East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102

Case Details

• Citation: [2024] SGHC 102
• Court: General Division of the High Court of the Republic of Singapore
• Decision Date: 17 April 2024
• Coram: Dedar Singh Gill J
• Case Number: Originating Claim No 33 of 2022
• Hearing Date(s): 2–3 November 2023, 19 January 2024
• Claimants / Plaintiffs: East Coast Podiatry Centre Pte Ltd
• Respondent / Defendant: Family Podiatry Centre Pte Ltd
• Counsel for Claimants: Phipps Jonathan (LegalStandard LLP)
• Counsel for Respondent: Mohamed Zikri Bin Mohamed Muzammil and Quay Wee Meng Andrew (Hin Tat Augustine & Partners)
• Practice Areas: Intellectual Property; Trade marks and trade names; Infringement; Internet usage; Passing off

Summary

In East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102, the General Division of the High Court addressed the complex intersection of trade mark law and digital search engine marketing. The dispute centered on the defendant’s use of Google’s advertising service (“Google Ads”) to display advertisements triggered by and containing terms identical or highly similar to the claimant’s registered trade marks. The claimant, a provider of podiatry services operating under the name "East Coast Podiatry," alleged that the defendant’s advertisements—which featured phrases such as “east coast podiatry,” “podiatry east coast,” and “podiatrist east coast”—constituted trade mark infringement under Section 27 of the Trade Marks Act 1998 and the common law tort of passing off.

The court’s decision provides a definitive analysis of how the "likelihood of confusion" standard is applied to the internet advertising context. Justice Dedar Singh Gill emphasized that the inquiry must consider the advertisement as a whole, including the URL and the landing page to which the consumer is directed. A pivotal aspect of the ruling was the determination that the "average consumer" of podiatry services—a specialized medical service—is likely to exercise a higher degree of attentiveness than a consumer of everyday retail goods. This heightened care, combined with the clear branding on the defendant’s website, served to dispel any initial confusion that might have been caused by the text of the Google Ad itself.

Ultimately, the court dismissed the claimant’s claims in their entirety. The judgment reinforces the principle that the mere use of a competitor's trade mark as a keyword or within the text of a search advertisement does not automatically result in infringement. If the advertisement does not suggest an economic link between the parties and the destination website clearly identifies the source of the services, the statutory and common law requirements for confusion and misrepresentation are not met. This case stands as a significant precedent for practitioners navigating the boundaries of competitive keyword advertising and the protection of descriptive trade marks in Singapore.

Furthermore, the decision clarifies the treatment of "initial interest confusion" within the Singapore legal landscape. While the claimant argued that confusion at the point of clicking the advertisement was sufficient to establish liability, the court maintained that the material time for assessing confusion includes the point at which the consumer interacts with the defendant’s actual business presence (the website). By holding that the defendant’s website immediately made the public aware that there was no association with the claimant, the court set a high bar for plaintiffs seeking to prove infringement in the digital sphere where "back-button" corrections are instantaneous.

Timeline of Events

1. September 2015: The claimant, East Coast Podiatry Centre Pte Ltd, begins its business operations, opening its first center in the Kembangan area.
2. 17 April 2018: The claimant files for registration of its trade marks (the ECPC Marks) in Class 44 for podiatry services.
3. 10 May 2018: The ECPC Marks are officially registered.
4. 11 January 2022: The claimant discovers the first set of Google Advertisements placed by the defendant containing the words "east coast podiatry".
5. 27 January 2022: The claimant discovers a second set of Google Advertisements placed by the defendant.
6. 2 February 2022: The claimant discovers a third set of Google Advertisements placed by the defendant.
7. 7 April 2022: The claimant sends a cease-and-desist letter to the defendant regarding the alleged trade mark infringement and passing off.
8. 22 April 2022: The defendant’s counsel responds to the claimant’s letter, denying the allegations.
9. 6 May 2022: The claimant files Originating Claim No 33 of 2022 against the defendant.
10. 27 May 2022: The defendant files its Defence and Counterclaim, alleging that its usage was descriptive and that the claimant’s actions constituted groundless threats.
11. 2–3 November 2023: Substantive hearing of the matter before Dedar Singh Gill J.
12. 19 January 2024: Further hearing and conclusion of oral submissions.
13. 17 April 2024: The High Court delivers its judgment, dismissing the claimant's claims.

