High Court · Decided 10 February 2015

Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd

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[2015] SGHC 39Case no. Suit No 255 of 2013

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Grounds of decision

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George Wei JC:
[1] These proceedings concern an action between Han’s (F & B) Pte Ltd (“the Plaintiff”) and Gusttimo World Pte Ltd (“the Defendant”) for trade mark infringement and passing off. Both the Plaintiff and Defendant run businesses in the food and beverage industry. The Plaintiff is the owner of a chain of restaurants named Han’s Café. The Defendant is the owner of a restaurant named HAN Cuisine of Naniwa.
The Plaintiff’s restaurants and its registered marks
[2] The first Han’s restaurant opened its doors in 1980. Then, the Han’s restaurant sold mainly confectionaries. Business has grown steadily over the years, and the Plaintiff now runs 21 Han’s Café outlets island-wide. The moving spirit behind the Plaintiff is Han Choon Fook (“Mr Han”). Mr Han is from the Han family that founded the first Han’s restaurant. Mr Han is a director of the Plaintiff.
[3] The Plaintiff’s restaurants specialise in serving quality food and beverages at affordable prices. They serve a mixture of local fare, Hainanese-style western sets and pastries. The Plaintiff has also ventured into the Halal food and beverage market with the creation of a sister chain, Hanis Café, in 2006. Both Han’s Café and Mr Han have received numerous local awards and certificates representing business excellence and entrepreneurship.
[4] The Plaintiff is the registered proprietor of four marks under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”). The marks may be found in the annexure to this judgment. The four marks were registered on 1 June 2005 in relation to class 43 of the Nice Classification of Goods and Services. The trade marks are specified to cover:
[5] The first two registered marks are the word marks, “Han’s” and “HAN’S”. I shall refer to them collectively as the “Han’s word marks”. The other two marks are composite marks of “Han’s” in a stylised font. By composite, I mean that the word “Han’s” is depicted within a frame that approximately outlines the lettering. The two composite marks are identical save that one is red (“the red Han’s composite mark”) and the other is black. Registration of the red Han’s composite mark is limited to the depiction in red. The Plaintiff does not specify in either its pleadings or its submissions which registered mark it relies on for its infringement claim against the Defendant.
The Defendant’s restaurant and the allegedly infringing sign
[6] The Defendant’s restaurant, HAN Cuisine of Naniwa, is located at Odeon Towers and commenced business in June 2012. The restaurant offers traditional Naniwa cuisine (Naniwa was the name used until the 16th century for what is now Osaka, Japan). Its specialities include meat and vegetable skewers—also known as Kushikatsu—that originate from Osaka. The restaurant also serves sushi, sashimi and other Japanese dishes.
[7] The kitchen of the Defendant’s restaurant is helmed by Chef Seiichiro Arakawa. Chef Arakawa is a Japanese chef who was mentored by a chef of a Michelin-starred restaurant in Kobe, Japan. Dinner sets at the Defendant’s restaurant start at upwards of $100. The Defendant’s restaurant also has a fairly extensive alcohol menu.
[8] The Defendant’s restaurant, HAN Cuisine of Naniwa, trades under a sign (“the HAN sign”) which forms the basis of the Plaintiff’s infringement action. The HAN sign may be found in the annexure to this judgment.
[9] The HAN sign is a composite sign comprising three elements:
(a) The word “HAN”, which is depicted in a muted gold colour and in a prominent position in the centre of the sign.
(b) The phrase “Cuisine of Naniwa” depicted in black, and in a smaller font and subsidiary position to “HAN”. Both “HAN” and “Cuisine of Naniwa” are in a similar typeface—a modified version of the Helvetica font.
(c) The Kushikatsu device that encircles the sign. The Kushikatsu device is a stylised depiction of the Japanese meat and vegetable skewers that the Defendant’s restaurant serves. It is styled in a manner that resembles a calligraphy brush-stroke. The Kushikatsu device is said to be in a deep brown colour, but the deep brown is imperceptible and it appears black.
[10] The Defendant displays the sign at the restaurant front, various locations in and outside the restaurant, and on its menus and tablemats. The Defendant has also registered and maintains a website at the domain http://www.han.com.sg.
[11] The Defendant is majority-owned by Dr Lee Se Heon. Dr Lee is also a director of the Defendant. Dr Lee began running the Defendant as a food and beverage business in 2008. The Defendant operates other restaurants, which are said to be trendy and serve high-end cuisine.
[12] Prior to 2008, Dr Lee was involved in very different fields of business. In 1957, Dr Lee’s father founded Hankuk Glass Industries Inc (“Hankuk”) in Korea, which dealt in the production of fine glass products. Dr Lee eventually became the chief executive officer in the company which had evolved into the HanGlas group. In 2001, Dr Lee moved to Singapore and incorporated an information technology startup named SL Interactive Pte Ltd.
[13] In 2007, a French company acquired an interest in the HanGlas group. It was about then that Dr Lee decided to refocus his Singapore business from information technology to food and beverage. SL Interactive Pte Ltd was renamed Gusttimo World Pte Ltd, which is the defendant in this action. In 2011, the Defendant decided to open a high-end restaurant in Singapore specialising in Osaka cuisine that incorporated Korean and Chinese elements.
[14] The reasons why the name HAN Cuisine of Naniwa was chosen are discussed in greater detail later. But I would point out at this juncture that the word “HAN” had a long association with Dr Lee’s family. It formed part of the name of Dr Lee’s family company. It was also part of a registered trademark, “HANGLAS” with a square device, that Hankuk registered in Singapore in 2004.
The arguments
[15] The Plaintiff claims that the HAN sign infringes the Han’s trade marks. The Plaintiff claims in addition that the Defendant is passing off its business as the Plaintiff’s, and that the use of the sign was calculated to deceive and with the deliberate objective of passing off.
[16] The Plaintiff seeks an injunction restraining the Defendant from trading under the HAN sign, and an inquiry to damages or an account of profits. It also seeks an order for full discovery of the infringing materials and articles, and an order that the Defendant transfers the domain, http://www.han.com.sg, to the Plaintiff.
[17] The Defendant denies the allegations of infringement and passing off. The Defendant counterclaims against the Plaintiff for groundless threats of infringement proceedings. The Defendant also seeks a declaration that the Plaintiff’s registered marks are invalid because they are devoid of distinctiveness, or alternatively, because the Plaintiff obtained the registration of the marks through misrepresentations and in bad faith. While invalidity because of misrepresentation and bad faith was pleaded, these points were not argued in submissions, and rightly so. I will therefore not address them.
The issues
[18] The issues that arise fall broadly into four categories: validity, infringement, passing off and groundless threat.
[19] The first issue is whether the Han’s trade marks are invalid under s 23 of the TMA because they do not satisfy the definition of a trade mark or are devoid of any distinctive character.
[20] The second issue is whether the Defendant’s use of the HAN sign infringes the Han’s trade marks under s 27 of the TMA. This raises the following subsidiary issues:
(a) whether the HAN sign is similar to the Han’s trade marks;
(b) whether the HAN sign is used in relation to goods or services identical with or similar to those for which the Han’s trade marks are registered; and
(c) whether on account of the presence of the first two conditions, there exists a likelihood of confusion on the part of the relevant public.
[21] The third issue is whether the Defendant is liable for passing off its business as being connected to or associated with the Plaintiff’s. This raises the following subsidiary issues:
(a) whether the Plaintiff has goodwill in the trade marks attached to the goods and services that it supplies;
(b) whether the Defendant made a misrepresentation that will lead to a likelihood of confusion; and
(c) whether the Plaintiff has or is likely to have suffered damage as a consequence.
[22] The fourth issue is whether the Plaintiff is liable for making a groundless threat of infringement proceedings against the Defendant under s 35 of the TMA.
