Jurisdiction - Singapore
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Singapore – Battle Of The Subways.

31 May, 2012

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

Popular American sandwich chain “Subway” (the “Plaintiff”) recently brought local businessman, Mr Lim Eng Wah (trading as SUBWAY NICHE) (the “Defendant”) to court for infringement of its “Subway” trade mark.

 

The Defendant first applied the name “Subway Niche” in 1987 at an outlet in Wisma Atria and sold local and traditional fare, such as nonya kuehs, bubble tea and sandwiches comprising variants of pre-packaged sliced white bread with fillings.

 

In contrast, the Plaintiff opened its first outlet in Singapore in 1996 and its primary offerings are foot-long and 6-inch long sandwiches made on freshly baked bread rolls with a choice of fillings, modelled after the classic Italian “submarine” sandwiches. The Plaintiff was also the registered proprietor of the “Subway” word mark in relation to, inter alia, bread rolls and sandwiches.

 

After a thorough examination of the law and the evidence, the Plaintiff successfully persuaded the High Court that the marks “Subway” and “Subway Niche” were visually, aurally and conceptually similar and further that the Defendant’s goods were similar to the Plaintiff’s goods.

 

The Plaintiff was, however, unable to cross the final threshold required to establish infringement – a likelihood of confusion. On this point, the High Court remarked that in order for the Plaintiff to succeed, it would need to demonstrate that consumers who purchase the Defendant’s goods believe that said goods originate from or are associated with the Plaintiff and on the evidence (or the lack of evidence), it was not established that even a de minimis section of the public would be confused by the marks. The High Court further noted that the pains taken by the Defendant to distinguish his goods from the Plaintiff’s weigh in strongly against the likelihood of any confusion.

 

In any event, even if the Plaintiff had succeeded in its claim for infringement, the Defendant would have nevertheless prevailed because it had started using the mark “Subway Niche” and selling sandwiches, and continues to do so, prior to the Plaintiff’s registration of the said trade marks.

 

The case is reported at Doctor’s Associates Inc v. Lim Eng Wah (trading as SUBWAY NICHE) [2012] SGHC 84.

 

 

For further information, please contact:

 

Arthur Yap, ATMD Bird & Bird

Arthur.yap@twobirds.com

 

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