Court of Appeal · Decided 15 March 2013

Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal

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[2013] SGCA 26Case no. Civil Appeals Nos 1 and 2 of 2012

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Sundaresh Menon CJ (delivering the judgment of the court):
Introduction
Background to the appeals
Parties to the dispute
[2] Hai Tong is a company incorporated in Singapore engaged in the business of importing, exporting, distributing and selling cosmetics, sundries and beauty accessories, including a range of cosmetic products that has been marketed under the brand “Lady Rose”. Hai Tong is the registered proprietor of the following mark (“the Composite Mark”):
[3] Ventree is a company incorporated in Singapore engaged in the business of importing, exporting and distributing cosmetic products. Ventree also distributes a line of cosmetic products. These products are sold under the brand name “Rose Lady” pursuant to a Sole Agent Agreement dated 15 July 2009 between Ventree and the manufacturer of these products, VOV Cosmetics Co Ltd (“VOV”). VOV, which is party neither to the proceedings below nor to the present appeals, is a company incorporated in South Korea and the registered proprietor of the “VOV” trade mark in Singapore. Sky is a partnership incorporated in Singapore. It operates a retail department store at People’s Park Complex selling, among other things, cosmetics and perfumes, including cosmetic products under the “Rose Lady” brand.
Background facts
[4] The Composite Mark was registered by Hai Tong’s predecessor in 1970. It has been in use since 1960, even before it was registered. Hai Tong distributes “Lady Rose” products to various retailers across Singapore. These include department stores such as Robinsons as well as other retail cosmetics stores in the heartlands. Hai Tong also sells these products to walk-in customers at its shop in Sago Lane.
[5] Since 15 July 2009, Ventree has been importing three of VOV’s “Rose Lady” products, namely, “VOV” Rose Lady Cover Foundation, “VOV” Rose Lady Skin Cover and “VOV” Rose Lady Two Way Cake (“the allegedly infringing products”). The allegedly infringing products contain an ingredient, rosa canina, or essence of dog rose. They are sold in peach-coloured packaging printed with the product name, which includes the words “Rose Lady” (“the Sign”) accompanied by sketches of flowers with five petals in various sizes in the background. The Sign was never registered under the Act. The allegedly infringing products were sold at various retail shops across Singapore, including department stores such as John Little and some retail cosmetics shops, including Sky’s retail store. Sky previously used to sell the allegedly infringing products until sometime in 2005 when it ceased doing so. It resumed selling one of the allegedly infringing products, namely, “VOV” Rose Lady Skin Cover, in January 2010.
[6] On 1 August 2010, Hai Tong instituted Suit No 669 in the High Court against the Defendants, claiming that they had infringed the Composite Mark by importing and offering for sale the allegedly infringing products. Hai Tong also claimed that the Defendants had passed off the allegedly infringing products as Hai Tong’s goods.
[7] Ventree claimed in its defence against Hai Tong’s claim for trade mark infringement that:
(a) the words “Rose” and “Lady”, as well as the flowers printed on the packaging of the allegedly infringing products, were not used as trade marks to indicate the origin or source of manufacture, but were instead used in a descriptive manner to describe the rosa canina ingredient used in these products, with the flowers serving a purely decorative purpose;
(b) its cosmetic products were in fact marketed and sold under the “VOV” brand;
(c) the words “Rose” and “Lady” and the flowers printed on the packaging of VOV’s cosmetic products were entirely different from the words and the floral device in the Composite Mark; and
(d) there was no likelihood of any confusion that the two lines of products might have a common origin.
[8] Ventree also denied Hai Tong’s claim in the tort of passing off, and counterclaimed against Hai Tong under s 35(2) of the Act for groundless threats of trade mark infringement proceedings. Sky’s position was materially similar to that of Ventree. Indeed, the Defendants were represented by the same counsel in the proceedings below as well as in the present appeals.
Decision below
[9] The Judge allowed Hai Tong’s claim for trade mark infringement under s 27(2)(b) of the Act, but dismissed its claim in the tort of passing off. The Judge’s grounds of decision can be found in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another [2012] SGHC 104 (“the GD”).
[10] As regards Hai Tong’s claim under s 27(2)(b) of the Act, the Judge found that Hai Tong had successfully proved all the elements necessary to constitute a valid claim of trade mark infringement. His analysis may be summarised as follows:
(a) The Sign was not merely a descriptor of the rosa canina ingredient, but was used in the course of trade, ie, as a badge of origin (even though it functioned as a “secondary identifier” to the “VOV” mark) (at [18] of the GD).
(b) The Sign was visually, aurally and conceptually similar to the Composite Mark and, in the overall comparison, similar to the Composite Mark (at [19] and [23]–[25] of the GD).
(c) The Sign was used on goods that were identical to those for which the Composite Mark had been registered, namely, cosmetic products comprising ladies’ skin cover and foundation products (at [27] and [30] of the GD).
(d) There was a likelihood of confusion on the part of the public that the allegedly infringing products came from the same source as “Lady Rose” products or from economically-linked sources. This was because: (i) there was a high degree of similarity between the Composite Mark and the Sign; (ii) both the Composite Mark and the Sign were applied to goods of an identical nature; (iii) these goods were marketed in similar retail locations such as department stores and cosmetics shops; and (iv) the goods targeted the same group of customers, namely, females who used cosmetics (at [30]–[32] of the GD).
[11] As regards Hai Tong’s claim in the tort of passing off, the Judge dismissed it for the following reasons:
(a) Hai Tong only had “trivial” goodwill (at [39] of the GD). The Judge based this on Hai Tong’s sales figures, which, in his view, were “not particularly impressive” (at [36] of the GD), as well as on the lack of any effort by Hai Tong to advertise its products since 1979 (at [36] and [39] of the GD).
(b) Hai Tong failed to adduce any evidence that there was damage or a likelihood of damage to its trivial goodwill. The Judge noted that there was “no good commercial reason” (at [40] of the GD) for the Defendants, who, in his view, were importing or offering for sale products marketed under a better known brand than “Lady Rose”, to pass off their goods as those marketed under an inferior brand (at [38] and [40]–[41] of the GD).
[12] In the light of his decision, the Judge granted the following orders, that:
Issues before this court
[13] The parties, between them, have appealed against the whole of the Judge’s decision. Accordingly, the issues before us are: (a) whether the Judge was correct in finding that the elements of Hai Tong’s trade mark infringement claim under s 27(2)(b) of the Act had been made out on the evidence; and (b) whether the Judge was correct in finding that Hai Tong only had “trivial” goodwill and that it had failed to prove that there was damage or a likelihood of damage to such goodwill.
Our decision in CA 2 of 2012
[14] We first deal with the appeal in CA 2 of 2012, which is the Defendants’ appeal against the Judge’s holding that the Composite Mark had been infringed. The claim in this case was founded on s 27(2)(b) of the Act, but it bears noting that the Act prescribes a cascading regime for trade mark protection that varies according to the degree of similarity between the registered mark and the allegedly infringing sign and the degree of similarity between the goods or services for which the mark is registered and those in relation to which the allegedly infringing sign is used. At the simplest level, where the registered mark and the allegedly infringing sign are identical and the goods or services for which the mark is registered and those in relation to which the allegedly infringing sign is used are also identical, infringement is constituted without more under s 27(1) of the Act. On the other hand, where there is no similarity between the goods or services for which the mark is registered and those in relation to which the allegedly infringing sign is used in the course of trade, several further elements will have to be shown. These are set out in s 27(3) and include proof that the mark in question is well known, and that the use of the mark on the alleged infringer’s goods or services would indicate a connection between those goods or services and the proprietor of the mark; and further, that as a result, there is a likelihood of confusion on the part of the public and a likelihood that the interests of the trade mark proprietor will be damaged.