What Were the Facts of This Case?

The claimant, East Coast Podiatry Centre Pte Ltd, is a private company incorporated in Singapore that provides specialized podiatry services. Since its inception in September 2015, the claimant expanded its operations to four locations: Kembangan, Orchard, Novena, and Bukit Timah. The claimant’s sole director and shareholder is Mr. Jevon Tay. The claimant is the registered proprietor of three trade marks, collectively referred to as the "ECPC Marks." The "Second Mark," which was the primary focus of the infringement analysis, is a composite mark consisting of the words "EAST COAST" in a stylized font above the words "PODIATRY CENTRE," accompanied by a circular logo featuring a stylized foot.

The defendant, Family Podiatry Centre Pte Ltd, is a direct competitor of the claimant, also providing podiatry services in Singapore. Its sole director and shareholder is Mr. Mark Brenden Reyneker. The defendant operates two clinics, one in Bukit Timah and another at 170 Joo Chiat Road. The Joo Chiat location is situated in the eastern part of Singapore, a fact central to the defendant's argument that its use of the term "east coast" was descriptive of its geographical location.

The dispute arose from the defendant’s use of Google Ads. Between January and February 2022, the claimant identified three distinct sets of advertisements displayed on Google search result pages. These advertisements were triggered when users searched for terms related to podiatry in the East Coast area. Specifically, the advertisements contained the following headers and text:

• "East Coast Podiatry - Family Podiatry Centre"
• "Podiatry East Coast - Family Podiatry Centre"
• "Podiatrist East Coast - Family Podiatry Centre"

The claimant alleged that the use of "East Coast Podiatry" in the advertisement titles was an unauthorized use of its registered trade mark. The claimant further contended that the defendant’s use of these terms was intended to divert potential patients looking for the claimant’s clinics to the defendant’s own website, familypodiatry.com.sg. The claimant produced evidence of the advertisements appearing on 11 January 2022, 27 January 2022, and 2 February 2022.

The defendant’s position was that the use of the words was purely descriptive. Mr. Reyneker testified that the defendant had established a presence in the Joo Chiat area and sought to advertise its services to residents in the "East Coast" region of Singapore. The defendant argued that "East Coast" is a common geographical descriptor and "Podiatry" is a generic term for the services provided. Furthermore, the defendant pointed out that the advertisements clearly displayed the defendant’s own name, "Family Podiatry Centre," and provided a URL that led to the defendant’s website, which featured distinct branding, including a purple color scheme and a different logo.

Procedurally, the claimant sought an injunction to restrain the defendant from further use of the marks, as well as damages or an account of profits. The defendant counterclaimed for a declaration that the claimant’s threats of infringement proceedings were groundless under Section 35 of the Trade Marks Act 1998. The trial involved extensive cross-examination of Mr. Tay and Mr. Reyneker, as well as the submission of expert-like evidence from a digital marketing professional, Cheow Yu Yuan, whose testimony regarding consumer behavior was ultimately scrutinized under the rules of evidence regarding opinion and hearsay.

What Were the Key Legal Issues?

