether or not consumers perceive an association between Luke’s Lobster and [the plaintiffs] and if so, the likely nature of this relationship”, ie, to obtain evidence for the plaintiffs’ claims. By eliciting from the interviewees responses which were either just “Luke’s” or would start with “Luke’s”, as a precursor to showing them the Luke’s Lobster trade marks (which also included the word “Luke’s”), Question 6 would tend to shape the interviewees’ thinking.

That shaping process continued through Questions 7 and 8.

Question 7 sought to understand what types of foods were most strongly associated with the plaintiffs’ restaurants. The restaurant name which the participant identified with the Luke’s Lobster & Chop House logo and mentioned in response to Question 6, was used for Questions 7 and 8A, ie, if a participant had said “Luke’s” to Question 6, the interviewer would then refer to the plaintiffs’ restaurants as “Luke’s” for the purposes of Questions 7 and 8A. Given that 76% had responded “Luke’s” to Question 6, this would have reinforced the association of the plaintiffs’ restaurants with the name “Luke’s”, before the Luke’s Lobster trade marks were shown as part of Question 9.

Question 7 was not an open-ended question, four choices were suggested: seafood, meat, poultry, vegetarian; participants could pick more than one. The responses were: 90% seafood; 88% meat; 2% vegetarian. Food spontaneously mentioned was also noted: 25% steak; 14%, oysters; but only 2% lobster rolls / sliders / lobster, mac & cheese.

Question 7 would have been fairer as an open-ended question. If that had been done, instead of offering “seafood” as one of four choices, less than 90% might have responded, “seafood”. For instance, an interviewee who might have said “oysters” to an open-ended question, could have ended up picking “seafood” because that was one of four choices offered. A “seafood” response to Question 7 would then open the door to Question 8A about the types of seafood associated with the plaintiffs’ restaurants, including lobsters.

If an interviewee had mentioned “seafood” in response to Question 7, he would be asked Question 8A: which types of seafood did he associate with the plaintiffs’ restaurants? Again, this was not an open-ended question, the choices suggested were: fish, oysters, shrimp / prawns, lobster, clams, crab, scallops, caviar. The responses were: 96% oyster; 78% lobster, 63% shrimp / prawns, 60% fish, etc. As with Question 7, if Question 8A had been an open-ended one, less interviewees might have said “lobster”.

All interviewees were then asked Question 8B, which asked them to describe the dining experience at the plaintiffs’ restaurants (referred to as “Luke’s Oyster Bar & Chop House at Orchard Road and/or Gemmill Lane”).

Question 9 about the Luke’s Lobster trade marks came only after questions about how interviewees referred to the plaintiffs’ restaurants (Question 6); the types of foods served there, including “seafood” as a choice (Question 7); the types of seafood, including “lobster” as a choice (Question 8A); and the dining experience at the plaintiffs’ restaurants (Question 8B).

Question 9 involved showing interviewees the Luke’s Lobster trade marks, and asking them what was the first thing that came to their minds. The responses were then grouped into categories: awareness related; perceived connection or disconnection between Luke’s Lobster and the plaintiffs’ restaurants; experience with Luke’s Lobster; and opinions on the Luke’s Lobster trade marks.

Interviewees were then asked Question 10: whether they had previously heard of a restaurant called Luke’s Lobster in Singapore. Only 64% of the interviewees said they had. Those who were aware of the Luke’s Lobster restaurant in Singapore were then asked Question 11A: “When you first heard of or saw ‘Luke’s Lobster’, what was your immediate reaction?” Those who were unaware of the Luke’s Lobster restaurant in Singapore were asked Question 11B: “If I told you that a new restaurant called ‘Luke’s Lobster’ has just opened in Singapore, what would be your immediate reaction?”

Questions 12A and 12B were the most directly relevant to the issue of confusion. Question 12A was:

The four statements were:

It is unfortunate that Question 12A referred to the Luke’s Oyster Bar & Chop House restaurants as “Luke’s”. Even if an interviewee had not said “Luke’s” in response to Question 6 when asked how he would refer to the plaintiffs’ restaurants in a conversation or text message (see [211] above), here he was being told, the plaintiffs’ restaurants are referred to as “Luke’s”, and then asked about the perceived association between “Luke’s Lobster” and “Luke’s”. That was not a fair question, it would lead the interviewees to think of the plaintiffs’ restaurants as “Luke’s”, even if they had not initially thought of them as such.