[15] The trade mark infringement claim under s 27(2) of the Act occupies a space between the preceding two categories of infringement. Specifically, for its claim under s 27(2)(b) to succeed, Hai Tong has to prove the following elements:
(a) the Sign is similar to the Composite Mark;
(b) the Sign is used in relation to goods or services identical with or similar to those for which the Composite Mark is registered; and
(c) on account of the presence of the first two conditions, there exists a likelihood of confusion on the part of the public.
[16] These requirements are cumulative, so that if either of the first two elements is not satisfied, an inquiry into the third will not arise and the claim under s 27(2)(b) of the Act will fail (see this court’s observations in Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2013] 1 SLR 531 (“Sarika”) at [14] and The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo (CA)”) at [8]). In Polo (CA), this court observed (at [8]) that there was no infringement under s 27(2)(b) of the Trade Marks Act (Cap 332, 1999 Rev Ed) (“the 1999 TMA”), which is identical to s 27(2)(b) of the Act, if the likelihood of confusion was brought about by some factor other than the similarity between the registered mark and the allegedly infringing sign and the similarity between the goods or services for which the former was registered and those in relation to which the latter was used.
Threshold issue: use in the course of trade
[17] But, before assessing Hai Tong’s claim against these requirements, there is a threshold issue. Hai Tong must first show that the Sign was used in the course of trade, ie, as a means of distinguishing the goods or services in question as to their origin (see City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 (“City Chain”) at [35]–[36]). This is provided for in the opening words of s 27(2) of the Act and may be contrasted with a sign that is used for purely decorative purposes, as was the case in City Chain (at [38]), or purely to describe the product or service in question or some element thereof.
[18] We agree with the Judge that the Sign was used in the course of trade. When a sign consists of or incorporates common or generic words that may also describe the product or service in question, it may not be obvious that those words are being used in the course of trade. But here, we agree with the Judge’s observation that the combination of two common words can result in a sign that goes beyond merely describing the product in question and serves instead to distinguish it as to its origin (at [12] of the GD). The Judge found that the words “Rose” and “Lady”, when combined as “Rose Lady”, did indeed acquire such a character (at [13] of the GD). That this was in fact so in this case became even clearer when one of the partners of Sky, in the course of his testimony, conceded that the words “Rose Lady” were used as the name of a particular range of products rather than to describe any of the ingredients in the products (see [13] of the GD). We disagree with the Defendants’ submission that any distinctiveness in the combined use of the two words “Rose” and “Lady” had to be acquired through usage, advertising and promotion. This submission is misplaced because at this threshold stage of the inquiry, the court, in considering the allegedly infringing sign, is only concerned with whether or not that sign is being used to distinguish the goods (or services) of a particular trader and not merely to describe or decorate the goods on which it has been applied. Given the concession referred to above, the contrary was not seriously arguable.
[19] The Defendants also argued that the real badge of origin in this case was the registered mark “VOV”. But, there is no reason why the Sign could not function as a badge of origin alongside the “VOV” mark and so be said to be used in the course of trade. The Judge held (at [15] of the GD) that a product might have more than one trade mark, and this is correct. Secondary product identifiers and signs which are used to distinguish between different product lines of the same manufacturer can function as trade marks if they indicate to the consumer that the product in question originates from a particular undertaking (see Richemont International SA v Da Vinci Collections Pte Ltd [2006] 4 SLR(R) 369 at [14] and [39]–[40] as well as [15] of the GD).
[20] Moreover, even if the words “Rose Lady” were capable of being descriptive in nature, which we find not to be the case, we are satisfied that the Sign in this instance was in fact used as a badge of origin. In Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd and another and another appeal [2000] 2 SLR(R) 214 at [28], in relation to whether the word “Coffeemix” in the defendants’ “INDOCAFE Coffeemix” line of products was used in the course of trade, this court said:
Here, as the Judge correctly observed, the Sign was “prominently displayed” on the packaging of the allegedly infringing products (see [18] of the GD). Moreover, the inclusion of the words “Rose Lady” on the packaging would not, without more, have been understood as a mere description of the rosa canina ingredient.
[21] We therefore agree with the Judge that the Sign was used in the course of trade as a badge of origin and accordingly turn to the substantive elements of a claim under s 27(2)(b) of the Act.
Similarity or identity of the goods or services
[22] The Defendants have conceded that the Sign is used on goods that are identical in nature to those for which the Composite Mark is registered, ie, cosmetics. This element is therefore not in issue before us. However, the fact that the Composite Mark and the Sign are being used on identical goods will, as noted below (at [97]–[98]), have a bearing on the overall assessment of the likelihood of confusion. Also, once it has been established (or, as in this case, admitted) that the goods for which the Composite Mark has been registered are identical to those in respect of which the Sign is being used, then there is no longer any occasion to examine whether the two sets of goods are similar. Nor specifically, therefore, is there any occasion to consider those factors that are relevant to establishing the degree of such similarity, such as the trade channels through which the goods are distributed or marketed, or whether they are placed on the same shelves or are separated, or such other factors as were identified in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”) at 296–297 – see Susanna H S Leong, Intellectual Property Law of Singapore (Academy Publishing, 2013) (“IP Law of Singapore”) at paras 28.354–28.358, and Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (Sweet & Maxwell, 2009 Rev Ed) at para 21.5.13.
Similarity between the Composite Mark and the Sign
[23] The first issue that does arise is whether the Judge was right in finding that the Composite Mark and the Sign are similar. We set out below the Composite Mark and the Sign:
[24] The Composite Mark and the Sign are not identical, but the purposes of the law would not be met by a rule that only prohibits the later use of an identical mark. This would leave the owner of the earlier registered mark with protection that may prove too limited. On the other hand, it would be unfair to subsequent entrants to the market if they are prevented from using ordinary words or devices that may have some similarity to what has already been registered. Where the contesting marks are used on goods of an identical or sufficiently similar nature, the law seeks to strike a balance between these interests having regard to various considerations, one of which is the distinctiveness of the registered mark. This can be traced to the origins of statutory trade mark protection. When the English Parliament finally passed a law in 1875 to allow the registration of trade marks, it provided that only “special and distinctive” words could be registered as trade marks. Where the words were invented or had no direct reference to the quality or character of the goods in question, an action for infringement would lie and there would be no need to prove actual confusion on the part of customers or a fraudulent intent on the part of the defendant. In effect, the trade mark owner was recognised as having a property right in his mark. Where, however, ordinary descriptive words were used, an action would only lie in passing off and only to the extent that the plaintiff could show that the words had acquired distinctiveness through use and also prove deception – see Daniel M McClure, “Trademarks and Unfair Competition: A Critical History of Legal Thought” (1979) 69 Trademark Rep 305 at pp 313–314.
