In TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2022] SGHC(A) 4, the Appellate Division of the High Court, unaminously upheld the decisions of the primary Judge (“Judge”) in TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163 for trade mark infringement, passing off and applications for invalidation of registered trade marks.
Appellate Division of the High Court — Civil Appeal No 80 of 2021 Judges: Belinda Ang Saw Ean JAD, Woo Bih Li JAD, See Kee Oon J Judgment Date: 18 February 2022 Appellants: TMRG Pte Ltd & Luke’s Tavern Holdings Pte Ltd Respondents: Caerus Holding Pte Ltd & Lukes Seafood LLC Appeal from: TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163
In TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163, TMRG Pte Ltd and Luke’s Tavern Holdings Pte Ltd (“Plaintiffs”) who operated fine dining establishments using the Luke’s Oyster Bar and Chop House” mark, commenced court proceedings against Caerus Holding Pte Ltd and Lukes Seafood LLC (“Defendants”) for trade mark infringement, passing off and applied to invalidate the two registered trade marks by Lukes Seafood LLC. The Defendants operate a chain of Lobster Shacks under the name Luke’s Lobster. The summary of the primary judgment can be found here.
The primary Judge (“Judge”) had earlier held:
- No trade mark infringement or passing off by the Defendants
- Claim for invalidating of the Defendants’ registered marks failed
The Judge found that the Defendants could rely on “own name” and “registered trade mark” defences under ss 28(1)(a) and 28(3) of the Trade Marks Act (Cap 332, 2005 Rev Ed)(“TMA”) respectively and did not grant an injunction in favour of the Plaintiffs to prohibit the continued use of the two registered trade marks.
Before the Appellate Division of the High Court (“Appellate Division”), the Appellants re-emphasized their arguments surrounding the “Luke’s” brand by asserting that their customers had known them by the name “Luke’s” and that “Luke’s” had acquired distinctiveness through use.
The Appellate Division found inconsistent use of the “Luke’s” simpliciter did not help its case. While the Luke’s simpliciter was used on the shopfront of the Appellants’ restaurants and cutleries, the restaurant windows used the composite mark nine-word mark “
”. The Luke’s simpliciter was also never used on name cards, internet websites or social media. This inconsistency was extended to Appellants’ use of their unregistered logo in various forms. The Appellant Division took the view that the inconsistent use did not assist in the Appellants’ case of acquired distinctiveness through use. The inconsistent use of trade marks in various forms compromised the Appellants’ trade mark infringement case.
The Appellate Division noted that even if distinctiveness was found any particular dominant component of a mark, this must ultimately be related back to the impression given by the mark as a whole. In this case, the words “Oyster Bar/Chop House/Travis Masiero Restaurant Group” do not perform purely a descriptive function. They contributed to the distinctiveness of the mark as a whole and differentiated itself from other establishments bearing similar name. The Appellate Division agree with the Judge’s decision that commonly used personal names are not particularly distinctive and upheld the Judge’s conclusion that the Appellants’ and Respondents’ registered trade marks were not similar.
The Appellate Division noted that the Appellants did not oppose the Respondents’ trade mark applications and inferred that the Appellants did not think that the Respondents’ trade mark would result in confusion among consumers.
The Appellate Division also considered the matter involving the revocation of trade mark filed by the second Respondent to revoke first Appellant’s trade mark registration in Hong Kong. In a letter dated 15 May 2020, the Appellant’s solicitor in Hong Kong noted that the parties have different target customer bases and this was taken to be a concession on the part of the Appellants.
The Appellate Division concluded that the primary Judge did not err in application of law and upheld the primary Judge’s decision in regards to trade mark infringement, passing off and applications to invalidate the Respondents’ registered trade marks.
Takeaways
In placing emphasis on acquired distinctiveness of trade marks through use, the key is to maintain consistency in using trade marks as a badge of origin. This is important when it comes to enforcing your rights through infringement proceedings or action in passing off.
The present case also further confirms that personal names that are common are not distinctive. Hence the words that ensued serves to contribute to the overall distinctiveness of the mark and further differentiates itself from other traders using the similar names. Potential applicants should consult an experienced trade mark for valuable opinions before making such an application.
Disclaimer: The above is provided to assist in the understanding of the decision by the Appellate Division of the High Court of Singapore. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.
An old-fashioned Teochew engineer who prefers writing with fountain pens to the use of smart phones, he discovered his love for writing in mid-life. He became a pescatarian a few years ago after a life-changing event. An avid reader, he is piqued by the satisfaction of tackling difficult issues in life.