East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2025] SGCA 28

Case Details

• Citation: [2025] SGCA 28
• Court: Court of Appeal of the Republic of Singapore
• Decision Date: 19 June 2025
• Coram: Sundaresh Menon CJ, Steven Chong JCA and Andrew Phang Boon Leong SJ
• Case Number: Civil Appeal No 57 of 2024
• Hearing Date(s): 7 April 2025
• Appellants: East Coast Podiatry Centre Pte Ltd
• Respondent: Family Podiatry Centre Pte Ltd
• Counsel for Appellant: Choo Zheng Xi, Stella Ng Yu Xin and Donaven Foo (RCL Chambers Law Corporation) and Chan Wenqiang (Ravindran Associates LLP)
• Counsel for Respondent: Mohamed Zikri bin Mohamed Muzammil and Elizabeth Anne Shuet Yan Boey (Hin Tat Augustine & Partners)
• Practice Areas: Intellectual Property; Trade marks and trade names; Infringement; Internet usage

Summary

In [2025] SGCA 28, the Court of Appeal addressed the critical intersection of traditional trade mark law and the modern digital advertising landscape. The dispute arose from the use of keywords and signs in Google Ads by Family Podiatry Centre Pte Ltd (the Respondent), which East Coast Podiatry Centre Pte Ltd (the Appellant) alleged infringed its registered trade marks. The central doctrinal question was whether the threshold requirement of "trade mark use"—that is, use of a sign as a badge of origin—remains a necessary prerequisite for an infringement claim under the Trade Marks Act (TMA) in the context of internet advertising.

The Court of Appeal dismissed the appeal, affirming the decision of the High Court in [2024] SGHC 102. In doing so, the Court delivered a landmark ruling on the "trade mark use" requirement. It explicitly rejected the "effect-centric" approach adopted by the Court of Justice of the European Union (CJEU) in cases such as Google France, holding instead that the Singapore statutory framework requires a "purpose-centric" inquiry. This inquiry focuses on whether the defendant’s use of the sign, objectively viewed, is intended to indicate the origin of the goods or services. The Court held that without such "trade mark use," a claim for infringement under s 27 of the TMA cannot succeed, regardless of whether the use might cause confusion in a broader sense.

Furthermore, the Court clarified the application of the "likelihood of confusion" test in the digital realm. It addressed the tension between the rule in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911, which generally excludes extraneous factors from the confusion inquiry, and the practical reality of internet browsing. The Court held that in the specific context of internet advertisements, it is permissible and necessary to look at the landing page (the website to which the ad redirects) for the limited purpose of determining the apparent purpose of the defendant’s use of the signs and whether that use would be perceived by the average consumer as a badge of origin.

This decision reinforces the "badge of origin" function as the bedrock of Singapore trade mark law. It provides much-needed clarity for practitioners and businesses operating in the digital space, ensuring that descriptive or geographical uses of keywords in online advertising do not automatically trigger infringement liability, provided they do not function as indicators of source. The Court’s refusal to follow the CJEU’s expansion of trade mark functions ensures that the scope of trade mark protection in Singapore remains tethered to the legislative intent of the TMA.

Timeline of Events

1. 6 April 2022: Mr. Reyneker, acting for the Respondent, signed a letter of intent to rent a commercial shophouse located at 170 Joo Chiat Road. This event occurred prior to the Appellant’s discovery of the Respondent’s Google Ads and was part of the Respondent's expansion into the eastern part of Singapore.
2. 14 April 2022: The Appellant first discovered that the Respondent was using the words “east coast podiatry”, “Podiatry East Coast”, and/or “Podiatrist East Coast” (the "Signs") in internet advertisements generated via Google Ads.
3. 22 April 2022: Mr. Reyneker formally signed the tenancy agreement for the premises at 170 Joo Chiat Road, solidifying the Respondent's physical presence in the "East Coast" geographical area.
4. 28 July 2022: The Appellant made the final of three separate discoveries (between 14 April and 28 July 2022) regarding the Respondent’s use of the Signs in internet advertisements.
5. 2022: The Appellant commenced legal action via Originating Claim No 33 of 2022, alleging trade mark infringement under s 27(1) and s 27(2)(b) of the TMA and the tort of passing off.
6. 2024: The High Court issued its judgment in [2024] SGHC 102, dismissing the Appellant's claims in their entirety.
7. 7 April 2025: The Court of Appeal heard the substantive arguments for Civil Appeal No 57 of 2024.
8. 19 June 2025: The Court of Appeal delivered its judgment, dismissing the appeal and fixing costs at $45,000.