The witnesses and evidence
[23] Both the Plaintiff and the Defendant called a factual and expert witness each. Mr Han was the Plaintiff’s factual witness. He gave evidence on the history of the Plaintiff and its business model and strategies. He also gave some evidence on the future plans of the Plaintiff, in particular, the possibility of the Plaintiff expanding into a more upmarket food and beverage market segment.
[24] Dr Lee was the Defendant’s factual witness. Dr Lee gave evidence of the business of the Defendant’s restaurant. He also gave evidence on how the restaurant came into being, in particular, how he settled on the name HAN Cuisine of Naniwa.
[25] The Plaintiff called Shinde Prasad Vasantrao as its expert. Mr Prasad was a director at the marketing branch of Ipsos ASI (“Ipsos Marketing”), a French advertising research firm. He presented findings of a telephone survey that his team conducted on consumer perceptions of “H.A.N.S” and “H.A.N”. Mr Prasad and his team surveyed a sample size of 1,001 respondents aged 15 to 64-years old. The survey involved asking respondents a series of four questions. The conclusions of the survey were that:
(a) 79.4% of respondents were aware of “HANS” while 29.6% of respondents were aware of “HAN”;
(b) 52.3% of respondents found that “HANS” and “HAN” sound very similar;
(c) 29.8% of respondents thought that “HANS” and “HAN” belong to the same management; and
(d) 27.6% of respondents said they do not differentiate “HANS” from “HAN” when performing an online search.
[26] The Defendant called See Toh Kok Fye (“Mr See Toh”), who is more widely known as KF Seetoh, as its expert. Mr See Toh is an acclaimed food critic and the founder and a director of Makansutra (S) Pte Ltd. Mr See Toh’s expert report was prepared in the form of answers to six questions that were posed to him. It traversed the ground of his views on the visual and conceptual similarities between the HAN sign and the Han’s trade marks, and his views on the public perception of the same. The report also dealt with the psychology of food or restaurant choice of the general public in Singapore, and the similarities and dissimilarities between the cuisine and services offered by the Plaintiff’s and the Defendant’s respective establishments. The report finally addressed whether there was the possibility that confusion may arise on the part of the general public.
[27] Mr See Toh’s views were, in short, that there would be no confusion. He thought that the signs were sufficiently visually and conceptually dissimilar to each other. Further, the cuisine and dining experience in the Plaintiff’s and the Defendant’s respective establishments were vastly different. He arrived at this conclusion after having a meal at one of the Plaintiff’s restaurants and at the Defendant’s restaurant. Both the evidence of Mr Prasad and Mr See Toh will be scrutinised in greater detail in the course of addressing the issues to which they relate.
[28] The use of expert or survey evidence in intellectual property litigation has become relatively commonplace. In trade mark actions, this often takes the form of survey evidence. I will, therefore, set out some general observations on the relevance or usefulness of such survey evidence.
[29] The survey is usually intended to obtain evidence on distinctiveness, reputation and similarity, and often includes: (a) the degree to which the public recognise the plaintiff’s marks; (b) the degree to which the public recognise the defendant’s marks; (c) the key features of the marks which stand out in the mind of the member of the public; (d) the degree of similarity between the marks; and (e) the degree to which the public are confused by the rival marks. After conducting the survey, the expert normally compiles the survey findings into tables or charts. A report is usually also produced that sets out the expert’s analysis and conclusions.
[30] Expert or survey evidence when properly conducted can be helpful. But the expert report should, at the very least, set out: (a) the purpose of the survey; (b) details on the methodology, including the instructions given to the interviewers and the questions posed to them; and (c) the full results of the survey and the statistical analysis.
[31] If meaningful results are to be generated, the questions should not be leading, or designed in such a way as to amount to a cross-examination of the persons surveyed. The comments of Professor David Llewelyn in The Use of Experts in Legal Proceedings in Singapore Involving Intellectual Property Rights [2013] 25 SAcLJ 480 (“The Use of Experts in Legal Proceedings”) at para 54 are apposite:
[32] The questions asked should take into account the fact that a trade mark is intended to act as an indicium of origin in the course of trade. The definition of what is a sign capable of acting as a trade mark has expanded. Trade marks are no longer confined to signs that are visually perceptible. They can include sound marks, smell marks and more. While a trade mark must still be capable of graphic representation, shapes are also, in appropriate cases, registrable as a trade mark (see, for example, the recent decision of Chan Seng Onn J concerning the registrability of the shape of “Kit Kat” chocolate-coated wafer bars in Societe Des Produits Nestlé and another v Petra Foods Ltd and another [2014] SGHC 252).
[33] Some trade marks carry out their role as indicia of origin by speaking to just one of the human senses. A sound trade mark performs its role by impacting the ear of the customer. Other trade marks interact with members of the public in a multi-sensory manner. Take, for example, a composite mark that comprises words written in a stylised form and set out within a logo or pictorial device. The words interact with the customer visually and phonetically. The device or logo will interact with the customer visually: in an artistic as opposed to a literary form. Even a simple word mark interacts with customers visually and aurally, often at the same time.
[34] It follows that surveys should strive to obtain evidence that is meaningful, bearing in mind the different ways in which a customer comes across and interacts with the trade mark in the marketplace. For example, where the plaintiff’s trade mark is a simple word mark and the defendant’s trade mark a composite mark where the visual appearance of the device is properly and fairly regarded as part of the trade mark. A simple aural comparison of the words may not be that helpful.
[35] In the present case, the Defendant’s expert evidence did not take the form of survey evidence. It came in the form of testimony from an acclaimed food critic, Mr See Toh. Without going into the details, his evidence concerned his view on whether the Defendant’s trade mark was similar to the Plaintiff’s such as to cause confusion. He also gave some evidence as to the restaurant industry in Singapore. While some parts of the latter may be relevant in setting out the context of restaurant trade in Singapore, I do not find his evidence that there would be no confusion in the marketplace helpful. This is a question for the court which can and should be answered without resorting to expert opinion.
[36] Professor Llewelyn makes some other helpful observations at para 40 of The Use of Experts in Legal Proceedings in Singapore:
This must be correct. After all, in trade mark infringement actions, the absence of evidence of actual confusion in the marketplace is not fatal to the claim. Where there is no evidence that customers have been confused, the court will have to examine the marks and decide on the evidence as a whole whether confusion is likely. The comments of Millett LJ in The European Ltd v The Economist Newspaper Ltd [1998] FSR 283 at 291, which were also cited by Professor Llewelyn in his article at para 43, are instructive:
I have set out my broad observations on the evidence. I will examine it in greater detail in the course of my analysis of the various issues.
Whether the Han’s trade marks should be declared invalid under s 23 of the TMA
[37] The first issue that arises concerns the validity of the Han’s trade marks. Section 23(1) of the TMA states that the registration of a trade mark may be declared invalid if it was registered in breach of s 7 of the TMA. Two of the grounds found in s 7 are relevant to these proceedings.
[38] First, under s 7(1)(a) of the TMA, a mark shall not be registered if it does not satisfy the definition of a trade mark in s 2(1) the TMA. Section 2(1) of the TMA defines a trade mark as:
[39] Second, under s 7(1)(b) of the TMA, a mark shall not be registered if it is devoid of any distinctive character. An exception to s 7(1)(b) is where the mark in question has acquired a distinctive character as a result of the use made of it: s 7(2) of the TMA.
