29 September, 2012
Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property
Under Section 27(1) of the Trade Marks Act, a person infringes a trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign, which is identical with the trade mark and in relation to goods or services which are identical with whose for which it is registered.
In the recent decision of Intuition Publishing Ltd v Intuition Consulting Pte Ltd [2012] SGHC 149, one of the issues that arose for consideration by the High Court was whether the defendant’s signs, which, inter alia, comprised of the words “INTUITION CONSULTING/ intuition consulting” and “Intuition Consulting Pte Ltd” were identical to the plaintiff’s registered mark, “INTUITION”.
In its submissions, the plaintiff had relied on the case of Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd [2003] 4 SLR(R) 755 (“Pan-West”) for the proposition that in a determination of whether a sign was identical to a trade mark, it would suffice if “the distinctive and dominant components of the alleged infringing sign were identical to the registered trade mark”. This is known as the “broad approach”.
The High Court however pointed out that the Court of Appeal in The Polo/Lauren Co, LP v Shop In Department Store [2006] 2 SLR(R) 690 (“Polo/Lauren”) had differed from this approach, opting instead for a strict interpretation of the meaning of the word “identical”. The High Court highlighted that Polo/Lauren had affirmed the position in both the English decision of Origins Natural Resources Inc v Origin Clothing [1995] FSR 280, where the court held that “Origin” was
not identical to “Origins” because of the omission of the alphabet “s”, and the case of SA Societe LTJ Diffusion v Sadas Vertbaudet SA [2003] FSR 34(“Sadas”), where the European Court of Justice strenuously said that the “criterion of identity of the sign and the trade mark must be interpreted strictly. The very definition of identity implies that the two elements compared should be the same in all respects.”
The High Court however acknowledged that because the issue of identical mark did not arise in Polo/Lauren, the Court of Appeal’s comments in that regard were considered to be obiter dicta and could not be taken to have expressly overruled Pan-West.
Be that as it may, the High Court went on to highlight the later Court of Appeal decision of City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 (“City Chain”) and considered that the effect of the Court of Appeal’s decision in that case was to overrule Pan-West, even though Pan-West was not expressly mentioned in that case. In coming to the conclusion that the defendant’s sign was not identical to the plaintiff’s mark, the Court of Appeal in City Chain adopted the strict approach advocated in Sadas, and held that minor differences would make a mark and sign non-identical.
Essentially, the rationale for such a strict approach as explained by the Court of Appeal in City Chain is to ensure that the protection accorded under Section 27(1) did not extend beyond the situations for which it was envisaged, because once it is shown that a sign is identical to a registered mark, and for identical goods, it automatically follows that infringement is established, irrespective of whether there is proof of likelihood of confusion in the public.
Watering down the boundaries of the interpretation of an identical mark would entitle proprietors to loosely and unjustifiably claim trade mark infringement under Section 27(1). This is against public policy and the High Court’s affirmative decision of the strict approach is welcomed.
For further information, please contact:
Terri Koh, ATMD Bird & Bird