What Were the Facts of This Case?

The Appellant, East Coast Podiatry Centre Pte Ltd, is a private company registered in Singapore that provides specialized podiatry services. It is the proprietor of a registered trade mark that includes the words "East Coast Podiatry." The Respondent, Family Podiatry Centre Pte Ltd, is a direct competitor in the same industry, also providing podiatry services within the Singapore market. The dispute centered on the Respondent's digital marketing strategy during its expansion into the Joo Chiat area, which is geographically situated in the eastern part of Singapore.

The Respondent utilized Google’s advertising services, known as Google Ads, to promote its services. Google Ads allows advertisers to bid on specific keywords so that their advertisements appear on the Search Engine Results Page (SERP) when a user searches for those terms. In this case, the Respondent’s advertisements were triggered by searches involving the terms “east coast podiatry”, “Podiatry East Coast”, and “Podiatrist East Coast”. When these searches were performed, the Respondent’s ads would appear, often featuring these exact phrases in the headline or text of the advertisement. These advertisements contained hyperlinks that, when clicked, redirected the user to the Respondent’s official website.

The Appellant discovered these advertisements on three separate occasions between 14 April 2022 and 28 July 2022. The Appellant contended that the use of the Signs in the advertisements constituted an infringement of its registered trade mark under s 27 of the TMA. Specifically, the Appellant argued that the Signs were identical or confusingly similar to its registered mark and that their use in relation to identical services (podiatry) created a likelihood of confusion among consumers.

The Respondent’s factual defense rested on the geographical and descriptive nature of the use. On 6 April 2022, Mr. Reyneker, on behalf of the Respondent, had signed a letter of intent to rent a shophouse at 170 Joo Chiat Road. A formal tenancy agreement was signed on 22 April 2022. The Respondent maintained that the use of the words "East Coast" was intended to inform potential patients of the location of its new branch. The Respondent further argued that the advertisements, when viewed in the context of the landing page (the Respondent's website), clearly identified the source of the services as "Family Podiatry Centre" and not the Appellant. The Respondent’s website contained no reference to the Appellant’s trade mark or the Signs, focusing instead on its own branding and the new location.

In the High Court, the Judge found that while the Signs were used, they did not function as trade marks (i.e., they were not used as badges of origin). The Judge also found that there was no likelihood of confusion because the average consumer, upon clicking the advertisement and arriving at the Respondent's website, would immediately realize they were dealing with Family Podiatry Centre. The High Court dismissed the claims for both trade mark infringement and passing off. The Appellant subsequently appealed to the Court of Appeal, primarily challenging the Judge’s application of the "trade mark use" requirement and the consideration of the Respondent's website in the confusion analysis.

The evidence record included detailed descriptions of how Google Ads function. As noted in the judgment, citing Interflora Inc and another v Marks and Spencer plc [2015] IP & T 109, a SERP typically contains three elements: the user's search query, "organic" search results, and "sponsored links" or advertisements. The court had to determine how the "average consumer"—a person who is "reasonably well-informed and reasonably observant and circumspect"—would perceive the Respondent's sponsored links in this specific digital environment.

What Were the Key Legal Issues?