[25] Of course, the law has developed since then, but the lack of any distinctive character remains an absolute ground for refusing to register a mark under ss 7(1)(b)–7(1)(d) of the Act unless the applicant can come within s 7(2) by showing that before the date of the application for registration, the mark has “in fact acquired a distinctive character as a result of the use made of it”. In relation to registered marks, the question of distinctiveness remains a relevant inquiry in assessing similarity between the registered mark and the allegedly infringing sign when considering a claim for trade mark infringement. In Sarika, this court noted (at [20]):
[26] Distinctiveness is considered within the assessment of similarity, as noted by this court in Sarika. However, for the purpose of elucidating the analytical process, we have highlighted it here as a separate step. Once that has been considered, the next consideration is the overall assessment of whether the registered mark and the allegedly infringing sign are similar having regard also to their distinctiveness; and if they are similar, whether such similarity, coupled with the identical nature of the goods in question here, is likely to cause confusion in all the circumstances. We address each of these elements below.
Distinctiveness
[27] In the inquiry into distinctiveness, the focus is not on whether the defendant’s allegedly infringing sign is being used in the course of trade (see above at [17]–[20]). Rather, having crossed that threshold, it becomes relevant to examine the distinctiveness of the plaintiff’s registered mark in order to determine the extent of the latitude that will be allowed to a user of features that appear in that mark. But, what is the essence of distinctiveness? It is helpful to begin with the definition of a trade mark as provided for in s 2(1) of the Act:
[28] For present purposes, what is relevant is that a trade mark must be capable of distinguishing the origin of the goods or services in question. It has been observed in Nation Fittings (M) Sdn Bhd v Oystertec plc and another suit [2006] 1 SLR(R) 712 (“Nation Fittings”) at [136] that this in fact prescribes an initial, albeit low, threshold that all aspiring trade marks must clear. Distinctiveness thus connotes the sense that the trade mark is capable of saying something meaningful not about the goods or services in question, but rather, about whence these have come.
[29] Where a trader chooses a word or mark that is purely inventive or fancy in the sense that it is made up and has no meaning at all, or that is arbitrary in the sense that it has nothing relevant to say about the goods in question themselves, then from the perspective of trade mark law, it will be regarded as distinctive. As we recently observed in The Singapore Professional Golfers’ Association v Chen Eng Waye and others [2013] SGCA 18 (“Chen Eng Waye”) at [29]:
[30] The position potentially gets more complicated where what is at issue are words or concepts that are in common use. Here, it will be necessary to consider whether the words mean something, and if they do, whether they serve in truth to describe the goods or services in question rather than as a badge of origin. The difficulty is compounded because traders registering a mark are often tempted to use words or symbols that describe their goods in glowing terms; but, if the words do no more than describe the goods, they may be found not to be distinctive at all. There is an additional point, in that the more fancy or inventive or arbitrary a mark, then in general, the greater the protection it will receive, in the sense that the defendant would have to demonstrate to a more compelling degree that his mark or sign is indeed dissimilar from the registered mark (see Sarika at [20], Polo (CA) at [10] and Ozone Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459 (“Ozone Community”) at [44]). On the other hand, the more descriptive a mark, the greater the latitude afforded to the defendant in using words or ideas of a generic nature, even if these have some similarity to what is found in the registered mark. This follows as a matter of common sense from the fact that in order to balance the interests of honest traders who enter the market later, the rule that proscribes impermissible similarity cannot be applied in precisely the same manner to a mark that uses common descriptive words or devices as to one that does not. Otherwise, the law would prevent the legitimate use of an unacceptably large spectrum of common words and ideas. We therefore begin by examining the distinctiveness of the Composite Mark; then in that light, we turn to consider the similarity of the Composite Mark and the Sign (see Intuition Publishing Ltd v Intuition Consulting Pte Ltd [2012] SGHC 149 (“Intuition Publishing”) at [41]).
Distinctiveness of the Composite Mark
[31] Some marks are inherently distinctive because they consist of inventive words without any meaning at all (eg, “Volvo” (see Polo (CA) at [23]) or “Nutella” (see Sarika at [36])). But, inherent distinctiveness can arise either because the words used in a mark are completely inventive and meaningless, or because even though they may have a meaning, they are used in a way that is completely arbitrary in relation to the goods or services in question. When used in this way, the words comprising the mark have no notional or allusive quality at all and say nothing about the goods or services in relation to which the mark is used.
[32] Even a mark that is not inherently or obviously distinctive may become so by use. As to whether this is so, the matter may be assessed at the time of an application for registration of a trade mark pursuant to s 7(2) of the Act; or subsequently in an application for revocation under s 23 of the Act, where, if the application is founded on the assertion that the trade mark in question lacks distinctiveness on one or more of the grounds set out in s 7(1)(b), s 7(1)(c) or s 7(1)(d) of the Act, the application will fail if “in consequence of the use which has been made of [the trade mark], it has after registration acquired a distinctive character in relation to the goods or services for which it is registered” (see s 23(2) of the Act).
[33] In this regard, it may be helpful to have regard to the following factors that were considered by the High Court in Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012] 3 SLR 193 (“Subway Niche”) in determining whether a mark had acquired distinctiveness through use (see Subway Niche at [21]):
(a) the market share held by the registered mark;
(b) the nature of its use (whether or not it was intensive, widespread and long-standing);
(c) the amount invested in promoting the mark;
(d) the proportion of the relevant class of individuals who identified goods sold under the mark as emanating from a particular source; and
(e) any statements from trade associations and chambers.
[34] These are helpful though by no means exhaustive indicia in assessing whether or not the relevant segment of the public is likely to view common words or ideas used in a mark as a badge of origin rather than merely as a description of the goods in question or some element or feature thereof. The Judge, in discussing Hai Tong’s passing off claim, made certain findings and observations which formed the basis of his finding that Hai Tong had only “trivial” goodwill (see [39] of the GD). First, the Judge found that Hai Tong had not conducted any market survey which indicated its market share in the cosmetics industry. Secondly, the Judge noted that the annual sales figures provided by Hai Tong in relation to its “Lady Rose” products did not show how much of these sales related to its cosmetic products as opposed to its other non-cosmetic products, and even then, the Judge thought these sales figures “were not particularly impressive” (see [36] of the GD). Thirdly, the Judge noted that Hai Tong had not advertised its products since 1979, and that although Hai Tong claimed that it had an ongoing incentive promotion programme of providing free goods to retailers, no evidence of actual advertising and promotion to the public had been adduced. The Judge also noted that Hai Tong had not adduced evidence that the benefits of the alleged incentive promotion programme that it ran were in fact extended by its retailers to the public. Although the Judge’s observations were made in the context of his consideration of whether Hai Tong had the requisite goodwill to sustain its claim in the tort of passing off, the Defendants relied in CA 2 of 2012 on these findings to contend that apart from the fact that the Composite Mark had been used in trade for more than 40 years, there was little else to suggest that it had achieved a significant degree of distinctiveness through use.