The court was tasked with determining two primary legal issues, each involving several sub-components of intellectual property doctrine:

• Trade Mark Infringement under Section 27 of the Trade Marks Act 1998:
  • Whether the defendant’s use of the signs in the Google Advertisements constituted "use in the course of trade" of a sign identical or similar to the claimant’s registered marks.
  • Whether there was infringement under Section 27(1), which requires identity of both the sign and the services.
  • Whether there was infringement under Section 27(2)(b), which requires a similarity between the sign and the mark, identity or similarity of services, and a resulting "likelihood of confusion" on the part of the public.
  • Whether the defendant could rely on the statutory defense of descriptive use under Section 28(1)(b)(i) of the TMA.
• Passing Off:
  • Whether the claimant possessed the requisite goodwill in the business name "East Coast Podiatry" at the material time.
  • Whether the defendant’s Google Advertisements constituted a misrepresentation that was likely to lead the public to believe that the defendant’s services were those of the claimant or were authorized by/associated with the claimant.
  • Whether the claimant suffered, or was likely to suffer, damage as a result of such misrepresentation.

A critical secondary issue was the admissibility and weight of the evidence provided by the claimant’s witness, Mr. Cheow, regarding how an "average consumer" would perceive Google Ads. This touched upon the application of Section 3(1) of the Evidence Act 1893 and the court's role in assessing consumer confusion without the aid of expert testimony.

How Did the Court Analyse the Issues?

The court’s analysis began with the framework for trade mark infringement under the Trade Marks Act 1998. Justice Gill first addressed the threshold question of whether the defendant’s use of the terms in Google Ads constituted "infringing use."

Trade Mark Infringement Analysis

Regarding Section 27(1), the court found that the defendant did not infringe the Second Mark because the signs used in the advertisements ("east coast podiatry") were not identical to the registered composite mark. The Second Mark included stylized text and a specific logo, whereas the advertisements were plain text. The court noted that for Section 27(1) to apply, the sign must be a "total identity" or differ only in "immaterial details." The absence of the logo and the stylization meant the signs were merely similar, not identical.

The analysis then shifted to Section 27(2)(b), which requires a "likelihood of confusion." The court applied the well-established "step-by-step" approach:

1. Similarity of Marks: The court acknowledged that the textual component "East Coast Podiatry" was the dominant element of the claimant's mark. Thus, the defendant's signs were visually and aurally similar to the claimant's mark.
2. Similarity of Services: There was no dispute that both parties provided identical services (podiatry).
3. Likelihood of Confusion: This was the "central focus" of the dispute.

In assessing the likelihood of confusion, Justice Gill relied on the "average consumer" test. He observed that the relevant public consists of persons seeking podiatry services. The court reasoned that such consumers are likely to be more careful than those buying low-cost fast-moving consumer goods. At [59], the court cited Interflora Inc and another v Marks and Spencer plc (No 2) [2013] 2 All ER 663, noting that search engine results fall within the description of ordinary services where the judge can make up his own mind without expert evidence.

The claimant argued for the doctrine of "initial interest confusion"—that confusion occurring at the moment the user sees the ad and clicks it is sufficient. However, the court held that the advertisement must be viewed in its entirety. Justice Gill noted:

"I conclude that the relevant public would, upon clicking on the defendant’s Advertisements, be immediately aware that the defendant’s website is not associated with the claimant." (at [88])

The court found that the defendant’s advertisements included the defendant’s own name ("Family Podiatry Centre") and a URL (familypodiatry.com.sg) that was distinct from the claimant's. Furthermore, once a user clicked the ad, they were taken to a website that was "vastly different" in appearance, branding, and logo from the claimant’s clinics. The court emphasized that the "material time" for confusion is not just the split second of the click, but the overall interaction. Since the website dispelled any potential confusion immediately, there was no infringement.

Passing Off Analysis

The court then turned to the "classical trinity" of passing off: goodwill, misrepresentation, and damage. While the court accepted that the claimant had established goodwill in its business name "East Coast Podiatry" through its years of operation and expansion (at [97]), the claim failed on the element of misrepresentation.

Justice Gill applied the test from Staywell regarding the material time of confusion. He found that the defendant had not made a false representation that would lead a "substantial portion" of the relevant public to believe the services were those of the claimant. The court noted that the words "East Coast" are descriptive of a geographical area in Singapore. Citing Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd [2000] 1 SLR(R) 687, the court observed that where a name is descriptive, small differences may be sufficient to distinguish the businesses. The inclusion of "Family Podiatry Centre" in the ad title was a significant distinguishing factor.

