31 July, 2012
Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2012] SGHC 104 concerned an action by the proprietor of the (stylized) “Lady Rose” trade mark, which is registered for, inter alia, cosmetics, against the distributor and retailer of cosmetic products sold under the name “Rose Lady” for trade mark infringement and passing-off. The High Court found the defendants liable for trade mark infringement, but dismissed the plaintiff’s claim for passing-off.
For there to be trade mark infringement, there must have been use of the offending sign “in the course of trade”. The defendants argued in their defence that there was no infringement because the phrase “Rose Lady” was not used as a trade mark.
This argument was rejected by the judge. Citing numerous authorities, he held that a product was capable of having more than one trade mark, so that secondary or tertiary product identifiers can function as trade marks if they indicate the origin of a product. If the secondary product identifier is a fancy word, then it could not be taken as anything but a trade mark. The judge found “Rose Lady” to be non-descriptive
and therefore a fancy mark that was used as a secondary mark.
The defendants also argued that the goods had been marketed under the sign “VOV” or “VOV Rose Lady”, rather than “Rose Lady”. The judge also rejected this argument on the basis that the “VOV” mark was not prominently displayed on the packaging of the products.
To establish infringement, the plaintiffs had to show
(a) the “Rose Lady” sign was similar to the “Lady Rose” mark;
(b) the “Rose Lady” sign was used in relation to identical or similar goods as those for which the plaintiff’s mark was registered; and
(c) there was a likelihood of confusion on the part of the public.
Identity of goods (i.e., cosmetics) was not in dispute. Notwithstanding that the “Lady Rose” mark and the “Rose Lady” sign consisted of inverted words, the judge found the mark/sign to be visually and aurally similar, particularly when the “imperfect recollection” of the consumer is taken into account. Because of imperfect recollection, the judge also gave little weight to the fact that the “Lady Rose” mark included elements (i.e., drawing of a rose and cursive font) that were not present in the “Rose Lady” mark.
Accordingly, the judge held that there was likelihood of confusion on the part of the public. The claim of trade mark infringement was thus made out.
However, the defendants were not liable for passing-off because the plaintiff could not establish that it had goodwill in the mark. Despite evidence that the plaintiff had been trading under the mark for 40 years, the judge was of the view that the plaintiff having failed to adduce evidence of adequate and sustained promotion and advertisement of its mark in recent years, there was no goodwill.
Interestingly, the judge also commented that he believed the defendants’ “VOV” line of cosmetics to be a better known brand than “Lady Rose”. Be that as it may, this did not prevent the judge from finding the defendants liable for trade mark infringement.
This case underscores the importance for a business to secure registration of its trade marks, including any secondary or tertiary product identifiers which it intends to use on products, and serves as a timely reminder that well-knownness of a defendant’s mark is not a defence to trade mark infringement.
For further information, please contact:
Oh Pin-Ping, ATMD Bird & Bird