[35] In our judgment, this contention was ultimately misplaced. Although no application was brought for the revocation of the Composite Mark, the Defendants did bring a counterclaim founded on their contention that Hai Tong’s threats of trade mark infringement proceedings were groundless, and under s 35(4) of the Act, such a counterclaim would be well founded if the Defendants could show that the registration of the Composite Mark was liable to be revoked. However, the attempt to contend that this should be the case because of any lack of distinctiveness in the Composite Mark was unfounded. Of course, the words “Lady” and “Rose”, when used separately, are not inventive words or phrases. However, in our judgment, it would not be correct to analyse this by reference to each of the words standing alone. It is the juxtaposition of the words that engenders distinctiveness, in that when used together, the words do not convey a sensible meaning. One does not speak of a “lady” rose. Rather, the juxtaposed words convey the sense of a name or an appellation rather than having any meaning, and in that sense, the juxtaposed words are inventive and certainly capable of distinguishing the goods dealt with or provided in the course of trade by one person (in this case, Hai Tong) from those so dealt with or provided by others. The juxtaposed words were therefore not devoid of distinctive character; and in that light, it really did not fall for consideration whether these words had also or separately acquired a measure of distinctiveness through use.
[36] The Defendants’ main argument rested on: (a) a consideration of the two words “Lady” and “Rose” separately, which is mistaken; and (b) their view that the words were not unusual or memorable for that matter. But, this too is incorrect. Distinctiveness can be found if words are connected and/or used in a meaningless way; and further, even assuming the words in question have a meaning, if, as is the case here, they are used in conjunction with goods in respect of which the words say nothing relevant. In this connection, in British Sugar, Jacob J observed as follows (at 306):
[37] Regard may also be had to Sime Darby Edible Products Ltd v Ngo Chew Hong Edible Oil Pte Ltd [2000] 2 SLR(R) 604 (“Sime Darby”), where the court was concerned with an application to invalidate a trade mark consisting of two words “ROYAL SPOON” on the ground that this was devoid of distinctive character. The careful analysis of Lim Teong Qwee JC at [12]–[15] bears setting out at some length:
[38] To similar effect are the observations of the Federal Court of Australia in R & C Products Pty Limited v Hunters Products Pty Limited (1988) ATPR ¶40-839 (“R & C Products”) (at 49,054) when commenting on the brand name “blue & fresh”:
See also our observations in Chen Eng Waye at [29] and the passage that is cited there from Christopher Wadlow, The Law of Passing-Off: Unfair Competition by Misrepresentation (Sweet & Maxwell, 4th Ed, 2011) at para 8-075. It is thus evident that the Composite Mark is distinctive.
Similarity – general principles
[39] In this light, we turn to consider the similarity between the Composite Mark and the Sign. In doing so, an assessment of their visual, aural and conceptual similarities is undertaken (see, eg, Sarika at [16]).
[40] Further, the following principles are well established in Singapore trade mark jurisprudence (see generally Sarika at [16]–[18] and Subway Niche at [19] and the cases cited below):
(a) The thrust of the inquiry into similarity is directed at assessing substantive similarity. The three aspects of this evaluation, namely, visual, aural and conceptual similarities, aid the court’s evaluation by signposting its inquiry. They do not serve as a mechanistic formula of any sort. It follows that the law does not require all three similarities (visual, aural and conceptual) to be made out before the registered mark and the allegedly infringing mark may be found to be similar. Conversely, the fact that any one similarity is made out does not necessarily mandate a finding that the two marks are similar. Nor is each aspect of similarity of equal importance. Rather, the relative importance of each will depend on the circumstances, including the nature of the goods and the types of marks involved (see MediaCorp News Pte Ltd v Astro All Asia Networks plc [2009] 4 SLR(R) 496 (“MediaCorp”) at [32]), and a trade-off can be made between the three aspects of similarity (see Ozone Community at [40]).
(b) In assessing the similarity between two contesting marks, the court considers them “as a whole” (see City Chain at [47] and [50]), but does not take into account “any external added matter or circumstances” because the comparison is “mark for mark” (see MediaCorp at [33], citing Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) [2006] 2 SLR(R) 669 (“Caterpillar”) at [55]). This is unlike the position when assessing whether there is a likelihood of confusion, where, subject to the further observations we have made below, it will generally be appropriate to have regard to other relevant circumstances – see below at [79]–[98].
(c) Although the focus of this part of the inquiry is on the marks in question, it is necessary to set out the viewpoint the court should assume. This viewpoint is that of the average consumer who would exercise some care and a measure of good sense in making his or her purchases, not that of an unthinking person in a hurry (see Polo (CA) at [34]). Would such a person consider the marks similar? We pause to note that despite the differing expressions that are sometimes used, this viewpoint is, for all intents and purposes, the same as that which is assumed when assessing the separate but related question of whether there is a sufficient likelihood of confusion. This is unsurprising given that there will be some inevitable overlap in the factual assessment of both elements.
(d) Furthermore, it is assumed that the average consumer has “imperfect recollection” (see MediaCorp at [33], citing Nautical Concept Pte Ltd v Jeffery Mark Richard and another [2007] 1 SLR(R) 1071 (“Nautical Concept”) at [30]). As such, the two contesting marks are not to be compared or assessed side by side and examined in detail for the sake of isolating particular points of difference. Instead, the court will consider the general impression that will likely be left by the essential or dominant features of the marks on the average consumer (see Saville Perfumery Ld v June Perfect Ld and F W Woolworth & Co Ld (1941) 58 RPC 147 (“June Perfect”) at 161–162).
Visual similarity
[41] In dealing with the test for assessing the visual similarity of marks where one or more of the marks is a composite mark, there appears to have been some emphasis on the textual component of the composite mark. In so far as it has been advanced as a proposition of law that in general, words “talk” in composite marks, we do not agree. Our reasons shall become apparent upon our analysis of the legal position in Singapore, the UK, the European Union and Australia which follows. Rather, we consider that in assessing the visual similarity of two composite marks, the correct approach is to consider the marks in totality without placing undue emphasis on any particular component of such marks unless such emphasis is warranted on the facts.
(1) The position in Singapore
[42] The genesis of the idea that words “talk” in composite marks appears to be a passage from the decision of the Registry of Trade Marks and Patents in Lee Cooper Group plc v Levi Strauss & Co [1995] AIPR 457 (“Lee Cooper”), which was then applied by the High Court in Chai Chyau Ling (doing business as Racetech Auto) v Racing Technology Pte Ltd [2009] SGHC 105 (“Racetech Auto”). In Racetech Auto, the respondent was the registered proprietor in Singapore of the trade mark “RACETECH”, which was of a unique typeface and registered without limitation of colour. The appellant’s logo (“the Logo”) comprised the words “RACE TECH” in a typeface which, at least to an untrained eye, was similar to that of the respondent’s word mark. An action was brought by the respondent against the appellant for trade mark infringement under ss 27(1) and 27(2) of the Act and for passing off. An assistant registrar awarded summary judgment to the respondent on both claims under O 14 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed).
