Case Details
- Citation: [2025] SGCA 28
- Court: Court of Appeal of the Republic of Singapore
- Date: 2025-06-19
- Judges: Sundaresh Menon CJ, Steven Chong JCA and Andrew Phang Boon Leong SJ
- Plaintiff/Applicant: East Coast Podiatry Centre Pte Ltd
- Defendant/Respondent: Family Podiatry Centre Pte Ltd
- Legal Areas: Intellectual Property — Trade marks and trade names
- Statutes Referenced: The TMA is modelled after the Trade Marks Act 1994, Trade Marks Act, Trade Marks Act 1998, Trade Marks Act
- Cases Cited: [2023] SGHC 156, [2024] SGHC 102, [2025] SGCA 28
- Judgment Length: 50 pages, 16,194 words
Summary
This case involves a trade mark infringement dispute between two podiatry service providers in Singapore. The appellant, East Coast Podiatry Centre Pte Ltd, alleged that the respondent, Family Podiatry Centre Pte Ltd, had infringed its registered trade mark by using similar keywords in Google Ads to advertise its services. The key issue was whether the respondent's use of the allegedly infringing signs, in conjunction with its website, created a likelihood of confusion among consumers as to the origin of the services. The Court of Appeal ultimately dismissed the appellant's claim, finding that the respondent's website would have dispelled any initial confusion that may have arisen from the advertisements.
What Were the Facts of This Case?
The appellant, East Coast Podiatry Centre Pte Ltd, is a Singapore-registered private company that provides podiatry services. It is the registered proprietor of a composite trade mark. The respondent, Family Podiatry Centre Pte Ltd, is another Singapore-registered private company that also provides podiatry services.
The appellant discovered on three separate occasions between April and July 2022 that the respondent had used the words "east coast podiatry", "Podiatry East Coast" and/or "Podiatrist East Coast" (collectively referred to as the "Signs") in internet advertisements that the respondent had created using Google's advertising services (Google Ads). These advertisements appeared in various permutations, but they essentially advertised the respondent's services with a hyperlink to the respondent's website, which contained no reference to the appellant's trade mark or the Signs.
According to the respondent, it had included the Signs in its Google Ads as part of a campaign to advertise the impending opening of its newest branch office, which was located near the eastern coastline of Singapore. The respondent claimed that it had been advised by a Google consultant to use location-based keywords to improve the likelihood of Google search users finding the respondent's new branch office.
What Were the Key Legal Issues?
The key legal issue in this case was whether the respondent's use of the Signs in its Google Ads amounted to trade mark infringement under section 27(2)(b) of the Trade Marks Act (TMA).
Specifically, the court had to determine whether the respondent's use of the Signs, in conjunction with its website, created a likelihood of confusion among consumers as to the origin of the podiatry services. This involved considering whether the court could take into account the respondent's website in assessing the likelihood of confusion, and whether the website would have dispelled any initial confusion that may have arisen from the advertisements.
How Did the Court Analyse the Issues?
The court began by acknowledging that the use of the Signs in the respondent's Google Ads was undisputed and that the parties' services were identical. However, the court noted that the key issue was whether there was a likelihood of confusion as to the origin of the services.
The court considered the appellant's argument that the judge erred in taking the respondent's website into account in the likelihood of confusion analysis. The appellant relied on the court's earlier decision in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc, which held that extraneous factors such as marketing choices should not be considered in the likelihood of confusion inquiry.
In response, the court acknowledged that the Staywell decision was made in the context of opposition proceedings, where the court must consider all actual and notional fair uses of the respective marks. In contrast, the present case involved infringement proceedings in the specific context of internet advertising, where the website was inextricably linked to the advertisements.
The court also sought the assistance of an independent counsel, Professor Gordon Ionwy David Llewelyn, who advised that it was permissible for the court to consider the respondent's website as part of the likelihood of confusion analysis in the present case, given the unique context of internet advertising.
What Was the Outcome?
The Court of Appeal ultimately dismissed the appellant's appeal and upheld the judge's decision that there was no trade mark infringement. The court found that the respondent's website, which a consumer would be redirected to upon clicking on the respondent's advertisements, would have dispelled any confusion that might have initially arisen from the use of the Signs in the advertisements.
As a result, the court concluded that there was no likelihood of confusion as to the origin of the podiatry services, and therefore no trade mark infringement under section 27(2)(b) of the TMA.
Why Does This Case Matter?
This case is significant as it provides guidance on the application of the likelihood of confusion test in the context of trade mark infringement involving internet advertising. The court's willingness to consider the respondent's website as part of the analysis, despite the appellant's reliance on the Staywell decision, demonstrates the court's recognition of the unique challenges posed by the digital environment.
The case also highlights the importance of considering the overall context and circumstances in which the allegedly infringing use occurs, rather than applying a one-size-fits-all approach. The court's acknowledgment that the Staywell decision was made in a different context, and its subsequent reliance on the independent counsel's advice, underscores the court's flexibility in adapting the legal principles to the specific facts of the case.
This decision will be valuable for legal practitioners advising clients on trade mark infringement issues, particularly in the context of online advertising and marketing. It provides a framework for assessing the likelihood of confusion in such cases, taking into account the interplay between the advertisements and the associated website.
Legislation Referenced
Cases Cited
- [2023] SGHC 156
- [2024] SGHC 102
- [2025] SGCA 28
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911
- Interflora Inc and another v Marks and Spencer plc [2015] IP & T 109
Source Documents
This article analyses [2025] SGCA 28 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.