[40] The Defendant argues that the Han’s trade marks were registered in breach of these two grounds for three reasons. First, the Han’s trade marks are incapable of distinguishing the Plaintiff’s goods and services from those of other traders. Second, the Han’s trade marks are not distinctive because they merely make use of a common surname. Further, “Han” bears multiple meanings in different languages.
[41] Under s 101 of the TMA, the registration of the Han’s trade marks is prima facie evidence of the validity of the original registration. The burden is thus on the Defendant to establish the invalidity of the Han’s trade marks.
Whether the Han’s trade marks are capable of distinguishing goods or services
[42] There is no dispute that the Han’s trade marks are capable of being represented graphically, and therefore fall within the definition of a “sign”. The attack under s 7(1)(a) of the TMA is that the Han’s trade marks are incapable of distinguishing goods and services and therefore fall outside of the definition of a trade mark.
[43] The Defendant asserts that “Han” is a common surname in Singapore. No further explanation is given as to how or why the fact that “Han” is a common surname renders it incapable of distinguishing the Plaintiff’s goods or services in the course of trade. The Plaintiff, on the other hand, asserts that surnames are capable of distinguishing services provided under the mark from services provided by another person.
[44] The Plaintiff relies on the decision in Nichols plc v Registrar of Trade Marks [2005] RPC 12 (“Nichols v RTM”) in support of its argument. In that case, the applicant sought to register the word mark “NICHOLS”. There was no claim that the mark had acquired distinctive character through use. It was accepted that “NICHOLS”, together with phonetically similar variants like “Nicholls” and “Nichol” were common surnames in the United Kingdom. The European Court of Justice (“ECJ”) accepted at [32] that “a surname fulfils the minimum requirements to constitute a trade mark ... since it is capable of distinguishing the products or services of one undertaking from those of others”.
[45] The definition of trade mark in s 2(1) of the TMA makes it clear that the main purpose of trade mark registration is to safeguard signs which can serve to indicate the origin or source of goods in the marketplace. The requirement that the sign is capable of distinguishing the goods or services in the course of trade underscores the central function of a trade mark. The principle is of such great importance that it finds expression in the TMA in numerous ways:
(a) First, s 2(1) of the TMA requires a sign to be capable of distinguishing the goods or services in the course of trade. If it cannot play this role then it is not even a trade mark.
(b) Second, s 7(1) of the TMA prescribes an absolute ground for refusing registration of a trade mark that is devoid of any distinctive character.
(c) Third, s 22(1) of the TMA provides that a trade mark may be revoked where it has become the common name in trade for the product or service for which it is registered. In short, where a registered trade mark has become generic and lost the ability to distinguish goods from a particular trade origin.
[46] The requirement in s 2(1) of the TMA that the sign must have the capability of distinguishing goods or services in the course of trade is therefore best treated as a threshold requirement. Signs which do not meet the threshold requirement are not registrable. There is no further need to examine other requirements, such as whether the sign has been used in the trade so as to indicate trade origin. Indeed, this is irrelevant since the question is whether the sign has the capability of distinguishing goods and services. That is largely a question of law which requires the court to determine whether the sign has any ability to serve as an indicium of trade origin. The fact that the trade mark is new and has not yet been used on the goods or services is irrelevant.
[47] A finding that a sign lacks any capability to distinguish goods or services usually means that the sign is so descriptive that it cannot serve this most basic trade mark function. The requirement of capability to distinguish is not difficult to satisfy: Nation Fittings (M) Sdn Bhd v Oystertec plc and another suit [2006] 1 SLR(R) 712 (“Nation Fittings v Oystertec”) at [133]–[136]. Professor Ng-Loy Wee Loon has rightly observed in Law of Intellectual Property of Singapore (Sweet & Maxwell, 2nd Ed, 2014) at para 21.3.15 that most cases where the trade mark has been held to fall foul of the threshold requirement were so decided because the sign was nothing more than a generic description of the product or service.
[48] Nation Fittings v Oystertec concerned a sign consisting of a drawing of the two-dimensional shape of a pipe fitting. The shape was considered to be nothing more than the generic shape. It lacked any capability to serve as a trade mark for the product in question. The English High Court case of Philips Electronics NV v Remington Consumer Products Ltd (No 1) [1998] RPC 283 is to the same effect. There, an application was made to register a trade mark comprising a graphic representation of the shape of the head of a shaver. The graphic representation comprised three rotary circular heads set out in the shape of an equilateral triangle. Jacob J held that the representation lacked any capability to distinguish the goods. The shape was essentially the shape of the product itself. Jacob J also expressed the view at 300–301 (citing his earlier decision in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 305) that the word “soap” could not be registered as a trade mark for soaps. The word was entirely descriptive of the product such that it was incapable of serving a trade mark function.
[49] Likewise, in Love & Co Pte Ltd v The Carat Club Pte Ltd [2009] 1 SLR(R) 561, Chan J held that a sign would not cross the threshold if it was so descriptive as to be synonymous with the product itself. One example given by Chan J was “jewellery” for jewellery products. On the actual facts, the court found that the word “love” did not fall into this category. It was not generic of jewellery.
[50] Most of the cases have been concerned with signs that are descriptive of the product or services. But there may also be situations where the sign lacks any capability to distinguish goods or services for other reasons. Consider, for example, an application to register the words “Best Quality” for leather goods including hand bags and belts. The words do not describe the product, leather hand bags and leather belts. They are words of high praise. It seems that arguments, at the very least, may be raised, as to whether commonplace laudatory epithets have any capacity to function as a trade mark. But that question is not before me and I make no further remarks on it.
[51] In the present case, I am of the view that a surname, even a common one, possesses the capability to distinguish the goods and services of a trader from those of others. The ECJ in Nichols v RTM accepted at [32] that this was so without hesitation. As in many other jurisdictions, the TMA also contains provisions to the effect that infringement does not arise where the defendant uses his own name, provided that the use is in accordance with honest practices in industry and commerce: see s 28(1)(a) of the TMA. It follows that the possibility that a name, or part of it, may be registered as a trade mark is recognised.
Whether the Han’s trade marks are distinctive
[52] The next issue is whether the Han’s trade marks satisfy the requirement of distinctiveness. The more pertinent difficulty with using a common surname as a trade mark lies in whether it possesses any distinctive character at all. That was the issue that preoccupied the ECJ in Nichols v RTM. That too forms the gravamen of the Defendant’s complaint against the validity of the Han’s trade marks. The requirement of distinctiveness is relevant to the registrability of a trade mark, as well as to a challenge to a registered mark’s registration, but in slightly different ways.
[53] At the registration stage, a trade mark which is devoid of any distinctive character shall not be registered: s 7(1)(b) of the TMA. However, for a trade mark that lacked distinctiveness at the time when it was chosen, its registrability can still be saved if it has in fact acquired a distinctive character through use: s 7(2) of the TMA. The critical date here is the date of application for registration.