The appeal raised fundamental questions regarding the interpretation of the Trade Marks Act in the context of modern technology. The primary legal issues were as follows:

• The "Trade Mark Use" Threshold: Whether the threshold requirement of "trade mark use" (use of a sign as a badge of origin) remains a necessary prerequisite for a finding of trade mark infringement under s 27 of the TMA, particularly in the context of internet advertisements. This involved a choice between the established Singapore approach and the "effect-centric" approach of the CJEU.
• The Scope of s 27(2)(b) TMA: Whether the Respondent’s use of the Signs in Google Ads satisfied the statutory requirements for infringement, specifically whether there was a "likelihood of confusion" on the part of the public.
• Consideration of Extraneous Factors: Whether the court, in assessing the likelihood of confusion in an infringement action, can take into account the content of the website to which an internet advertisement redirects. This required reconciling the Staywell principle (which limits the confusion inquiry to the marks and the goods) with the unique nature of internet browsing.
• The Statutory Defence: Whether the Respondent could rely on the "descriptive use" defence under s 28(1)(b)(i) of the TMA, on the basis that the Signs were used to describe the geographical location of its new branch.

These issues are of significant importance because they determine the boundary between legitimate competitive advertising and trade mark infringement. If the "trade mark use" threshold were lowered or removed, businesses might face liability for using common descriptive terms in digital marketing simply because those terms are also part of a competitor's registered mark.

How Did the Court Analyse the Issues?

The Court of Appeal’s analysis began with a rigorous examination of the "trade mark use" requirement. The Court reaffirmed that for an infringement claim to succeed under s 27 of the TMA, the defendant’s use of the sign must be a "trade mark use"—that is, use as a badge of origin. The Court relied on its previous decision in City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382, which established that this threshold is consistent with the fundamental purpose of Singapore’s trade mark law.

The Court explicitly contrasted the Singapore position with the jurisprudence of the CJEU. Under the CJEU’s "effect-centric" approach, as seen in Google France, the focus is on whether the use of a sign in an internet advertisement "adversely affects" one of the functions of the trade mark (such as its investment or advertising functions). The Court of Appeal rejected this approach, stating at [79]:

"the Google France test, which adopts an effect-centric approach, is inconsistent with the TMA"

The Court reasoned that the TMA is a "purpose-centric" statute. Section 27(4) of the TMA defines "use" in a way that implies the use must be for the purpose of indicating a connection in the course of trade between the goods/services and the person using the mark. The Court held that the CJEU’s approach effectively bypasses the statutory requirement of "use" by focusing on the *result* of the use rather than its *nature*. The Court noted that the UK’s Trade Marks Act 1994, upon which the Singapore TMA is modelled, has been interpreted by the CJEU in a way that Singapore does not follow, as Singapore maintains a stricter adherence to the "badge of origin" function.

In applying the "trade mark use" test to the facts, the Court considered how the "average consumer" would perceive the Respondent's Google Ads. The Court observed that the average internet user is generally aware that sponsored links are advertisements and that the keywords used to trigger them may be descriptive. In this case, the Signs (“east coast podiatry”, etc.) were used in a descriptive sense to indicate the location of the Respondent's new clinic. The Court found that an objective observer would not perceive the Respondent’s use of these signs as an attempt to identify the Respondent’s services as those of the Appellant.

A significant portion of the analysis was dedicated to the "likelihood of confusion" and the role of the landing page. The Appellant argued that under Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911, the court must ignore "extraneous factors" like the Respondent's website and look only at the advertisement itself. The Court of Appeal clarified that Staywell was primarily concerned with opposition proceedings, where the court must consider "notional fair use" of the marks. In infringement proceedings, the court looks at the *actual* use by the defendant.

The Court held that in the context of internet advertising, the advertisement and the landing page are "inextricably linked." The Court stated at [77]:

"it would accord with common sense and logic that the court should look at the website that the internet advertisement is intended to redirect internet users towards for the limited purpose of determining the apparent purpose of the defendant’s use of the signs."

