Case Details
- Citation: [2024] SGHC 102
- Court: High Court (General Division)
- Originating Claim No: Originating Claim No 33 of 2022
- Date of Judgment: 17 April 2024
- Judges: Dedar Singh Gill J
- Hearing Dates: 2–3 November 2023; 19 January 2024
- Judgment Reserved: Judgment reserved
- Parties: East Coast Podiatry Centre Pte Ltd (Claimant) v Family Podiatry Centre Pte Ltd (Defendant)
- Claimant/Applicant: East Coast Podiatry Centre Pte Ltd
- Defendant/Respondent: Family Podiatry Centre Pte Ltd
- Legal Areas: Intellectual Property; Trade Marks; Passing Off; Internet/Online Advertising
- Statutes Referenced: Trade Marks Act 1998 (2020 Rev Ed) (“TMA”)
- Key Provisions: s 27 (infringement by use); s 27(1); s 27(2)(b); s 35 (groundless threats) (counterclaim)
- Trade Marks at Issue: “East Coast Podiatry” marks (collectively “ECPC Marks”)
- Judgment Length: 52 pages; 13,211 words
- Procedural Posture: Claim for trade mark infringement and passing off; defendant counterclaimed for groundless threats
Summary
East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd concerned whether a podiatry clinic’s use of the words “east coast podiatry” (and close variants) in Google Ads infringed the claimant’s registered trade marks and whether the conduct amounted to passing off. The claimant, a Singapore podiatry provider operating multiple centres, owned registered trade marks containing the words “East Coast Podiatry”. The defendant, also a podiatry provider, used Google’s advertising service to display advertisements with headlines such as “east coast podiatry – Up to 30% off for 1st Consult”, “Podiatry East Coast – Podiatrist Bukit Timah”, and “Family Podiatrist – Podiatrist East Coast”.
The High Court (Dedar Singh Gill J) held that the defendant’s use was not infringing use under s 27 of the Trade Marks Act 1998, and there was no passing off. Although the court accepted that the signs used in the advertisements were similar to the claimant’s marks and that the parties’ services were identical, the claimant failed to establish the essential element of infringement: there was no likelihood of confusion in the relevant sense under the statutory framework. The court further found that the defendant’s use did not amount to misrepresentation causing a likelihood of confusion, and that the claimant’s goodwill and distinctiveness did not translate into actionable confusion on the facts.
Practically, the decision is a significant application of Singapore’s trade mark infringement analysis to online advertising contexts, particularly where the alleged infringing use appears in ad headlines and is accompanied by other contextual features (including the defendant’s URL/website presentation). It also demonstrates the court’s careful separation between (i) similarity of signs and (ii) the statutory requirement of confusion or other infringement conditions.
What Were the Facts of This Case?
The claimant, East Coast Podiatry Centre Pte Ltd, is a Singapore-registered company providing podiatry services. It operates four podiatry centres located in Kembangan, Orchard, Novena and Bukit Timah. The claimant’s business began in or around September 2015, starting with a Kembangan clinic operating under the name “East Coast Podiatry”. It later acquired a failing practice in Orchard named “Orchard Clinic”, opened a Novena outlet also operating as “East Coast Podiatry”, and in February 2022 opened a Bukit Timah outlet. Only around 2017 did the claimant consolidate the names of all clinics, including the Novena outlet, as “East Coast Podiatry”.
The claimant owned multiple registered trade marks containing the words “East Coast Podiatry” (referred to collectively as the “ECPC Marks”). These registrations covered goods and services in relevant classes, including services connected to podiatry and related healthcare offerings. The case therefore proceeded on the basis that the claimant had enforceable statutory rights in the relevant marks.
The defendant, Family Podiatry Centre Pte Ltd, is also in the business of providing podiatry services and operates two branches in Singapore: Bukit Timah and Joo Chiat. The defendant’s director and shareholder is Mr Mark Brenden Reyneker. In early 2022, the defendant sought a commercial space and considered various areas, including the East Coast region. In April 2022, it entered into a tenancy for a unit at 170 Joo Chiat Road, which is in the East Coast area.