[54] A challenge to a registered mark’s validity may be made on the ground that the trade mark was registered in breach of s 7 of the TMA: s 23(1) of the TMA. Where the registered trade mark was registered in breach of s 7 because it is devoid of a distinctive character, its registration may be saved if it has through use acquired a distinctive character in relation to the goods or services for which it is registered: s 23(2) of the TMA. In short, in deciding whether to grant an application for invalidity, the court is to take into account the use of the trade mark subsequent to registration in deciding whether the trade mark has a distinctive character.
[55] In addressing the question as to what distinctiveness means in trade mark law, it is suggested that three related questions must be borne in mind. First, what is the essential function or purpose behind registration of a trade mark? Second, what is the purpose of the threshold requirement that a sign must be capable of distinguishing goods or services dealt with or provided in the course of trade? Third, what is the meaning and purpose behind the requirement of a distinctive character?
[56] The history behind trade mark law strongly supports the view that a trade mark serves the main purpose of indicating the trade origin of goods or services in the marketplace. This is still the essential function of a trade mark, even though a trade mark can also serve as an indicator of quality. Indeed, it has been suggested by William Cornish, David Llewelyn & Tanya Aplin, Intellectual Property: Patents, Copyrights, Trademarks & Allied Rights (2013, 8th Ed, Sweet & Maxwell) (“Cornish, Llewelyn & Aplin”) at para 16–22 that trade marks can also act as the symbol around which investment in promotion of a product is built. That said, Cornish, Llewelyn & Aplin rightly question at para 16–28 how realistic it is to distinguish between the origin, quality and investment functions of a trade mark. Much may depend on how broadly or narrowly the origin function is construed.
[57] Nevertheless, whatever the outer limits of trade mark function are, few will doubt that the most basic function of a trade mark is to enable a trader to distinguish his goods or services from those of his competitors in the marketplace. That is the plank on which all else stands. The law, by protecting the origin function of a trade mark, helps to promote inter-brand competition. By doing this, the law also assists consumer choice between alternative products and services in the marketplace. It follows that the threshold requirement that the sign must be capable of distinguishing goods or services of rival traders in the market is nothing more than an expression of the underlying policy behind trade mark protection.
[58] This is the context in which the TMA requires an examination as to whether a trade mark possesses a distinctive character. Did the trade mark possess a distinctive character when it was chosen? Did it acquire and develop a distinctive character as a result of use by the time of the application to register? Did it develop and acquire a distinctive character at the time when application was made to declare the registration invalid?
[59] Section 7(1) of the TMA sets out four grounds for refusal of registration. The grounds in s 7(1)(b), (c) and (d), while listed as distinct grounds, are in reality connected. The grounds set out in s 7(1)(c) and (d) are particular examples of the objection in s 7(1)(b). Take, for example, a trade mark comprising the words “Romantic Heart” for jewellery. Leaving aside an attack on the basis that it has no capability to distinguish, objection may be taken under s 7(1)(c), on the ground that it comprises a sign that designates a particular characteristic of the goods or its intended purpose. Such a phrase might also be said to be devoid of a distinctive character for that very same reason. The phrase is not ordinarily used or perceived as a trade mark to indicate the origin of goods (jewellery) in the marketplace. But through use, marketing or advertising, the public may be taught to recognise the phrase as an indicator of a particular trade origin when used in respect of jewellery. The public or relevant sector of the public has been taught to recognise the phrase as a trade mark.
[60] Thus it may be that by the time the applicant makes the application to register the phrase as a trade mark, he has spent several years developing the trade mark message to the public. Even though the phrase may have been devoid of a distinctive character when it was first conceived, it has, by the time of the application, in fact acquired a distinctive character. Acquiring a distinctive character under s 7(2) of the TMA sidesteps the grounds for refusal found in s 7(1)(b), (c) and (d) of the TMA. It must follow that the objections in s 7(1)(c) and (d) are essentially particular aspects of section 7(1)(b).
[61] Returning to the meaning of distinctiveness, the trade mark must necessarily, either inherently or as a result of use, perform the most basic function of distinguishing the goods of the trader from those of his competitors in the marketplace. Some trade marks carry a high level of “inherent distinctiveness” in the sense that these marks will be understood by the public as bearing a trade mark meaning, even if they have not yet been used or promoted to the public. Invented words are classic examples of such trade marks. Take, for example, a manufacturer of sailing boats who decides to market the boats under a new trade mark which he has invented. The mark is “ADOGSTY”. It has no meaning at all. Such an invented word mark has a high level of inherent distinctiveness and ability to serve as a trade mark. After all, what else could the word “ADOGSTY” mean when used in relation to the sailing boats?
[62] Another example is a manufacturer who decides to use the mark for a range of running shoes that he is about to launch. Even though the words and phrase are not newly coined, the meaning has little bearing on the product to which it is to be applied. Nonsensical phrases may also bear a relatively high level of inherent distinctiveness in the sense that, even without extended advertising or marketing, consumers are likely to view the phrase as a trade mark. Even if there is a possibility that some persons may view the nonsensical phrase as part of the product design such as a visual embellishment or decoration, it may not take much use and marketing to develop the trade mark message. Much of course will depend on how the nonsensical phrase is used on or in relation to the product.
[63] Other marks, on the other hand, while possessing the capability to distinguish goods or services in the course of trade, may have low levels of inherent distinctiveness. Often this will be because the mark includes a word or symbol or device that is at least partially descriptive of the goods or service. Alternatively, it may be that the word chosen has a laudatory meaning or some meaning that captures a mood or image of some relevance to the product or service in question. The phrase , for example, when used as a trade mark for diamond wedding rings, arguably possesses a low level of inherent distinctiveness, since it captures the idea of the sparkle of the gemstone. In other cases, it may be because a word with some desirable descriptive meaning is deliberately misspelt. Consider, for example for ice-cream. Where a desirable descriptive word or phrase is misspelt, it is still possible, depending on the facts, that an obvious misspelling will not even avoid a conclusion that the sign lacks the basic capability to distinguish.
[64] In cases where a sign possesses a capability to distinguish but is regarded as not possessing distinctiveness, at the time when chosen and first used, members of the public may over a period of time be taught, through advertising and brand promotion exercises, to recognise the trade mark as performing a trade mark function, namely indicating the trade origin of the goods or services in question. In this way, the trade mark has acquired distinctiveness through use. The investment of time and money to teach the trade mark meaning to the public is the justification for allowing protection by registration.
[65] Allowing a trader to register and obtain a monopoly on words and phrases which other traders may wish to use in respect of their goods and services for entirely legitimate purposes (including competition) is clearly not in the public interest. For example, under the Trade Marks Act 1938 (c 22) (UK) (“UK TMA 1938”), Gibson J held in Smith Kline & French Laboratories Ltd’s Cimetidine Trade Mark [1991] RPC 17 at 34 that in deciding whether a claimed trade mark was inherently adapted to distinguish:
While these observations were in relation to the now repealed UK TMA 1938, the general sentiments expressed by Gibson J remain relevant.