The court also addressed the claimant’s evidence regarding "actual confusion." The claimant had provided screenshots of Google reviews and internal call logs. However, the court found this evidence to be "anecdotal" and "unreliable," noting that some instances of "confusion" were actually just users inquiring about locations rather than being misled about the identity of the service provider.

Admissibility of Evidence

A significant portion of the judgment dealt with the claimant's attempt to use Mr. Cheow's evidence to prove how users interact with Google Ads. The court ruled that much of this evidence was inadmissible opinion evidence under the Evidence Act 1893. The court held that it was perfectly capable of determining the effect of an advertisement on the average consumer without such "expert" assistance.

What Was the Outcome?

The High Court dismissed the claimant's claims for both trade mark infringement and passing off. The court found that the claimant had failed to prove a likelihood of confusion under Section 27(2)(b) of the TMA and had failed to establish the element of misrepresentation required for passing off.

The operative conclusion of the court was stated as follows:

"For all the foregoing reasons, the claims for trade mark infringement and for passing off fail." (at [111])

Regarding the defendant's counterclaim for groundless threats of infringement under Section 35 of the TMA, the court also dismissed it. The court found that while the claimant's claims ultimately failed, they were not "groundless" in the sense required by the statute, as the claimant was the registered proprietor of the marks and the defendant had indeed used the signs in trade. The court exercised its discretion to leave the parties where they stood regarding the counterclaim.

On the matter of costs, the court did not make an immediate award but instead reserved the issue for further submissions:

"I will hear the parties on costs, separately." (at [112])

The final orders included the dismissal of the Originating Claim and the Counterclaim, with no injunctions or damages awarded to either party.

Why Does This Case Matter?

This judgment is a landmark for digital marketing and intellectual property law in Singapore, specifically regarding the use of trade marks in search engine advertising. It provides several critical clarifications for practitioners:

1. Rejection of "Initial Interest Confusion" as a Standalone Basis for Liability: The claimant heavily relied on the idea that if a consumer is confused for even a moment—long enough to click an ad—the law should provide a remedy. Justice Gill’s decision clarifies that in the context of the internet, where a consumer can "immediately" realize their mistake by looking at the landing page or the URL, such fleeting confusion does not satisfy the statutory requirement for a "likelihood of confusion." This aligns Singapore more closely with a pragmatic view of digital consumer behavior, recognizing that the "average consumer" is digitally literate enough to navigate search results.

2. The "Average Consumer" of Specialized Services: The case establishes that the nature of the service matters. Consumers seeking medical or healthcare services (like podiatry) are held to a higher standard of attentiveness than those buying groceries. This makes it significantly harder for plaintiffs in professional service industries to succeed in infringement claims based on similar-sounding descriptive names.

3. Protection of Geographical and Descriptive Terms: The court reaffirmed that businesses choosing descriptive names like "East Coast Podiatry" must accept that their "monopoly" over such terms is limited. Because "East Coast" is a geographical location and "Podiatry" is a generic service, the claimant could not prevent a competitor located in that same area from using those words descriptively. This serves as a warning to practitioners to advise clients toward more distinctive, arbitrary, or fanciful marks if they desire stronger protection.

4. The Role of the Landing Page: The judgment confirms that the "advertisement" is not just the text on the Google results page; it is the entire user journey. If the destination website (the landing page) clearly identifies the defendant and dispels any association with the claimant, the court is unlikely to find infringement. This provides a "safe harbor" of sorts for advertisers: as long as your branding is clear and distinct on your own site, using competitive keywords may be permissible.

5. Evidentiary Standards for Consumer Confusion: The court’s dismissal of the claimant’s "expert" evidence on consumer behavior reinforces the principle that judges are the ultimate arbiters of fact regarding how an ordinary person perceives an advertisement. Practitioners should be cautious about relying on digital marketing "experts" to prove legal confusion, as such evidence may be deemed inadmissible or given little weight.