The dispute crystallised when, on 14 April 2022, the claimant’s director, Mr Tay, discovered multiple Google Ads displayed by the defendant. These advertisements (the “First Incident Advertisements”) displayed headlines using “east coast podiatry” and variants, including “east coast podiatry – Up to 30% off for 1st Consult”, “east coast podiatry – 20 Years of Experience”, “east coast podiatry – Podiatrist Bukit Timah”, and “east coast podiatry – Family Podiatrist”. Mr Tay contacted Mr Reyneker via WhatsApp, showing the advertisements and raising the issue of trade mark infringement. Mr Reyneker responded that he did not think one could trademark an area and a profession, while acknowledging that one could trademark a logo and the way “East Coast Podiatry” is written or drawn. Despite this exchange, the defendant did not remove the advertisements.
After discovering the First Incident Advertisements, the claimant lodged complaints with Google and also sent letters to Google and to the defendant alleging infringement and passing off. Google’s legal support team investigated and restricted the First Incident Advertisements in accordance with its trademarks policy. However, the claimant later discovered additional Google Ads (the “Second Incident Advertisements” and “Third Incident Advertisements”) containing further variants of “Podiatry East Coast” and “Podiatrist East Coast”, including combinations with “Bukit Timah” and “Family Podiatrist”. Following further complaints, Google indicated that these advertisements should no longer display.
On 6 May 2022, the claimant filed the present action seeking relief for trade mark infringement under s 27 of the TMA and for passing off. The defendant defended on the basis that its use was descriptive and did not create a likelihood of confusion. The defendant also counterclaimed for groundless threats under s 35(1)(a)–(c) of the TMA. The claimant later amended its statement of claim to include the Second and Third Incident Advertisements, and the defendant amended its defence accordingly.
What Were the Key Legal Issues?
The High Court had to determine two principal issues. First, whether the defendant’s use of the relevant signs in Google Ads constituted “infringing use” under s 27 of the TMA. This required the court to analyse the statutory elements of infringement, including whether the defendant used a sign in the course of trade, whether the sign was identical or similar to the registered trade mark, and whether the relevant statutory condition—particularly likelihood of confusion—was satisfied under the applicable limbs of s 27.
Second, the court had to determine whether the defendant’s conduct gave rise to passing off. Passing off requires proof of goodwill, misrepresentation, and damage (or a likelihood of damage). The claimant needed to show that the defendant’s advertisements and online presentation misrepresented that the defendant’s services were those of, or associated with, the claimant, such that confusion was likely.
Although the defendant’s counterclaim for groundless threats was pleaded, the central contest in the extracted portion of the judgment focused on infringement and passing off. The court’s findings on infringement and passing off necessarily shaped the overall outcome of the claimant’s claim and the practical assessment of whether the claimant’s threats were justified.
How Did the Court Analyse the Issues?
The court’s analysis under s 27 began with the recognition that the claimant’s ECPC Marks were registered and that the defendant’s advertisements used signs that were, at least in the court’s assumed position, similar to the marks. The parties’ services were also identical: both were providing podiatry services. These findings narrowed the dispute to the remaining statutory element—whether the defendant’s use created a likelihood of confusion in the relevant sense, and whether the specific statutory conditions under s 27(1) and s 27(2)(b) were met.
In applying s 27, the court considered the nature of the “use” in the context of internet advertising. The advertisements were displayed through Google Ads, and the court examined how the signs appeared to users, including the overall presentation of the advertisements and the contextual cues that would be available to an internet user. The analysis was not confined to a side-by-side comparison of the words “East Coast Podiatry” and the defendant’s headlines; rather, it focused on the practical impression created by the advertisement as a whole.
The court specifically addressed the defendant’s URL and website presentation. This is crucial in online advertising disputes because the user’s decision-making process is shaped by multiple on-screen elements: the ad headline, the displayed domain/URL, and the content the user encounters after clicking. The court concluded that, on the facts, there was no likelihood of confusion. Even if the signs were similar and the services identical, the contextual features of the defendant’s advertisements and online presence did not lead users to believe that the defendant’s services were connected to the claimant.