[66] This is why the law shies away from granting rights over descriptive phrases and words of praise. This is also why the law is careful about granting rights too readily over common words, geographical expressions and place names. A trader in Singapore who wants to establish a business in pre-independence memorabilia may conceive the idea of using the phrase . Assuming that the phrase is thought to pass the threshold test of having some capability to distinguish, the level of inherent distinctiveness may still be regarded as falling at the lower end of the spectrum such that it lacks distinctiveness.
[67] The question as to whether there is sufficient use and brand development such that ordinary consumers in Singapore recognise the expression as an indicator of trade origin, as opposed to a description of the nature of the business, will require careful examination of the evidence. It is obvious that, all things being equal, many traders who wish to develop a business dealing in Singapore or Straits Settlements memorabilia may wish to use the words in the phrase in connection with their goods or services for entirely legitimate reasons. Whether the use of the phrase has reached the point where the balance has tipped in favour of the applicant turns on whether, despite the descriptive connotations, the public recognise the phrase (especially if it is set out and limited to a particular font or style) as performing the basic function of a trade mark.
[68] Bearing in mind the above summary of the law and the principles that shape it, I turn to address the issues that have been raised in the Defendant’s attack on the Han’s trade marks. The Defendant argues that the Han’s trade marks are devoid of any distinctive character as they consist only of the surname “Han” with a possessive modifier, ie, the addition of an apostrophe and an “s”. That is said to only denote ownership to a family with a common surname “Han”.
[69] The Defendant further argues that “Han” has multiple meanings in different languages. In Japanese, it can refer to Osaka. In Korean or Chinese, it can refer to Korea or Korean people. In Chinese, it can refer to the Han Chinese, an ethnic group from East Asia. To allow the Plaintiff’s registration of the mark would allow it to exercise its rights of monopoly over the use of “Han”. It would prevent the use of “Han” by anyone with the surname or family name Han, or prevent “any description of Korea (Han), Chinese people (Han) and Osaka (Han) in any restaurant business”.
[70] The Defendant relies on the English decision of Frank Yu Kwan Yuen v McDonald’s Corporation, McDonald’s Restaurants Limited CH/2001/APP No 183 (“Frank Yu v McDonald’s”). This is a decision of Neuberger J (as he then was) on an appeal against a decision of the hearing officer at the UK Trade Marks Registry.
[71] The applicant sought to register the trade mark “McCHINA”. The application met with opposition from McDonald’s. The hearing officer did not allow the registration of the mark. Neuberger J allowed the appeal against the hearing officer’s decision. The Defendant relies on a particular passage at [37] of Neuberger J’s decision in support its position:
[72] The Plaintiff, on the other hand, argues that the Han’s trade marks possess both inherent and acquired distinctiveness. First, “Han’s” is not descriptive or referential to the goods and services provided by the Plaintiff. Rather, it has been used in a manner that is arbitrary in relation to the goods. Second, it is said that the Han’s trade marks have acquired distinctiveness through use. The Plaintiff’s restaurants have been in the food and beverage business for over 20 years. Han’s is a widely-known and reputed brand.
[73] I start by considering the position of the two word marks. The fact that Han is a surname does not mean that, as a matter of principle, it must be treated as being devoid of a distinctive character. Whether or not it meets the requirements for registration depends on the same principle of distinctiveness that applies to any trade mark. There are no special rules for surnames, irrespective of how commonplace the surname is or how persons bear that surname in the phone directory. Indeed, Cornish, Llewelyn & Aplin at para 18–30 are rightly of the view that even if the surname appears hundreds of times in the phone directory, that is not, on its own, a ground to refuse registration. It is a matter of evaluating the surname and the goods and services in question to determine distinctiveness.
[74] In its submissions, the Plaintiff draws a dichotomy between descriptive words and words used arbitrarily in relation to the goods concerned. That dichotomy is a false one, as there is a third category (leaving aside inventive words, which are not in issue here): commonly-used words that have some nexus to the goods concerned, yet are neither descriptive of the goods nor arbitrary in relation to them. Cornish, Llewelyn & Aplin give as an example at para 18–31 words which promote the image of a product, however imprecisely, such as “The Perfectionists” for women’s underwear.
[75] The Court of Appeal decision in The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo v Shop In”) is instructive. There, the plaintiff was the registered proprietor of six trade marks, including the “POLO” word mark. An action for trade mark infringement was brought against the defendant in respect of the use of the sign “POLO PACIFIC”. While Polo v Shop In did not concern the registrability of trade marks, the Court of Appeal, in upholding the finding of no infringement, commented at [23] that the word “polo” was an ordinary English word meaning a game played on horseback. It was also a word used to describe a type of collared t-shirt.
[76] Examples of word marks that were inherently distinctive were said to include inventive words “without any notional or allusive quality”. The Court of Appeal was of the view that the word “polo”, not being an invented word, could not claim inherent distinctiveness. The Court of Appeal further remarked at [23] that “[w]here common words are included in a registered mark, the courts should be wary of granting a monopoly in their use”. For this reason, the Court of Appeal stated that in such cases any alleged distinctiveness must be acquired through use and determined in light of all the circumstances of the case.
[77] The Court of Appeal’s decision in Polo v Shop In ultimately turned on whether the defendant’s sign, “POLO PACIFIC” was similar, and confusingly so to the plaintiff’s registered mark. The comments made in that case must therefore be viewed in that context. The Court of Appeal’s word of caution against granting monopolies over common words is, with respect, understandable. But it is also equally important to recognise that many registered trade marks comprise common words either on their own or in combination with other features such as devices.
[78] Even where a common word is used on its own, it may meet the distinctiveness requirement. When the law addresses the question posed by s 7(1)(b) of the TMA—whether the trade mark is devoid of any distinctive character—the question is not to be answered in the abstract. The definition of trade mark relates to the use of the sign in the course of trade on goods or services in circumstances where the sign has a capability of distinguishing those goods or services. The goods or services in issue are those in respect of which the applicant is seeking registration. The question to be answered is whether the trade mark is devoid of any distinctive character in terms of its ability to distinguish those goods or services in the course of trade.
[79] Take, for example, the word “Poison”. It is an ordinary English word. Suppose that manufacturer decides to enter the mobile phone market by producing his own range of mobile phones under the mark “Poison”. The sign (or trade mark) does not describe the nature of the product or its qualities or attributes. It may even be thought that the use of such a word as the trade mark is incongruous given the product that it is to be used on. Yet, it is that very incongruity which suggests that use of this word in this context is distinctive in the trade mark sense. To put the matter the other way round (as is hinted at by Cornish, Llewelyn & Aplin at para 18–31), is this a word that other honest traders may wish to use for this class or range of goods or services?
[80] I note also in passing that the TMA does not actually refer to the term “inherent distinctiveness”. The question asked by s 7(1)(b) of the TMA is whether the trade mark is devoid of any distinctive character. As noted, this means in relation to the goods or services on which it is to be applied. Under the TMA, brand new trade marks can be registered. There is no requirement that the applicant has already applied the trade mark to the intended goods or services and to have made these available to the public. There is, unlike in passing off, no need to establish an existing business and use of the trade mark.
