In TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163, the plaintiffs alleged trade mark infringement and passing off by the defendants over the name “Luke’s”.

Singapore High Court

Decision Date: 13 July 2021

Judge: Andre Maniam JC 

Plaintiff: TMRG Pte Ltd & Luke's Tavern Holdings Pte Ltd 
Defendant: Caerus Holding Pte Ltd & Lukes Seafood LLC

TMRG Pte Ltd (“first plaintiff”), proprietor of trade mark registration T1314356Z (priority date: 5 September 2013) for “” (“Luke’s Oyster Bar & Chop House mark”) in class 43 including restaurant services. The first plaintiff opened its first fine dining restaurant named the Luke’s Oyster Bar & Chop House on Gemmill Lane in May 2011. Luke’s Tavern Holdings Pte Ltd (“second plaintiff”) operated another restaurant by the same name but ceased operations. The second plaintiff will reopen a restaurant at a new location in due course. The first and second plaintiffs (“plaintiffs”) also use an unregistered mark “” (“Luke’s Oyster Bar and & Chop House logo”) for its Facebook, Instagram, website, restaurant menus and products. Luke’s Oyster Bar & Chop House is part of the Masiero Restaurant Group and it derived its name after its director and shareholder Mr. Travis Masiero’s(“Mr. Masiero”) son, “Lucas”(also known as Luke). 

Lukes Seafood LLC (“second defendant”) is the proprietor of trade mark registration 40201809854R (priority date: 3 April 2018) for “” (“Luke’s lobster logo”) in class 43 including restaurant services and trade mark registration 40201812193V (priority date: 3 April 2018) for “” (“Luke’s lobster word mark”) in class 43 for restaurant featuring lobster. 

Caerus Holding Pte Ltd (“first defendant”) is an exclusive licensee of the second defendant and operates a chain of casual, grab-and-go (with limited dine-in seating) lobster shacks in Singapore since 23 September 2020. Luke’s lobster got its name from its co-founder and CEO of second defendant Mr. Lucas Alexander Holden, also known as “Luke Holden”.

The plaintiffs contended that the opening of the defendants’ lobster shacks and use of “Luke’s” in both the “Luke’s lobster logo” and “Luke’s lobster” word mark to denote trade origin would likely cause consumers to mistake the defendants’ lobster rolls with the plaintiffs’ (direct confusion) or that the defendants and plaintiffs were associated/economically-linked(indirect confusion).

On the 7 August 2020, the plaintiffs commenced court proceedings against the first and second defendants (collectively known as “defendants”) on grounds of trade mark infringement and passing off. The plaintiffs also applied to invalidate the second defendant’s registered trade mark under s 23 of the Trade Marks Act (Cap 332, 2005 Rev Ed)(“TMA”) on the basis that the defendants’ marks were registered in breach of ss 8(2)(b) and/or 8(7). The plaintiffs relied on both the registered (for trade mark infringement) and unregistered marks. There is no standing required to invoke s 23 read with ss 8(2)(b) and/or 8(7) of the TMA in Singapore. 

The issue central to the dispute was whether the registered Luke’s lobster word mark and Luke’s lobster logo were similar to the plaintiffs’ registered and unregistered marks such that there exist a likelihood that consumers might confuse one for the other or consumers might think they are economically linked. 

Trade Mark Infringement Issue          

The plaintiffs contended the word “Luke’s” was the dominant and distinctive component of the plaintiffs’ marks and the use of the defendants’ marks in respect of services including restaurant services in class 43 infringed the plaintiffs’ registered mark (“Luke’s Oyster Bar & Chop House mark”).

There was no dispute that the services offered by the defendants were identical to the plaintiffs’.

The High Court noted case law indicates that a commonly used personal name (such as “Luke”) is considered to be of low distinctiveness and hence the words that ensued served to differentiate the plaintiffs’ restaurants from other Luke’s establishments [following Reed] and contributed to the mark as a whole in being distinctive of the plaintiffs’ restaurants. When compared against the defendants’ Luke’s lobster logo and Luke’s lobster word mark, the High Court held that the plaintiffs’ mark was visually and aurally dissimilar to the defendants’ marks. 

Conceptually, the plaintiffs’ mark invoked a feeling of formality and sophistication while the Luke’s lobster logo invoked playfulness and feeling of being casual. 

On balance, the Luke’s Oyster Bar & Chop House mark was held to be dissimilar to Luke’s lobster logo and the Luke’s lobster word mark. 

