Cases

Trade Marks and Trade Names

The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] SGCA 14

Court of Appeal — Civil Appeal No 67 of 2005

Yong Pung How CJ, Chao Hick Tin JA and Tan Lee Meng J

21 February; 31 March; 6 April 2006

Trade Marks and Trade Names — Infringement — Appellant alleging respondent’s sign infringing appellant’s registered word mark — Applicable test for infringement under s 27(2)(b) Trade Marks Act — Whether respondent’s sign similar to appellant’s word mark — Whether goods to which defendant’s sign and plaintiff’s mark applying similar — Whether likelihood of confusion on the part of the public existing — Section 27(2)(b) Trade Marks Act (Cap 332, 1999 Rev Ed)

M Ravindran, Sukumar Karuppiah and Adrian Kwong (Ravindran Associates) for the appellant; and Anthony Lee Hwee Khiam and Alvin Chen Yi Jing (Bih Li & Lee) for the respondent.

This was an appeal against the decision of Lai Kew Chai J (‘Lai J’) where he dismissed the action instituted by The Polo/Lauren Company, LP (‘the appellant’) against Shop-In Department Store Pte Ltd (‘the respondent’) for an alleged infringement of the appellant’s trade mark under s 27(2)(b) of the Trade Marks Act (‘the Act’).

The appellant was the registered proprietor of the ‘POLO’ word mark (‘the word mark’). The respondent operated suburban stores that sold items at prices affordable to the masses. The respondent had applied to the Registry of Trade Marks to have the sign ‘POLO PACIFIC’ (‘the sign’) in the same class as the word mark. This application was accepted by the Registry for publication, although it was pending opposition by the appellant. In the meantime, the respondent had started to sell goods bearing the sign.

The appellant commenced suit, alleging that the respondent had breached the Act and a prior undertaking not to infringe the appellant’s marks. Lai J held that the appellant’s trade mark had not been infringed, and dismissed the appellant’s claims. The appellant appealed against Lai J’s decision.

Held, dismissing the appeal:

The test in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (‘the British Sugar test’) was more appropriate than the global assessment test. Applying the British Sugar test, s 27(2)(b) would only be infringed if three conditions were present: (a) the alleged offending sign must be shown to be similar to the registered mark; (b) both the sign and the mark must be used in relation to similar goods or services; and (c) on account of the presence of the first two conditions, there existed a likelihood of confusion on the part of the public.

Despite some link and overlap between the first and third conditions, they were different. The fact that a sign was similar to a registered mark and used in relation to similar goods did not automatically mean that there would be a likelihood of confusion on the part of the public.

The word mark had not acquired distinctiveness as the appellant had not promoted or used the word mark on its own. The word mark was also not distinctive per se as it was an ordinary English word. Moreover, the word mark was not an inventive word and could claim no inherent distinctiveness.

The sign, with its special font and design, could not be said to be similar to the word mark except in the broadest sense. The extent of similarity was further reduced by the fact that the appellant had not claimed a monopoly of the word ‘polo’. Accordingly, the word mark and the sign were visually, aurally and conceptually different.

It was clear from the terms of s 27(2)(b) that it did not necessarily follow that just because a registered mark and a sign, as well as the goods, were similar, confusion would automatically arise.

The question of likelihood of confusion had to be looked at globally, taking into account all the circumstances including the closeness of the goods, the impression given by the marks, the possibility of imperfect recollection and the risk that the public might believe that the goods came from the same source or economically-linked sources. Other extraneous factors could also be taken into consideration when determining the issue of confusion, including steps taken by the allegedly infringing party to differentiate his goods from those of the registered proprietor, and the kind of customer likely to buy their respective goods.

Admitting such extraneous factors to determine confusion under s 27(2)(b) would not blur the distinction between a passing-off action and an action for infringement under s 27(2)(b).

It was unlikely for the average consumer to be confused. Unlike the respondent’s goods which were sold in their stores located in modest suburban shopping centres, the appellant’s retail outlets were found in prime shopping centres. Moreover, there was a great disparity in prices between the appellant’s goods and those of the respondent, not counting the fact that the appellant’s goods came in nice packaging. The appellant’s target consumers, who were likely to be more sophisticated and discerning, were clearly of a different class from those of the respondent.