[43] On appeal to the High Court, the court agreed with the assistant registrar and held that “it is most likely the word and not so much the device that leaves an impression on the minds of people and persuades them to buy from the trader owning that word mark” – see Racetech Auto at [37], relying (at [36]) on the following passage in Lee Cooper (at 501):
[44] We make two observations on the court’s reliance on this passage from Lee Cooper. First, such reliance was unnecessary in Racetech Auto as the court had already found that the respondent’s mark and the Logo were identical under s 27(1) of the Act (see Racetech Auto at [28]); hence, the question whether they were also similar simply did not arise. Secondly, the passage in Lee Cooper was cited out of context, as an examination of the decision in that case will show. In Lee Cooper, the applicant applied to register the following composite mark in Class 25 of the Third Schedule to the Trade Marks Rules 1991 (S 86/1991) (“Class 25”) for various clothing items such as shirts, trousers and jeans:
[45] A notice of opposition was lodged by the opponent, Levi Strauss, on the ground that it had, in 1873, adopted as a trade mark a particular pattern of double lines of stitching (the Arcuate Stitching Design) which was applied to the back pockets of “Levi’s” pants and which was intended by Levi Strauss to distinguish the pants it produced from those produced by its competitors. Levi Strauss was also the registered proprietor in Singapore of the following trade marks in Class 25:
[46] Before the Assistant Registrar for Trade Marks (“TMAR”), Levi Strauss argued that if registration and use of the applicant’s composite mark were allowed, the trade, or the public for that matter, would likely believe that the goods of the applicant originated from the same source as Levi Strauss’s goods, or, at least, that there was some connection in the course of trade between the applicant and Levi Strauss when in fact, there was no such connection at all. Levi Strauss argued that this would be in contravention of s 15(1) of the Trade Marks Act (Cap 332, 1992 Rev Ed) (“the 1992 TMA”). That section provided as follows:
[47] The TMAR applied the test formulated by the House of Lords in “Bali” Trade Mark [1969] RPC 472 in respect of s 15 of the 1992 TMA (see Lee Cooper at 499):
[48] The TMAR then observed that Levi Strauss’s Arcuate Stitching Design was always used on the pockets of its pants in juxtaposition with the “Levi’s” label and/or the word “Levi’s” on a red tag. Therefore, under s 15 of the 1992 TMA, the TMAR found that she had to compare the “Levi’s” word mark and pocket arcuate design on the one hand, and the “Lee Cooper” word mark and pocket arcuate design shown on the applicant’s composite mark on the other. It was in this context that the TMAR observed (at 501):
[49] In our judgment, the real point the TMAR was making was that the textual components in that case stood out, or “talked”, because they were the dominant components of the marks in question. In that case, similar devices were deployed in both marks and, for that matter, were commonly used in the clothing industry, but generally in conjunction with distinct word marks. In our judgment, the TMAR’s focus on the textual components of the marks in Lee Cooper was not meant to fashion a general principle of trade mark law that the textual component of a composite mark is always and necessarily the dominant element. Rather, the textual components of the two marks in question in that case were in fact the dominant components of the respective marks because of the similarity of the arcuate stitching devices in both marks.
[50] Nor is this court’s recent decision in Sarika an endorsement of a general proposition that words “talk” in composite trade marks. In Sarika at [71], in the context of discussing whether a claim under s 55(2) of the Act was made out on the facts, we said:
[51] Hai Tong relied on the words emphasised in the passage cited above and submitted that this stood for the general proposition that words “talk” in composite trade marks. But, this ignores the parts of the passage which have not been emphasised and which make it clear that all the court was saying was that the textual component of the composite mark in that case stood out on the specific facts in play there.
[52] We note that in certain circumstances, words can indeed “talk” in trade marks even if they do not form the dominant component of a composite mark. One such instance is if the textual component is in itself already widely known (see Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 (“Festina”) at [31]–[34], citing with approval the decision of the European Court of Justice (“the ECJ”) in Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (Case C-120/04) [2005] ECR I-8551 (“Medion”)). However, since Hai Tong has not submitted that the textual component of the Composite Mark at issue in this case has acquired such prominence, this is not directly relevant.
[53] Another instance where the textual component of a composite mark would generally be the dominant component is where the goods or services bearing the mark are marketed and sold predominantly through online trade channels (see Festina at [55] and Intuition Publishing at [64]–[65]). This is because a customer who wishes to buy the goods or procure the services in question from the online store of the trade mark owner would have to enter the textual component of the mark into the address bar or search engine to get to the desired website. Thus, such a customer would need to recall the textual component as opposed to the device component of the composite mark. This might render the visual impact of the device component less significant as compared to the aural and visual impact of the textual component, even where the device component happens to be significantly larger than the textual component. But, this is not relevant in the present appeal as the parties’ goods are not predominantly marketed and sold through online channels.
(2) The position in the UK and the European Union
[54] The law on assessing whether there is “confusing similarity” arising from the similarity of two marks or signs and the similarity of the goods on which these marks or signs are applied, under Art 9(1)(b) of the European Council Regulation 207/2009/EC of 26 February 2009 on the Community Trade Mark or Art 5(1)(b) of the First Council Directive 89/104/EEC of 21 December 1988 to Approximate the Laws of the Member States relating to Trade Marks, has been summarised recently by the English Court of Appeal in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] FSR 19 (“Specsavers”). The court in Specsavers considered a number of important European decisions, including Sabel BV v Puma AG, Rudolf Dassler Sport (Case C-251/95) [1998] RPC 199 (“Sabel”), Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (formerly Pathé Communications Corporation) (Case C-39/97) [1999] RPC 117 (“Canon”) and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Shaker di L Laudato & C Sas (Case C-334/05) [2007] ECR I-4529, and said (see Specsavers at [52]):
This suggests that there is no general legal proposition that any one component of a composite mark dominates.
[55] We are mindful that some European decisions pre-dating Specsavers have particularly emphasised the textual (or verbal) component of a composite mark when it comes to retail goods. For example, in Honda Motor Europe Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case T-363/06) [2009] ETMR 34 (“Honda”), the Court of First Instance of the European Communities (“the CFI”) observed as follows (at [30]):
[56] The same views are echoed in the decisions of the CFI in cases such as Claudia Oberhauser v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-104/01) [2002] ECR II-4359 (“Oberhauser”) at [47] and Wassen International Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-312/03) [2005] ECR II-2897 (“Wassen”) at [37], and in the decisions of the European General Court in Oyster Cosmetics SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-437/09) (2 February 2011) (“Oyster Cosmetics”) at [36] and Trubion Pharmaceuticals, Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-412/08) [2009] ECR II-239 (“Trubion”) at [45].
[57] However, an examination of these decisions will reveal that these views should be understood in the specific context of considering and assessing the marks in question, rather than as reflecting some sort of a “general” principle. Thus:
(a) In Honda, the textual component of the composite mark