The Court emphasized that the website is not being used as an "extraneous factor" to *remedy* confusion caused by the mark, but rather as part of the *context* to determine if the use of the sign was a "trade mark use" in the first place. If the landing page clearly identifies the Respondent as the source of the services, it supports the conclusion that the use of the Signs in the ad was not intended as a badge of origin for the Appellant's business.

The Court also considered the advice of independent counsel, Professor Gordon Ionwy David Llewelyn, who suggested that the "trade mark use" requirement should be maintained but that the court should be sensitive to the digital context. The Court agreed, noting that the "average consumer" in the digital age is "reasonably well-informed and reasonably observant and circumspect." Such a consumer would click on a link and, upon seeing the Respondent's website, would not be confused about the origin of the services.

Finally, regarding the s 28(1)(b)(i) defence, the Court noted that because it had found no "trade mark use" and no likelihood of confusion, it was strictly unnecessary to decide the defence. However, the Court’s findings on the descriptive nature of the Signs strongly aligned with the requirements of that defence.

What Was the Outcome?

The Court of Appeal dismissed the appeal in its entirety. The Court upheld the High Court's finding that there was no trade mark infringement under s 27(2)(b) of the TMA. The operative conclusion of the Court was stated at [104]:

"For the reasons we have given, we dismiss the appeal."

The Court’s decision rested on two primary pillars:

1. The Respondent’s use of the Signs in the Google Ads did not constitute "trade mark use" because, objectively viewed, the Signs were used in a descriptive or geographical sense rather than as a badge of origin to indicate the source of the services.
2. Even if "trade mark use" were established, there was no likelihood of confusion. The average consumer, navigating the internet, would not be confused as to the origin of the services, especially given that the landing page (the Respondent’s website) clearly identified the Respondent as the provider of the podiatry services.

In terms of costs, the Court followed the principle that costs should follow the event. The Court ordered the Appellant to pay the Respondent’s costs for the appeal. The quantum of costs was fixed by the Court at $45,000. The Court noted at [104]:

"Costs of the appeal are fixed at $45,000 payable by the Appellant to the Respondent."

The dismissal of the appeal meant that the High Court's orders remained in place, including the dismissal of the passing off claim, which was not the primary focus of the appeal but was inextricably linked to the findings on confusion and the descriptive nature of the Respondent's use of the Signs. The Respondent was thus cleared of all allegations of intellectual property infringement and tortious conduct in relation to its Google Ads campaign.

Why Does This Case Matter?

This case is a landmark decision for Singapore intellectual property law, particularly regarding the digital economy. Its significance lies in several key areas:

1. Reaffirmation of the "Trade Mark Use" Threshold: The Court of Appeal has firmly established that "trade mark use" is a "Step Zero" in any infringement analysis under s 27 of the TMA. By doing so, it has rejected the more expansive "essential function" or "effect-centric" approach of the CJEU. This ensures that trade mark owners cannot use their registrations to monopolize descriptive terms or keywords that are not being used as indicators of origin. This is a pro-competitive stance that protects businesses' ability to use truthful, descriptive language in their marketing.

2. Rejection of the Google France Test: The explicit rejection of the Google France test marks a clear divergence between Singapore and EU/UK trade mark law. Practitioners must be aware that European authorities on internet advertising infringement may not be persuasive in Singapore if they rely on the "adverse effect on functions" doctrine. Singapore remains committed to the "badge of origin" as the primary, if not sole, function protected by the TMA in this context.

3. Clarification of the Staywell Rule: The judgment provides a crucial refinement of the Staywell principle. While Staywell remains the authority for excluding extraneous factors in opposition proceedings, the Court has recognized that in the "actual use" context of infringement—specifically internet ads—the "context" includes the landing page. This is a pragmatic adjustment to the law that reflects how consumers actually interact with the internet. It prevents a "fragmented" analysis where an advertisement is viewed in a vacuum, divorced from the very link it provides.