On the issue of likelihood of confusion, the High Court found:

(a) the non-similarity (or low similarity) of the marks;

(b) the sparse use the plaintiffs made of their Luke’s Oyster Bar & Chop House trade mark, coupled with the plaintiffs’ restaurants not being known by many [78]; and

(c) some degree of fastidiousness and attention being expected on the part of prospective purchasers, in relation to restaurant services

militated against the finding of a likelihood of confusion. The High Court also noted that in the case of restaurants, the relevant time for evaluating confusion is at the point of purchase and that initial interest confusion does not lead to a finding of actual confusion. Confusion that is unlikely to persist to the point of purchase meant that the ability of the trade mark to function as a badge of origin has not been undermined. 

As for the survey evidence tendered by the plaintiffs in support of their claims, the High Court did not place any weight, noting the deficiency in the way the survey was conducted. In the absence of persuasive evidence, the element of likelihood of confusion was not made out. 

The “Own Name” Defence under s 28(1)(a) of the TMA

If infringement had been established against the defendants, they may rely on its “own name” defence under s 28(1)(a) of the TMA. The High Court found the use of “Luke’s Lobster” pre-dated the opening of the plaintiffs’ “Luke’s Oyster Bar & Chop House restaurants” and “Luke’s Lobster” was named after its co-founder and CEO Luke Holden (“Mr Holden”). In this regard, just as Mr. Masiero’s son was entitled to use his English name Luke, as opposed to his Latin name Lucas, whose name the Luke’s Oyster Bar & Chop House restaurants were named after, Luke was also recognized as Mr. Holden’s English name.

As the first defendant is the exclusive licensee of the second defendant, the High Court found the first defendant was entitled to same rights and remedies (hence the same defence) in respect of matters occurring after the grant of the licence under s 45(1) of the TMA.

The High Court also found the defendants were entitled to “Registered Mark” defence under s 28(3) of the TMA, having successfully registered the marks in 2018. 

Passing Off under s 8(7) of the TMA

To succeed in an action for passing off, the plaintiffs have to establish the elements of goodwill, misrepresentation and damage.

The High Court found there was no goodwill associated with the “Luke’s” simpliciter due to its lack of distinctiveness. Instead, the High Court found the plaintiffs’ restaurants were better known as “oyster bars and chop houses”. The element of goodwill was thus not made out.

Turning to the element of misrepresentation, the High Court observed that the Luke’s lobster mark was in use two years before the plaintiffs’ Luke’s Oyster Bar Chop House restaurant opened. The High Court found the consistency of use of Luke’s Lobster marks in all their lobster shacks, whether in Singapore or beyond, a bona fide use of the Luke’s Lobster marks. The plaintiffs’ fine dining restaurants were notably distinguished from the defendants’ Lobster shacks which were simpler and more casual with relatively cheaper food on the menu. The evidence tendered by the plaintiffs showed that lobster-related dishes contributed only around 5% of their restaurants’ total revenue while the defendants’ lobster shacks served mainly lobster-related food. 

The High Court took the view that the plaintiffs’ failed attempt to register the Lobster Shack by Luke’s mark as a trade mark was to stop the defendants from using its own name in Singapore rather than a genuine intention to expand into the takeaway/grab and go/lobster shack market under that name. The act of trying to register the Lobster Shack by Luke’s mark (by the plaintiffs) also contradicted their earlier claims that their name Luke’s would suffer if associated with lobster shack.

Accordingly, the High Court found the element of misrepresentation was not made out.

Given the absence of elements of goodwill and misrepresentation, the element of damage was also not made out.

Invalidation of the Defendants’ Registered Trade Marks

With its earlier findings that the plaintiffs’ registered mark and the defendants’ registered marks being dissimilar and no likelihood of confusion as a result, the High Court dismissed the plaintiffs’ applications to invalidate the defendants’ registered trade marks under ss 8(2)(a) and 8(7). 

The High Court did not grant an injunction against the use of the registered trade marks by the defendants and both the plaintiffs’ and defendants’ marks were allowed to co-exist.

Takeaways

Where personal names that are common, the words that ensued played engender distinctiveness in the mark as a whole in distinguishing its goods/services from other traders using similar personal names. The case underscored the importance of using one’s trade mark consistently in whether registered or unregistered, especially if the proprietor sought to rely on the principle of acquired distinctiveness based on use.

Disclaimer: The above is provided to assist in the understanding of the decision by 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.