In the broader Singapore legal landscape, this case balances the rights of trade mark owners against the need for fair competition in the digital economy. It prevents trade mark law from being used to "lock up" common geographical descriptors, ensuring that consumers can benefit from competitive search results while still being protected from genuine, sustained deception.

Practice Pointers

• Advise on Distinctiveness: When clients are selecting business names, practitioners should warn against purely descriptive or geographical terms. While "East Coast Podiatry" may have local appeal, its legal protectability is inherently weak compared to an invented word.
• Clear Branding in Ads: For defendants, ensuring that the company’s actual name (e.g., "Family Podiatry Centre") appears prominently in the Google Ad header is the best defense against a confusion claim.
• Landing Page Consistency: To dispel "initial interest confusion," ensure the landing page branding is immediate and unmistakable. A distinct logo, color scheme, and clear "About Us" section can serve as the "immediate awareness" that prevents a finding of infringement.
• Negative Keywords: To avoid litigation altogether, practitioners might advise clients to use "negative keywords" in Google Ads to ensure their ads do not appear for specific searches of a competitor's full registered name, though using them as general keywords is not per se illegal.
• Evidence Gathering: If alleging confusion, plaintiffs need more than anecdotal call logs or vague Google reviews. Evidence of consumers actually proceeding with a purchase or service under a mistaken belief is far more persuasive than a user asking "Are you the clinic in Orchard?"
• Admissibility of Digital Experts: Be wary of presenting digital marketing professionals as "experts" on consumer confusion. Their testimony should be limited to technical facts (how the algorithm works) rather than the psychological state of the "average consumer," which remains the court's prerogative.

Subsequent Treatment

As of the date of this analysis, [2024] SGHC 102 remains the prevailing authority on the application of trade mark infringement to Google Ads in Singapore. It follows the doctrinal lineage of Staywell and City Chain Stores while specifically adapting those principles to the nuances of search engine marketing. No subsequent appellate decisions have overruled this specific application of the "likelihood of confusion" test to internet usage.

Legislation Referenced

• Trade Marks Act 1998 (2020 Rev Ed), Sections 27, 27(1), 27(2), 27(2)(b), 27(4)(e), 28(1)(b)(i), 35, 35(1)(a)
• Evidence Act 1893 (2020 Rev Ed), Section 3(1)
• Trade Marks Act 1994 (c 26) (UK)

Cases Cited

• Applied / Relied On:
  • Interflora Inc and another v Marks and Spencer plc (No 2) [2013] 2 All ER 663
  • Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911
  • City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382
• Considered / Referred To:
  • Dr Who Waterworks Pte Ltd and others v Dr Who (M) Sdn Bhd and others [2023] SGHC 156
  • Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941
  • Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] 2 SLR 308
  • Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2013] 1 SLR 531
  • Nation Fittings (M) Sdn Bhd v Oystertec plc and another suit [2006] 1 SLR(R) 712
  • Calvin Klein, Inc and another v HS International Pte Ltd and others [2016] 5 SLR 1183
  • Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR(R) 216
  • Singsung Pte Ltd v LG Electronics Pte Ltd (trading as L S Electrical Trading) [2016] 4 SLR 86
  • CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR(R) 975
  • The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd [2016] 3 SLR 517
  • Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd (trading as ONE.99 SHOP) [2000] 1 SLR(R) 687
  • Allergan, Inc and another v Ferlandz Nutra Pte Ltd [2016] 4 SLR 919
  • 32Red plc (a Gibraltar Company) v WHG (International) Ltd (a Gibraltar Company) [2011] RPC 721
  • 32Red Plc v WHG (International) Ltd [2012] RPC 19

Source Documents

• Original judgment PDF: Download (PDF, hosted on Legal Wires CDN)
• Official eLitigation record: View on elitigation.sg