[81] It follows that in the right circumstances, a brand new trade mark which comprises ordinary words can be registered even if there has been no actual use at the time of the application. In such a case, the applicant will not be able to rely on evidence of use to make out a case that the trade mark is or has become distinctive. But this does not mean that the trade mark cannot be registered. Even without actual use, the intended use of the trade mark (which must be bona fide) may possess a distinctive character bearing in mind the character of the trade mark and the nature of the goods or services to which it is to be applied. To the extent that modern case law refers loosely to the concept of inherent distinctiveness, it is suggested that this refers to the character and nature of the trade mark in the context of the goods or services for which registration is sought. I pause here to comment on terminology. What the TMA requires is that the trade mark is distinctive. Once a trade mark is found to be distinctive, it meets the requirement of distinctiveness. There is no requirement that the trade mark reach a “high” standard or level of distinctiveness. A trade mark may be distinctive at the outset or after a period of use. To the extent that the law refers to “inherent distinctiveness” in contradistinction to distinctiveness generated by use, the expression best refers to distinctiveness arising from the trade mark alone without reliance on use.
[82] That said, I note that inherent distinctiveness is also sometimes used in a manner that is closer to the idea of a “capability to distinguish”. Some trade marks may have a low level of inherent distinctiveness such that the trade mark does not yet possess a distinctive character. If so, proof of actual use of the trade mark together with branding promotion exercises may be sufficient to save the trade mark under s 7(2) of the TMA.
[83] One problem with a common surname is that the surname may well be a name which honest traders may also wish to use on the goods and services. The same may also be true for geographical names. In Nichols v RTM, the Advocate-General in presenting his opinion to the ECJ noted at [18] the comment of Jacob J (the English judge who referred the question of registrability of common surnames to the ECJ) that the problem with use of a surname as a trade mark is the risk of monopolisation deriving from the registration of a common surname to cover a wide range of goods and services. For that reason, Jacob J questioned whether the fact that the registration might be challenged after five years of non-use was an insufficient safeguard in respect of that risk.
[84] The concern over registration of surnames involves a broad question of policy: what is the role of trade mark law and to what extent is there a risk that the trader who registers first gains an unfair advantage? This is not a policy concern that can be easily addressed in the courts. It may nonetheless be helpful to point out that the ECJ in its judgment responded in robust terms at [31] that “[t]he registration of a trade mark constituted by a surname cannot be refused in order to ensure that no advantage is afforded to the first applicant”. There was simply no provision in the Council Directive 89/104/EEC which had that effect. Susanna H S Leong, Intellectual Property Law of Singapore (Academy Publishing, 2013) (“Susanna Leong”) observes at para 28.142(c) that:
[85] In Nichols v RTM, the ECJ held at [30] that, just as a term used in everyday language, “a common surname may serve the trade mark function of indicating origin and therefore distinguish products or services concerned”. The exception was where it is caught by a ground for refusal such as being generic or descriptive or because of conflict with an earlier trade mark.
[86] Of even greater significance is the finding of the ECJ at [34] that in assessing the existence or otherwise of the distinctive character of a trade mark constituted by a surname, even a common surname, this must be done specifically in accordance with the criteria applicable to any sign. The fact that the effects of registration of a trade mark may be limited under art 6(1)(a) of the Council Directive 89/104/EEC was irrelevant.
[87] Council Directive 89/104/EEC referred to in Nichols v RTM was a directive concerned with harmonisation of trade mark laws amongst the Member States of the European Economic Community. (It has since been replaced by European Union Directive 2008/95/EC.) Article 6(1)(a) of Council Directive 89/104/EEC sets out a limitation on the effect of a registered trade mark. Registration will not prevent a third party from using in the course of trade his own name or address, provided he does so in accordance with honest practices in industrial or commercial matters. The point made by the ECJ was that in deciding whether a surname is registrable (distinctive) it was not proper to have regard to the fact that there is a defence which allows third party use of his own name (subject to the conditions and requirements of the defence).
[88] Section 28(1)(a) of the TMA sets out a similar provision permitting the use of a person’s own name where the use is in accordance with honest practices in industrial or commercial matters. While I am not bound by decisions of the ECJ, I agree that in deciding whether a surname possesses a distinctive character in the trade mark sense, it is incorrect to take account of the existence of the defensive limitation. The fact that there is a defensive limitation which may mitigate some of the effects of registration does not mean that the Registry of Trade Marks or courts are to lean in favour of registration. However, what it does mean is that parliament is cognisant of the likelihood that surnames, even common surnames can be found to possess the required distinctiveness for registration. At the very least, it means that there is no automatic bias against a surname even a common surname as a registered trade mark.
[89] Coming back to the facts of the present case, “Han” is capable of taking on a number of meanings in plain usage (see above at [69]), quite apart from it also being a surname. The addition of a possessive modifier can produce different permutations of meaning. None of those permutations are descriptive of the goods and services that the Plaintiff provides—pastries, local food and Hainanese-style western food.
[90] But the fact remains that “Han” is a relatively common surname. If I am right in thinking that one guide in assessing distinctiveness is the question of whether the sign is one which other honest traders may wish to use on goods or services, the consequence is that the level of inherent distinctiveness falls towards the lower end of the spectrum. While the mark in question is “Han’s” (as opposed to “Han”) I doubt that the addition of the possessive modifier is enough to enable a finding that “Han’s” possesses a distinctive character for the goods or services.
[91] Reference may be made to the decision of the Court of Appeal in The Singapore Professional Golfers’ Association v Chen Eng Waye and others [2013] 2 SLR 495 at [29] where it was said that a name or a choice of words that is either meaningless or has no discernible correlation to the product or service (a fancy word) generally serves no purpose other than as a mark or badge of origin or source of that product or service. Examples given (citing Christopher Wadlow, The Law of Passing-Off: Unfair Competition by Misrepresentation (Sweet & Maxwell, 4th Ed, 2011) (“Wadlow’s Law of Passing-Off”) at para 8–075) were “Eureka” for shirts, “June” for toiletries, or “Puffin” or “Penguin” for chocolate-coated sandwich biscuits. It is interesting to note that the comment in Wadlow’s Law of Passing Off on the latter two word marks was that they were “names of unpalatable seabirds both”. For this reason, it appears the word marks were regarded as arbitrary and fanciful in nature.
[92] Take, for example, the word “June”. It is ordinarily either a personal name or the sixth month in the calendar year. While “June” is unlikely to be a surname, it is a well-known forename or personal name. “Han”, on the other hand, is a surname and also has allusions to Chinese and Korean people. Indeed, the evidence is that the word “Han” in Japanese can also be taken as a reference to Osaka. Does this mean that as a whole, “Han” or “Han’s” is inherently relatively less distinctive for restaurant services than “June” is for toiletries? Susanna Leong comments at para 28.143 that, in general, a full name is better able to serve the function of a trade mark as compared to a name or surname (although I note that problems may arise where the full name is the name of a celebrity and the goods or services are connected with memorabilia). Signatures, depending on all the circumstances, may also meet the requirements of distinctiveness.