The phrasing of the four statements (set out in [223]) is also problematic. The statement “‘LUKE’S LOBSTER’ and ‘LUKE’S’ are part of the same group or business organisation” has a negative counterpart, ie, “‘LUKE’S LOBSTER’ and ‘LUKE’S’ are not part of the same group or business organisation”. But there is no negative counterpart to “‘LUKE’S LOBSTER’ and ‘LUKE’S’ are connected or affiliated in some way” - the statement “‘LUKE’S LOBSTER’ and ‘LUKE’S’ are not connected or affiliated in some way” was not one of the choices offered. Interviewees were thus presented with two positive choices, and only one negative choice (the opposite of one of the positive choices). That could have skewed the results. It is much like asking interviewees whether they think “LUKE’S LOBSTER” and “LUKE’S” are part of the same group or business organisation; and then asking those who say, “no”, whether they are nevertheless connected or affiliated in some way.

That is essentially what was done in Sarika (HC) ([86] above) where the survey respondents who thought it was unlikely that the manufacturer of “Nutella” produced “Nutello” were then asked whether it was likely that the manufacturer of “Nutella” had authorised the use of the name “Nutello” (at [120]). As the court commented, that may have planted in the minds of the survey respondents the possibility of a licensing arrangement between the manufacturer of Nutella and the defendants when they would not, of their own accord, have considered such a possibility (at [121]). In Han’s ([3] above), where one of the survey questions had asked respondents if they thought “H-A-N-S” (referring to the plaintiff) and “H-A-N” (referring to the defendant) belonged to the same management (at [164]), the court similarly considered that question to be problematic for it bluntly introduced the possibility to the survey respondents that the plaintiff and defendant might be under the same management, when that might not have reasonably occurred to them in the first place (at [171]).

It would have been simpler and safer just to ask interviewees whether Luke’s Lobster and the Luke’s Oyster Bar & Chop House restaurants were associated or not.

As it was, the responses to Question 12A were as follows:

(a) of all the interviewees, 59% said they perceived some association between Luke’s Lobster and the plaintiffs’ restaurants, 23% said they were not part of the same group or business organisation, and 17% were not sure if they were related or not;

(b) of those who were aware of the Luke’s Lobster restaurant in Singapore, 54% perceived some association between Luke’s Lobster and the plaintiffs’ restaurants, 32% said they were not part of the same group or business organisation, and 14% were not sure if they were related or not;

(c) of those who unaware of the Luke’s Lobster restaurant in Singapore, 72% perceived some association between Luke’s Lobster and the plaintiffs’ restaurants, 6% said they were not part of the same group or business organisation, and 23% were not sure if they were related or not.

The responses to Question 12A indicate that the plaintiffs’ customers who were aware of the Luke’s Lobster restaurant in Singapore were less likely to perceive some association between the plaintiffs’ restaurants and Luke’s Lobster.

Interviewees were then asked Question 12B:

Interviewees were asked to pick between the same four statements as for Question 12A (see [223] above), with the same problems I have discussed above (see [224]–[226]).

The responses to Question 12B were as follows:

(a) of all the interviewees, 36% said they perceived some association between Luke’s Lobster and the plaintiffs’ restaurants, 47% said they were not part of the same group or business organisation, and 17% were not sure if they were related or not;

(b) of those who were aware of the Luke’s Lobster restaurant in Singapore, 25% perceived some association between Luke’s Lobster and the plaintiffs’ restaurants, 64% said they were not part of the same group or business organisation, and 11% were not sure if they were related or not;

(c) of those who unaware of the Luke’s Lobster restaurant in Singapore, 59% perceived some association between Luke’s Lobster and the plaintiffs’ restaurants, 13% said they were not part of the same group or business organisation, and 27% were not sure if they were related or not.