In relation to s 27(2)(b), the court similarly found that the claimant did not establish infringement. The court’s reasoning indicates that the statutory inquiry into confusion is fact-sensitive and cannot be satisfied by similarity alone. The court accepted the assumption that the signs were similar and that the services were identical, but it found that the claimant failed to show the necessary confusion element when the defendant’s advertisement presentation was considered in its entirety. The court therefore held that the defendant did not infringe the second mark under s 27(1) and did not infringe under s 27(2)(b) on the evidence before it.
Turning to passing off, the court proceeded through the classic triad: goodwill, misrepresentation, and likelihood of confusion (and resulting damage). The court found that there was goodwill in the claimant’s business. However, goodwill alone does not establish passing off. The claimant still had to show misrepresentation—meaning that the defendant’s conduct would lead the relevant public to believe there was a business connection with the claimant.
The court found no misrepresentation giving rise to a likelihood of confusion. It considered the distinctiveness of the claimant’s ECPC Marks and the overall impression created by the defendant’s advertisements. The court’s conclusion suggests that the defendant’s use of “East Coast” and “podiatry” in ad headlines was not, in context, a representation that the defendant was the claimant or an associated entity. The court therefore held that the passing off claim failed.
Overall, the court’s reasoning reflects a consistent theme: in both statutory trade mark infringement and passing off, the decisive question is not merely whether the words overlap, but whether the defendant’s conduct, in context, is likely to cause confusion among the relevant public. The court’s attention to the defendant’s URL and website presentation underscores the importance of the full online context in assessing confusion.
What Was the Outcome?
The High Court dismissed the claimant’s claims for trade mark infringement under s 27 of the TMA and for passing off. The court concluded that the defendant’s Google Ads usage was not infringing use and that there was no actionable passing off. The practical effect is that the claimant did not obtain injunctive or other infringement relief against the defendant based on the specific advertisements and online usage complained of.
As a result, the defendant’s counterclaim for groundless threats would also be affected by the court’s findings, although the extracted material does not set out the final disposition of that counterclaim. The headline outcome for practitioners is that similarity of marks and identical services were insufficient on these facts to establish infringement or passing off in the context of Google Ads.
Why Does This Case Matter?
This decision matters because it provides a clear, fact-driven application of Singapore’s trade mark infringement and passing off principles to internet advertising. Many disputes in this area turn on whether the alleged infringing sign is used “as a trade mark” and whether confusion is likely. Here, even with assumed similarity and identical services, the court emphasised that the claimant must prove the likelihood of confusion in the real-world context of online ads, including how users would perceive the advertisement and the subsequent website experience.
For trade mark owners, the case is a reminder that enforcement against online advertising requires careful evidence of confusion. It is not enough to show that a competitor used similar words in an ad headline. Evidence about how the ad is displayed, what other elements appear (such as URL/domain), and how the landing page presents the business may be decisive. Practitioners should therefore gather screenshots, capture the full ad format, and analyse the user journey from impression to click-through.
For defendants, the case supports the proposition that descriptive or contextual use in online advertising may avoid infringement and passing off where confusion is not likely. The court’s approach also suggests that “East Coast” and “podiatry” may be treated as components that, depending on context, do not automatically create confusion with a registered mark containing those words. However, this does not create a blanket defence: the outcome depends on the overall impression and the presence or absence of confusion indicators.
Legislation Referenced
- Trade Marks Act 1998 (2020 Rev Ed), s 27 (infringement by use); s 27(1); s 27(2)(b) [CDN] [SSO]
- Trade Marks Act 1998 (2020 Rev Ed), s 35(1)(a)–(c) (groundless threats) (counterclaim) [CDN] [SSO]
Cases Cited
- (Not provided in the supplied extract.)
Source Documents
This article analyses [2024] SGHC 102 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.