[93] Han does appear to be a fairly common surname and the allusions to China, Japan and Korea are not inconsistent with the registration for restaurant services (especially so given that the food is a mixture of local fare and western sets). In the present case, I am of the view that the Han’s word marks, while possessing a low level of inherent distinctiveness, do not meet the criteria of distinctive character as set by s 7(1)(b) of the TMA. In coming to this conclusion. it must be accepted that there is no easy answer to the question of how much distinctive character there must be to constitute a registrable mark.
[94] On this, James Mellor et al, Kerly’s Law of Trade Marks and Trade Names (Sweet & Maxwell, 15th Ed, 2011) (“Kerly’s Law of Trade Marks”) at para 8–042 responds: “[a]part from enough, there is no easy answer to this question.” The learned authors continue that not even the ECJ has been able to provide a concrete answer. The reason being:
[95] However, “Han’s” as a word not possessing a distinctive character on its own (in the trade mark sense), is no impediment to the Han’s composite marks (both the red and black) from possessing a much higher level of inherent distinctiveness which provide the Han’s composite marks with a distinctive character. In my view, the unique stylisation and typeface of the Han’s composite marks (within the framed outline) are sufficient to support the conclusion that the Han’s composite marks possess a distinctive character.
[96] In any event, all of the Han’s trade marks would satisfy the distinctiveness requirement by acquisition through use under s 7(2) of the TMA. In invalidation proceedings, the use of the registered mark subsequent to registration can contribute to it acquiring distinctiveness under s 23(1) of the TMA.
[97] The report produced by Ipsos Marketing indicated that 79.4% of the 1,001 respondents surveyed had heard of “H.A.N.S”. Mr See Toh, the Defendant’s expert, agreed that “Han’s” was a Singapore brand familiar to many Singaporeans. “Han’s” has been used in conjunction with the cafés in question since 1980. The Plaintiff now operates 21 Han’s Café outlets island-wide. Indeed, the Defendant did not argue that the Han’s trade marks had not acquired distinctiveness through use.
[98] I, therefore, hold that the Han’s trade marks are capable of distinguishing the goods and services of the Plaintiff from that of other traders. While the Han’s word marks are not sufficiently inherently distinctive on their own to meet the requirement of distinctive character, the Han’s composite marks, satisfy the requirements set out in section 7(1)(b). All the Han’s trade marks have, in any event, acquired distinctiveness through use. There are, therefore, no grounds for invalidating any of the Han’s trade marks under s 23 of the TMA.
Whether the Defendant’s use of the HAN sign infringes the Han’s trade marks under s 27 of the TMA
[99] Leaving aside the case where the Defendant has used an identical sign on identical goods or services, the test for trade mark infringement is found in s 27(2) of the TMA. Section 27(2) states that:
[100] In the case where the Defendant has used an identical sign on identical goods or services s 27(1) of the TMA applies—there is no need to prove any likelihood of confusion. The TMA, therefore, provides for sliding scale of protection: the strongest protection is conferred in cases where the defendant has used an identical mark on identical goods or services. Where a similar mark is used on identical or similar goods or services, there is an added requirement of likelihood of confusion. In the present case, infringement is founded on the use of a similar mark on identical or similar goods and services.
[101] Where the claim is advanced under s 27(2) of the TMA, our courts have applied the statutory formulation in three steps:
(a) First, the allegedly infringing sign must be similar to the registered mark.
(b) Second, both the sign and the mark must be used in relation to similar or identical goods or services.
(c) Third, there must exist a likelihood of confusion on the part of the public on account of the preceding two factors.
[102] I mention in passing that the ECJ takes a slightly different approach under their equivalent provisions. The current European approach as set out in Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 and Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (formerly Pathé Communications Corporation) [1999] RPC 117 has been described as the “global assessment” method.
[103] Under this approach, the first two steps are considered as part of and within the question of whether there is a likelihood of confusion on the facts and circumstances as a whole. In Polo v Shop In, the Court of Appeal agreed with the judge at first instance, Lai Kew Chai J, that a three-step test was preferable given the language and structure of s 27(2) of the TMA. The Court of Appeal accepted at [8] that while the first and third steps were different, there was some overlap between both. After all, the greater the similarity between the mark and the sign, the greater the likelihood of confusion. The important point, however, is that the court cannot assume that just because the mark and sign are virtually identical, there must be a likelihood of confusion.
[104] Whether the court applies the three-step approach or the global assessment approach, it is clear that there is no presumption that there must be a likelihood of confusion just because an even identical sign has been applied to similar goods or services. It is for this reason that the Court of Appeal observed that in practice, the end result of the two approaches was not likely to differ. Similarly, Andrew Phang Boon Leong J (as he then was) in Nation Fittings v Oystertec observed at [95] that there was no inherent contradiction between the two approaches. Under both approaches, attention must be paid to the specific factors set out in the first and second steps.
Whether the HAN sign is similar to the Han’s trade marks
[105] There are three aspects to the mark-similarity analytical framework: visual, phonetic and conceptual similarity. In determining whether the allegedly infringing sign is similar to the registered mark, both the mark and the sign will be considered as a whole. The comparison is mark-for-mark: similarity is determined on the face of the marks, without consideration of any factors extrinsic to the marks. The analysis is not to be carried out in a mechanistic or formulaic manner. There is also no requirement for all three aspects of similarity to be present before the court concludes that the allegedly infringing sign and the registered mark are similar.
[106] The similarity of the marks is assessed from the perspective of an average consumer, who would exercise some care and a measure of good sense in making his or her purchases. Leeway must also be given for the imperfect recollection of the average consumer. These general principles were summarised by the Court of Appeal in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941 (“Hai Tong v Ventree”) at [40].
[107] In considering the mark as a whole, however, there is no contradiction if the court places especial emphasis on dominant or impactful components of the mark. In Hai Tong v Ventree at [40(a)], the Court of Appeal made the point that not every aspect of similarity will be of equal importance. The court is concerned with the overall impression created in the mind of the average consumer, and in certain circumstances, that impression may be dominated by one or more of the mark’s components: Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell v Starwood”) at [27] citing the European Court of First Instance in Matratzen Concord GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2002] ECR II-4335 at [34].
[108] The idea of distinctiveness is also embedded in the mark-similarity inquiry. I have discussed distinctiveness above at [52]–[98] in the context of the registrability of a trade mark. While the distinctiveness test at the registrability stage leads to a binary outcome (ie, registrable or not registrable), it plays a more nuanced role at the marks-similarity stage.
[109] In general, it appears that the more distinctive a mark, then the more compelling the degree of dissimilarity the defendant will have to demonstrate between his sign and the registered mark. Or to put the matter the other way round, the more distinctive the registered trade mark, the easier it will be to demonstrate the defendant’s use of similar elements in his sign amounts to use of a similar sign. Conversely, “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”: Hai Tong v Ventree at [30]. See also Susanna Leong at para 28.353 citing Ferrero SpA v Sarika Connoisseur Cafe Pte Ltd [2011] SGHC 176 for the proposition that where distinctiveness is low, less alteration is necessary to ensure that the defendant’s mark is dissimilar. A similar approach was also taken by the High Court in Intuition Publishing Ltd v Intuition Consulting Pte Ltd [2012] SGHC 149 (“Intuition Publishing”) at [41].
