31 May, 2012
Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property
A rose is not a rose by any other name. The Plaintiff, Hai Tong Co Pte Ltd is the proprietor of the trade mark “Lady Rose” in relation to cosmetics. The Plaintiff has been distributing cosmetics under this trade mark since the 1960s. The Plaintiff is also the proprietor of The First and Second Defendants, Ventree Singapore Pte Ltd and SKY, respectively distributed and retailed a range of products with the mark “Rose Lady”. The Plaintiff took an action against the Defendants for trade mark infringement and passing off.
Trade Mark Infringement
The Plaintiff claimed that the Defendants have infringed the registered trade mark by the use in the course of trade of a sign where, because the sign was similar to the registered trade mark and was used in relation to goods similar or identical to those for which the registered trade mark was registered, there existed a likelihood of confusion. The Court has no problem finding that the Defendants’ mark share strong visual, aural and conceptual similarities with the Plaintiff’s mark. The Court also found that there is likelihood of confusion to substantial portion to the relevant public.
Passing Off
The Court however rejected the Plaintiff’s claim for passing-off on the basis that the Plaintiff is unable to prove damage or likelihood of damage to its goodwill. In this regard, the Court found that the Plaintiff’s goodwill in the mark is minimal as the Plaintiff had no adequate, sustained promotion and advertisement of its products in a crowded and competitive cosmetics market place. As the Plaintiff’s goodwill is minimal, the Court was unwilling to infer that there was damage or real likelihod of damage to the very limited goodwill of the Plaintiff.
For further information, please contact:
Cyril Chua, Partner, ATMD Bird & Bird