(a) was found to be the dominant component as the “S” device component “[did] not appear to be original or very elaborate” and was the first letter of the textual component “SEAT” (see Honda at [31]).
(b) In Oberhauser, the court observed that the average consumer looking at a jeans label would take in and remember the predominant textual component of the composite mark
(b) rather than the various figurative aspects of that mark because the latter aspects would be seen as “decorative features of a label that is commonplace for jeans in its form and components, and not as the most important element indicating the origin of the product” (see Oberhauser at [47]). In short, in this particular context, a complex device was seen to be decorative and not distinctive. But, that was factually the case with the composite mark in that case.
(c) In Wassen, the court found the textual component of the composite mark
(c) dominant because the figurative element was placed below the verbal element, ie, in a “less visible position” (see Wassen at [37]). It may also be noted that the figurative element appeared essentially to be decorative.
(d) In Oyster Cosmetics, the court found the word “oystra” in the composite mark
(d) dominant because it was in the centre of the mark, and was written in black characters that were in bold and larger than those used for the other words in the mark. In contrast, the word “Kadus” was notable for its small size and was positioned at a clear distance from the other elements of the mark, such that it must be regarded by the relevant segment of the public as negligible compared with the word “oystra”. As for the three dots, these played a negligible role in the overall visual impression produced by the mark because of their smaller size and lack of inherent distinctiveness (see Oyster Cosmetics at [29]–[33]).
(e) In Trubion, the court found that the device component in the composite mark
(e) even if not negligible in terms of its size, was likely to be perceived by consumers essentially as a decorative element, and not as an element indicating the commercial origin of the goods (see Trubion at [45]).
[58] The CFI in Quelle AG v Office for Harmonisation in the Internal Market (Case T-88/05) [2007] ETMR 62 (“Quelle AG”) made some observations which, although situated in a slightly different context, are rather more consistent with our view, namely, that the answer to the question whether words do “talk” in a composite trade mark depends in the end on whether the words are the dominant element in the particular case in question. We note in particular the CFI’s observations at [69]:
[59] In Quelle AG, the composite mark in question was:
The CFI, in finding that the device component was the dominant component in the composite mark, noted (at [60]) that it was five times larger than the textual component, which appeared only as a caption, and even then, it seemingly referred to the device component.
(3) The position in Australia
[60] In relation to the position in Australia, Hai Tong recognised that the courts there have cautioned against excessive emphasis on the textual component of a composite mark because this might result in the rights conferred on a composite mark being extended to include rights conferred on a pure word mark without an accompanying device. In Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 (“Crazy Ron’s”), the Federal Court of Australia was concerned with an earlier composite mark with the words “Crazy John”
and the later allegedly infringing word marks “Crazy Ron’s” and “Crazy Ron”. In assessing the visual similarity of the earlier composite mark and the later word marks, the court reinforced the need to factually examine the marks in question (at [93]–[94]) and cautioned (at [100]):
[61] On the facts of Crazy Ron’s, the court found that the textual component in the earlier mark formed only a part of a composite mark that contained a number of elements. The words themselves were not especially prominent and, indeed, were subsidiary to the fantasy character, which occupied the dominant position in the overall image. If anything, the words seemed to identify the fantasy character, having regard to the deranged look on his face. The words also competed for attention with the letters “MW”, which themselves occupied a central position on the stylised globe (at [97]). The court thus concluded that there was no deceptive similarity between the earlier composite mark and the allegedly infringing marks because “[t]he additional features of the [earlier composite mark] are significant points of dissimilarity from the allegedly infringing mark[s] and need to be given due weight in determining the nature of a consumer’s ‘imperfect recollection’ of the [earlier composite mark]” (at [102]). The court indicated, however, that it would have been prepared to come to a different conclusion if there had been a finding, for example, that the words “Crazy John” had been “notoriously so ubiquitous and of such long standing that consumers must be taken to be familiar with it and its use in relation to particular goods” (at [99]), but there was no such finding, and in any case, the court had not been asked to make one (at [99]).
(4) Summary of the relevant principles in relation to the visual similarity of composite marks
[62] In our judgment, and having surveyed the foregoing authorities, Racetech Auto and Lee Cooper should not be taken as standing for a general proposition of law that words “talk” in composite trade marks (see [42]–[51] above). We consider that the following non-exhaustive list of principles may be called in aid when assessing the visual similarity of composite marks :
(a) As we have noted above at [40(c)] and [40(d)], when assessing two contesting marks or signs, the court does so with the “imperfect recollection” of the average consumer (see MediaCorp at [33], citing Nautical Concept at [30]). The two marks or signs should not be compared side by side or examined in detail because “the person who is confused often makes comparison from memory removed in time and space from the marks” (see MediaCorp at [33], citing Caterpillar at [55]).
(b) The visual similarity of two contesting marks or signs must normally be assessed by reference to the overall impressions created by the marks or signs, bearing in mind their distinctive and dominant components. When the other components of a complex mark or sign are of negligible significance, it is permissible to make the comparison solely on the basis of any dominant element(s).
(c) The overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components (see Specsavers at [52(e)]).
(d) The textual component of a composite mark or sign could (but will not necessarily or always) be the dominant component of the mark or sign. Some instances where this might be the case include where:
(i) The two marks or signs in question each contain a similar device. The overall resemblance between them may then be diminished if they bear words which are entirely different from each other (see Lee Cooper at 501).
(ii) The textual component is large, and is in a prominent location in relation to the other components or stands out from the background of the mark or sign (see the decision of the CFI in Shaker di L Laudato & C Sas v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case T-7/04) [2009] ETMR 16 (“Shaker (CFI)”) at [41]–[43]).
(iii) The textual component is in itself already widely known (see Festina at [33], Medion at [34] and Crazy Ron’s at [99]).
(iv) The composite mark or sign is applied to goods or services marketed or sold primarily through online trade channels (see Festina at [55] and Intuition Publishing at [64]–[65]).
(e) The device component has been found to be an equally significant, if not the dominant, component of a composite mark or sign where:
(i) the device is significant and large (see, eg, the decision of the European General Court in New Yorker SHK Jeans GmbH & Co KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-415/09) (29 September 2011));
(ii) the accompanying word(s) are devoid of any distinctive character, or are purely descriptive of the device component (see Quelle AG at [60]; see also Sime Darby at [18] and [20]–[21]) or of similar goods of a superior quality (see the decision of the CFI in Saiwa SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-344/03) [2006] ECR II-1097 at [41] and [45]); or
(iii) the device component is of a complicated nature (see, eg, Waseem Ghias t/as Griller v Mohammed Ikram t/as The Griller Original, Esmail Adia t/as Griller King, Shahzad Ahmad t/as Griller Hut, Griller Original Limited, Griller Hut Limited [2012] EWPCC 3).
(a) But usually not where:
(iv) the device is simple and will not evoke any particular concept for the average consumer (see, eg, the decision of the European General Court in Kavaklidere-Europe v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Yakult Honsha Kabushiki Kaisha (Case T-276/09) [2012] ETMR 45);
(v) the device component does not attract the attention of the average consumer of the goods in question because such a consumer is regularly confronted with similar images in relation to those goods (see Shaker (CFI) at [42]); or
(vi) the device component is more likely to be perceived as a decorative element rather than as an element indicating commercial origin (see Trubion at [45] and Oberhauser at [47]; see also Wassen).
(5) Application to the facts
[63] We turn to the Judge’s decision as regards the visual similarity of the Composite Mark and the Sign in this case. We agree with the Judge that the length, structure (ie, the number of words) and letters used in the textual component of the Composite Mark and the Sign are identical (see [22] of the GD; see also Ozone Community at [49]). We also agree with the Judge that marks consisting of inverted words can be visually similar (see [21] of the GD). This has been found to be the case in a number of previous cases including:
(a) The decision of the CFI in Hedgefund Intelligence Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-67/08) (11 June 2009) (“Hedgefund Intelligence”), where the contest was between the words “InvestHedge” (in the mark applied for) and “HEDGE INVEST” (in the earlier registered mark). There were differences in the colours, fonts and casing of the letters used in the two contesting marks; there was also the use of an adornment in the earlier registered mark, but not in the mark applied for. Nonetheless, the CFI held (at [35]) that “[t]he mere inversion of the elements of a mark cannot allow the conclusion to be drawn that there is no visual similarity”. The CFI further noted (at [36]) that the figurative elements of the two marks, including the colour of the mark applied for and the adornment in the earlier registered mark, were insignificant, and that “the characters of the signs in question” (at [36]), despite the use of lower case for the mark applied for and upper case for the earlier registered mark, were not sufficient for the purposes of distinguishing them. We also mention in passing in this connection the observations of the Federal Court of Australia in Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382 (at [68]) that it is artificial to place undue emphasis on the script and style of a word mark without regard to the words, which are what “give it substance”.
(b) The decision of the Federal Court of Australia in R & C Products, where, in an action for misleading or deceptive conduct under the Trade Practices Act 1974 (Cth), the use of the words “Fresh & Blue” by the respondent was thought to be deceptive conduct in relation to the prior use by the applicant of the words “blue & fresh” for its product, both products being similar in nature and function.
(c) The decision of the hearing officer in Automobile Club de L’Ouest v Gardiakos (2005) 66 IPR 191, where two applications to register trade marks, each comprising the words “Adelaide Le Mans”, were disallowed on the opposition of the applicant having earlier priority, who had applied to register a trade mark comprising the words “Le Mans Adelaide”. The hearing officer held (at [32]) that having considered the applicable principles and tests, the “Adelaide Le Mans” marks were “deceptively similar” to the “Le Mans Adelaide” mark.
(d) The decision of the hearing officer in Macquarie Bank Limited v Great Southern Loan (SP) Pty Ltd (2007) 73 IPR 573, where the hearing officer (at [18]) had “no hesitation in finding that the compared trade marks [viz, “FORWARD THINKING” and “THINKING FORWARD”] are deceptively similar”.
[64] Of course, the assessment of similarity is ultimately one of fact arrived at upon the application of well-established principles. We have set out some of the key principles at [39]–[41] and [62] above, and we do not foreclose the possibility that even allowing for the imperfect recollection of the average consumer who is not looking at the contesting marks one alongside the other, the mere reversal of the elements comprising the marks and the use of distinct and differentiated fonts or styles might conceivably be enough to displace the similarity between the marks. But, as a matter of common sense and having regard to the overall impressions that are likely to be formed, this would not normally be the case, and on the facts before us, we do not think these differences alone displace the visual similarity between the Composite Mark and the Sign.
[65] The Judge was also of the view that the textual component of the Composite Mark was the dominant component in the mark. We agree, though for slightly different reasons, on the facts of this case. In our judgment, the device component of the Composite Mark, which consisted of a single simple stylised rose, was relatively insignificant for several reasons:
(a) As noted above, the textual component of the Composite Mark was distinctive as the words “Lady Rose” conveyed no meaning and had no notional or allusive quality. The device component, which was a simple stylised rose, if anything, underscored the textual component by emphasising the “Rose” portion of “Lady Rose”. Reference may be had in this regard to the decision of the Fourth Board of Appeal in the English case of Dragonfly Teas Limited v Dawn Boreham, Richard Simon Jeremy Boreham (Case R 271/2010-4) (7 April 2011), where, in a contest between an earlier word mark consisting of the word “DRAGONFLY” and a later composite mark that had the same word in normal type face accompanied by a device of a dragonfly, it was observed (at [30]):
(b) The simple stylised rose in the Composite Mark was not a feature that drew any significant attention away from the words.
(c) A customer trying to recollect the Composite Mark would be far more likely to recall the textual component rather than the device component.
(d) If the textual component of the Composite Mark and the Sign were found to be substantially similar, it was unlikely that the simple stylised rose in the Composite Mark would serve as a point of distinction.
(e) In Trubion as well as Oberhauser, which each featured a more complex device component, the respective device components were thought, if anything, to be likely to be perceived as decorative elements and not as elements indicating the commercial origin of the goods in question. In Honda (at [31]), the “S” device component (reproduced at [57(a)] above) was found not to be significant because it was neither “original [n]or very elaborate”, and because it was the first letter of the textual component “SEAT” and, in that sense, emphasised the latter.
(f) It was also noteworthy that there were at least some products that Hai Tong sold where the words “Lady Rose” without the floral device (as opposed to the Composite Mark in its entirety) were used (especially on smaller items).
[66] Hai Tong also submitted that flower devices were common to the cosmetics trade and pointed to the use of a flower device on the packaging of the allegedly infringing products. Hai Tong relied on a passage from Mark Davison, Tracey Berger & Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co, 4th Ed, 2008) at para 30.1545, where the learned authors state:
[67] We note that a similar argument was accepted by the CFI in Shaker (CFI) as one of the reasons why the textual component of the composite mark in that case stood out over the device component (see Shaker (CFI) at [42]). This was also the case in Oberhauser (see Oberhauser at [47]–[48]). To the extent that it was submitted on this basis that the flower device in the Composite Mark was not distinctive or significant, we agree. This is not to say that the “Rose Lady” get-up on the allegedly infringing products was similar because it too featured a flower. The floral prints on the packaging of these products (and “Rose Lady” products in general) seem clearly decorative in nature and, in any case, are quite different from the flower device in the Composite Mark. The floral prints in the “Rose Lady” get-up feature a graphical design of a flower with five petals viewed aerially from above, while the flower device in the Composite Mark is a side-cut view of a rose. That said, this does serve to highlight the relative insignificance of the device component of the Composite Mark and to support the conclusion that on the facts of this case, the textual component of the Composite Mark is dominant. In all the circumstances, we are satisfied that the Sign and the Composite Mark are visually similar.
Aural similarity