[110] The Court of Appeal in Polo v Shop In at [23] was amenable to taking into account distinctiveness acquired through use (as well as inherent distinctiveness) in deciding whether the defendant’s sign was similar to the mark. This makes sense as similarity is examined from the perspective of the average customer.
[111] Kerly’s Law of Trade Marks at para 9–093 also importantly observes that it is not appropriate to concentrate on similarities to the exclusion of differences. As has been said, albeit in a different context, differences are the shadow of similarities and vice versa. This may be a reason why the ECJ prefers to assess similarity of the mark/sign and goods/services as part of the overall assessment of the likelihood of confusion. Similar or different in what context or for what purpose? Even though Singapore takes a step-by-step approach to s 27(2)(b) of the TMA, a common sense approach should be taken when assessing whether the mark and sign in issue are similar or different. There should be no automatic bias for phonetic similarity over visual similarity or indeed an assumption that there is a dominant feature. This may or may not be the case. In the case of composite marks, it is also wrong to assume that word elements are always dominant over graphic elements.
[112] The Plaintiff’s argument on similarity rides on the back of its assertion that the dominant element of the HAN sign is the word “HAN”. The Plaintiff asserts that for the purpose of assessing marks-similarity, only “HAN” should be used. The phrase “Cuisine of Naniwa” and the Kushikatsu device (described at [9] above) should be disregarded.
[113] The Plaintiff’s dominant element argument is based on three interrelated claims. First, the word “HAN” is written in a large and bold font. It, therefore, stands out against the white background of the Defendant’s sign. Second, the “Cuisine of Naniwa” element is significantly smaller and in a subsidiary position below the large capital “HAN” letters. Third, the Kushikatsu device is not part of the sign, and even if it is, it is purely decorative and devoid of distinctiveness. The Plaintiff also says that consumers, food reviewers, and even the employees of the Defendant, refer to the Defendant’s restaurant as HAN. The Plaintiff relies on the decision of the ECJ in Oyster Cosmetics SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2011] ETMR 26 (“Oyster Cosmetics”) in support of its argument.
[114] While I accept that the word “HAN” is the most prominent element of the Defendant’s HAN sign, I do not agree that the court should disregard the other elements of the HAN sign in the marks-similarity analysis. In my view, the HAN sign must be considered in its entirety. That is what the average consumer would regard as the sign that the Defendant’s restaurant is trading under. In my view, the Han sign comprises the word, phrase and Kushikatsu device.
[115] I deal first with the Plaintiff’s reliance on Oyster Cosmetics. In that case, the ECJ compared two marks. One contained the word “oystra” and the other, the word “oyster”. Both marks had some wording in subtext, in a significantly smaller font. The “oyster” mark additionally had an oyster device next to the word “oyster”. The ECJ did not disturb the conclusion of the court below that the words “oystra” and “oyster” dominated the overall impression that would be produced in the memory of the relevant public.
[116] The persuasiveness of Oyster Cosmetics is doubtful to the extent that it relied on the rule that in a composite mark “words talk” (Oyster Cosmetics at [36]):
This rule was considered and squarely rejected by the Court of Appeal in Hai Tong v Ventree at [41]. The mark in question must be looked at as a whole, without placing undue emphasis on any particular component of the mark unless it is warranted on the facts.
[117] Second, and more importantly, the ECJ was of the view that, on the facts of Oyster Cosmetics (at [33] and [37]) the “other word and figurative elements were negligible [to the relevant] public”, such that the analysis could proceed simply on a comparison of “oystra” with “oyster”. Whether or not a court will do so necessarily depends on the facts of the case and the marks that are placed before it.
[118] While I agree that the textual “HAN” component is prominent in the HAN sign, I do not agree that the rest of the components are negligible to the extent that they can be disregarded. In my view, the phrase “Cuisine of Naniwa” and the Kushikatsu device both play essential parts in the overall impression conveyed by the HAN sign.
[119] The phrase “Cuisine of Naniwa” is significantly smaller than the “HAN” text but is important because it puts in context the manner in which “HAN” is used. I have alluded to the multiple meanings the word “HAN” is capable of bearing. The inclusion of “Cuisine of Naniwa” suggests that “HAN” is used in its ethnic or geographical sense: to refer to food originating from a particular place or of a particular people. While this bears a descriptive connotation, the phrase is encircled by the Kushikatsu device to form a unitary whole. The imperfect recollection of the average consumer may mean that he does not necessarily recall the phrase “Cuisine of Naniwa” but the phrase would, nonetheless, have affected his perception of “HAN” and his recollection of it.
[120] The Kushikatsu device is prominent because it encircles the “HAN” and “Cuisine of Naniwa” elements in their entirety. It is not merely badge or graphic placed next to the dominant text in question, as was the case in Oyster Cosmetics. The Kushikatsu device is also crucial to the HAN sign because of the dissonance it creates when used in conjunction with the otherwise inconspicuous text of “HAN” and “Cuisine of Naniwa”. The impression created by the HAN sign emanates from the juxtaposition of the brusque, free-hand brush strokes of the Kushikatsu device with the precise and neat typeface of the “HAN” and “Cuisine of Naniwa” text. The obvious asymmetry of the Kushikatsu device contrasts with the apparent symmetry of the minimalist “HAN” and “Cuisine of Naniwa” text, which adds to the overall “feel” of the sign.
[121] I am, therefore, of the view that the “Cuisine of Naniwa” text and the Kushikatsu device are not negligible such that they can be disregarded from the marks-similarity comparison, as was done in Oyster Cosmetics.
Visual similarity
[122] The Plaintiff argues that the HAN sign and the Han’s trade marks are similar because they share a common denominator, the alphabets H, A and N. Further, the difference in typeface and colours used in the HAN sign and the Han’s trade marks are irrelevant. The Han’s trade marks are registered as word marks as well as a device mark. The Plaintiff argues that the TMA only allows the registration of a word mark in block letters and in one font. Therefore, trade mark protection may not be circumscribed simply by changing the font or style of the lettering of the word mark.
[123] The Plaintiff relies on the High Court decision of Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012] 3 SLR 193 (“Doctor’s Associates v Lim Eng Wah”) and Intuition Publishing. In the latter case, Judith Prakash J held at [24] that the sign “intuition” was identical to the registered trade mark “INTUITION” since a mark registered in upper case in plain font covers all stylistic permutations.
[124] The Defendant, on the other hand, argues that there is no visual similarity between the HAN sign and the Han’s trade marks. The Defendant relies on the evidence of its expert, Mr See Toh. Mr See Toh’s views were that the visual presentation of the HAN sign was distinct from that of the Han’s trade marks. That said, I will not repeat my earlier comments on the rationale and value of expert evidence on infringement issues.

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Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd

Grounds of decision

The Plaintiff’s restaurants and its registered marks

The Defendant’s restaurant and the allegedly infringing sign

The arguments

The issues

The witnesses and evidence

Whether the Han’s trade marks should be declared invalid under s 23 of the TMA

Whether the Han’s trade marks are capable of distinguishing goods or services

Whether the Han’s trade marks are distinctive

Whether the Defendant’s use of the HAN sign infringes the Han’s trade marks under s 27 of the TMA

Whether the HAN sign is similar to the Han’s trade marks

Visual similarity