Those who were unaware of the Luke’s Lobster restaurant in Singapore could not sensibly have answered Question 12B which asks what they thought after they saw the new Luke’s Lobster restaurant in Isetan or found out more information on it. By definition, those interviewees had never seen that Luke’s Lobster restaurant nor found out more information on it – they had not heard about it until Question 10 was put to them (see [221] above). Yet responses were recorded from all 84 such interviewees. Curiously, after having supposedly ‘seen’ or ‘found out’ more information about the Luke’s Lobster restaurant in Singapore, the proportion of them who perceived some association between Luke’s Lobster and the plaintiffs’ restaurants dropped from 72% to 59%, and the proportion who said they were not part of the same group or business organisation rose from 6% to 13% (see [228(c)] and [232(c)] above).

Turning to those who were aware of the Luke’s Lobster restaurant in Singapore: after seeing that Luke’s Lobster restaurant or finding out more information on it, the proportion of them who perceived some association between Luke’s Lobster and the plaintiffs’ restaurants fell from 54% to 25%, and the proportion who said they were not part of the same group or business organisation rose from 32% to 64% (see [228(b)] and [232(b)] above).

The Survey thus suggests that the more that a customer of the plaintiffs knows about Luke’s Lobster, the less likely he is to think it is associated with the plaintiffs’ restaurants.

As I noted above (at [200]–[203]), no questions were posed in the Survey to ascertain the cause of any perceived association between Luke’s Lobster and the plaintiffs’ restaurants. In Sarika (HC) ([86] above), neither party’s survey there had ascertained the cause of confusion (at [136]). The court suggested that “why” questions could have been asked of those who perceived some association between the two sides (at [139]-[140]). That was also not done in the present case.

Instead, any interviewee who had not mentioned “lobster” in response to Question 8A (see [217] above) would be asked Question 13: “… does Luke’s Oyster Bar & Chop House in The Heeren and/or Gemmil [sic] Lane serve lobster dishes or are you not sure?” As the report of the Survey states, 186 had mentioned “lobster” in response to Question 8A, and another 55 “who didn’t associate lobster with LUKE’s initially did so when prompted in [Question 13].” Questions 7, 8A and 13 only test whether interviewees associate lobster dishes with the plaintiffs’ restaurants, or are aware that they serve lobster dishes. The responses do not mean that the plaintiffs’ restaurants had a reputation for, or goodwill in, lobster dishes. To illustrate the point bluntly, a person who did not like the lobster dishes at the plaintiffs’ restaurants could still say that he associated the plaintiffs’ restaurants with lobster (as a type of seafood) in response to Question 8A, or at least that he was aware that the plaintiffs’ restaurants did serve lobster dishes in response to Question 13.

Fifth, there was late disclosure of the whole of the Survey. The Whitford Guidelines (see [86] above) require that the totality of the answers given be disclosed and made available to the defendants (Sarika (HC) at [134]; Han’s ([3] above) at [31]). The 266 original questionnaires were, however, only provided on Friday, 5 March 2021, shortly before the trial commenced on Tuesday, 9 March 2021. Mr Coops acknowledged that at least a month would be needed to review all the questionnaires. The defendants could not have done so and proceeded with the trial as scheduled.

In the event, the defendants proceeded with the cross-examination of Mr Coops without reference to the original questionnaires. At the close of the evidence, counsel on both sides agreed that neither side would refer to the original questionnaires in their submissions.

Sixth, the interviewees were not shown a photograph of the Luke’s Lobster shack at Isetan, or the defendants’ Luke’s Lobster menu; but only the Luke’s Lobster trade marks. On the other hand, all of the interviewees were customers of the plaintiffs, and would have seen the plaintiffs’ restaurants and the plaintiffs’ menus. The Survey did not facilitate a like-for-like comparison of the get-up of the plaintiffs’ restaurants and that of the Luke’s Lobster restaurant at Isetan; any comparison was not based on actual market conditions, which have a significant impact on how the marks are perceived and consequently, the likelihood of confusion (see Han’s at [162] and [202]; Subway ([81] above) at [51]).

For the above reasons, I placed no weight on the plaintiffs’ survey evidence.

Conclusion

What’s in a name? The plaintiffs’ restaurants are named “Luke’s Oyster Bar & Chop House”, a name that is reflected in their registered trade mark and unregistered logo. The defendants’ lobster shacks are named “Luke’s Lobster”, a name for which the second defendant has registered trade marks. I have decided that the parties’ respective marks and businesses can co-exist, without the relevant public being confused. The defendants may continue to use the name “Luke’s Lobster” in Singapore.