[68] We turn to the assessment of aural similarity between the Composite Mark and the Sign. We agree with the Judge’s finding that the Composite Mark and the Sign are aurally similar (see [24] of the GD). When comparing marks or signs aurally, a quantitative assessment is carried out to ascertain if the marks or signs in question have more syllables in common than not (see Sarika at [28] and Ozone Community at [55], citing with approval L Bently & B Sherman, Intellectual Property Law (Oxford University Press, 3rd Ed, 2009) (“Bently & Sherman”) at p 865). The syntax of the marks or signs being compared is also considered. Hence, it is relevant to consider the total number of syllables in each mark or sign concerned and ascertain whether there is a pause in the reading of the mark or sign, as when a mark or sign is made up of two discrete words (see Ozone Community at [14] and Intuition Publishing at [54]).
[69] In the present case, there is no doubt that both the Composite Mark and the Sign consist of exactly the same syllables. The only difference is in their syntax in that they are read in inverted order. However, we think that the fact that the syllables are articulated in an inverted order does not prevent the Composite Mark and the Sign from being aurally similar (see Hedgefund Intelligence at [39]; this also accords with our earlier observation (at [63] above) that marks consisting of inverted words can be visually similar). Hence, we agree with the Judge that the Composite Mark and the Sign are aurally similar.
Conceptual similarity
[70] Finally, we turn to the assessment of conceptual similarity. We also agree with the Judge’s finding that the Composite Mark and the Sign are conceptually similar. In considering whether there is conceptual similarity, the inquiry is directed at the ideas that lie behind or inform the marks or signs in question (see Sarika at [34] and Intuition Publishing at [55]). In the present case, we agree with the Judge’s finding that the Composite Mark and the Sign are conceptually similar as both evoke the idea of “something floral and feminine” (see [25] of the GD).
[71] In the overall comparison of the similarity of the Composite Mark and the Sign, we find them sufficiently similar for the purposes of s 27(2)(b) of the Act and so move to the final stage of the inquiry, namely, the inquiry into the likelihood of confusion on the part of the public as to the origin of, respectively, Hai Tong’s products and the allegedly infringing products.
Likelihood of confusion
How is this different from the inquiry into similarity?
[72] It is important first to recall the proper province of trade mark protection, which concerns protecting the right of a trade mark owner to use a species of property – namely, his mark – as an exclusive badge of origin to denote that goods bearing that mark emanate from him. The point has been well explained by the ECJ in SA CNL-SUCAL NV v HAG GF AG (Case C-10/89) [1990] ECR I-3752 (“SA CNL-SUCAL”) at [13]–[14]:
(See also the observations of the ECJ in Hoffmann-La Roche & Co AG, Basel and Hoffmann-La Roche AG, Grenzach-Wyhlen v Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse mbH (Case 102/77) [1978] ECR 1139 at 1152 and Canon at [28]–[29].) Without such a regime, “consumers would no longer be able to identify for certain the origin of the marked goods and the proprietor of the trade mark could be held responsible for the poor quality of goods for which he was in no way accountable” (see SA CNL-SUCAL at [16]).
[73] In a claim for trade mark infringement, the plaintiff must show that there is a likelihood of confusion as to the origin of, respectively, his goods and the defendant’s goods by virtue of the identity or similarity between his mark and the defendant’s sign as well as the identity or similarity between the goods to which they are applied. Confusion in this context extends to the situation where the consumer mistakenly assumes some kind of economic link or connection between goods bearing the registered mark and those bearing the allegedly infringing sign.
[74] Indeed, the authorities are clear that there are at least two specific aspects to the element of confusion. The first is mistaking one mark for another, so that the perception of the relevant segment of the public is that the allegedly infringing mark is in fact the same as the registered mark. In short, in this context, the relevant segment of the public may not even perceive that there are two distinct marks. The second is where the relevant segment of the public may well perceive that the contesting marks are different, but may yet remain confused as to the origin which each mark signifies and may perceive that goods bearing the earlier registered mark and those bearing the later allegedly infringing mark emanate from the same source that has chosen to diversify its range of marks for any of a multitude of marketing or promotional reasons or that the two sets of goods emanate from sources that are economically linked or associated.
[75] However, the “mere association” by the relevant segment of the public of the earlier registered mark with the later allegedly infringing sign based on their similar use is not in itself a sufficient basis for concluding that there is a likelihood of confusion in the absence of any possibility of misapprehension as to the origin of the goods or services concerned (see City Chain at [58]). Put another way, it is not sufficient that the relevant segment of the public would recognise or recollect similarities between the contesting marks if there is no likelihood of confusion as to origin ensuing.
[76] Unlike the inquiry into similarity, which is a somewhat objective inquiry directed at the features of the marks in question, the inquiry into the likelihood of confusion focuses on the effect that such similarity is likely to have on the relevant segment of the public. Specifically, the question is how they are likely to perceive the origin of goods or services bearing the contesting marks, having regard to the similarity (or, as the case may be, the identity) between the contesting marks as well as the similarity (or identity) between the goods or services in relation to which each is used.
[77] It is evident that the assessment of the likelihood of confusion has the potential to become a more fact-sensitive inquiry than the one directed at the element of similarity between contesting marks. It is useful here to set out s 27(2)(b) of the Act, which, in its material part, reads as follows:
[78] This can be broken into several elements as follows:
(a) the infringer must be acting without the consent of the trade mark owner;
(b) the infringer must use his sign in the course of trade, and as we have noted above, this means he must use it as a badge or identifier of origin and not for purely decorative or descriptive purposes;
(c) the trade mark and the allegedly infringing sign must be similar;
(d) the trade mark and the allegedly infringing sign must be used on identical goods or services (as is the case here), or at least on goods or services that are similar to one another; and
(e) because of elements (c) and (d) above, there exists a likelihood of confusion on the part of the public. The likelihood of confusion required is that which is to be expected amongst a substantial portion of the relevant segment of the public. While not amounting to a majority, the relevant segment of the public must go beyond a “de minimis” level (see Sarika at [57] and Mobil Petroleum Co, Inc v Hyundai Mobis [2010] 1 SLR 512 at [77]–[78]).

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Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal

Grounds of decision

Introduction

Background to the appeals

Parties to the dispute

Background facts

Decision below

Issues before this court

Our decision in CA 2 of 2012

Threshold issue: use in the course of trade

Similarity or identity of the goods or services

Similarity between the Composite Mark and the Sign

Distinctiveness

Distinctiveness of the Composite Mark

Similarity – general principles

Visual similarity

(1) The position in Singapore

(2) The position in the UK and the European Union

(a) In Honda, the textual component of the composite mark

(c) In Wassen, the court found the textual component of the composite mark

(d) In Oyster Cosmetics, the court found the word “oystra” in the composite mark

(e) In Trubion, the court found that the device component in the composite mark

(3) The position in Australia

(4) Summary of the relevant principles in relation to the visual similarity of composite marks

(5) Application to the facts

Aural similarity

Conceptual similarity

Likelihood of confusion

How is this different from the inquiry into similarity?