4. The "Average Consumer" in the Digital Age: The Court’s analysis of the "average consumer" acknowledges the increasing digital literacy of the public. By recognizing that users understand the nature of sponsored links and expect to find more information on the landing page, the Court has set a realistic bar for the likelihood of confusion in online disputes. This reduces the risk of "initial interest confusion" claims succeeding in Singapore, as the court looks at the entire user journey from search query to landing page.

5. Guidance for Practitioners: For legal practitioners, this case provides a clear framework for advising clients on keyword advertising. It highlights the importance of ensuring that advertisements, especially those using potentially sensitive keywords, are clearly branded and lead to websites that unambiguously identify the source of the goods or services. It also underscores that the "purpose" of the use (e.g., geographical description) is a powerful defense against infringement allegations.

In the broader Singapore legal landscape, this case demonstrates the Court of Appeal's willingness to chart an independent course in statutory interpretation, even when dealing with legislation modelled after foreign statutes. It reinforces the principle that the scope of intellectual property rights must be balanced against the public interest in free competition and clear communication.

Practice Pointers

• Establish "Trade Mark Use" First: In any infringement claim, practitioners must first determine if the defendant is using the sign as a badge of origin. If the use is purely descriptive, geographical, or decorative, the claim may fail at the threshold, regardless of similarity or confusion.
• Analyze the User Journey: When assessing likelihood of confusion in internet cases, do not look at the advertisement in isolation. Analyze the entire process, including the search terms, the ad text, and the landing page. The landing page is critical context for determining the "apparent purpose" of the use.
• Differentiate Opposition vs. Infringement: Be careful when applying Staywell. Remember that its strict exclusion of extraneous factors is primarily for opposition proceedings (notional use). In infringement (actual use), the context of the defendant's marketing is relevant to the "trade mark use" and confusion inquiries.
• Evidence of Geographical Intent: For defendants, evidence of a physical presence or expansion into a specific area (like the letter of intent and tenancy agreement in this case) is vital to support a "descriptive geographical use" argument.
• Avoid CJEU "Effect-Centric" Arguments: Avoid relying on CJEU cases that focus on the "advertising" or "investment" functions of a trade mark. The Singapore Court of Appeal has explicitly rejected this approach in favor of a "purpose-centric" badge of origin test.
• Google Ads Strategy: Advise clients using Google Ads to ensure their own branding is prominent in the ad copy. This helps dispel any argument that the keywords are being used as a badge of origin for a competitor.

Subsequent Treatment

As this is a recent decision from the Court of Appeal delivered in June 2025, there is no recorded subsequent treatment in later judgments within the extracted metadata. However, the ratio of this case—affirming the "trade mark use" threshold and rejecting the CJEU's "effect-centric" approach—is now the binding authority for all lower courts in Singapore regarding trade mark infringement in the context of internet advertising. It effectively limits the application of the Staywell "extraneous factors" rule in the specific context of digital user journeys.

Legislation Referenced

• Trade Marks Act 1998 (2020 Rev Ed), ss 27(1), 27(2), 27(2)(b), 27(4), 27(4)(a), 28(1)(b)(i)
• Trade Marks Act 1994 (c 26) (UK), s 10, s 10(1), s 10(2)(a)
• European Community’s First Council Directive 89/104/EEC of 21 December 1988

Cases Cited

Applied

• City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382

Considered

• Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911
• Interflora Inc and another v Marks and Spencer plc [2015] IP & T 109

Referred to

• East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102
• 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 [2013] 2 SLR 941
• The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690
• Burberry Ltd v Megastar Shipping Pte Ltd [2019] 1 SLR 536
• Nation Fittings (M) Sdn Bhd v Oystertec plc [2006] 1 SLR(R) 712
• Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd [2000] 2 SLR(R) 214
• Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2017] 2 SLR 308
• Arsenal Football Club plc v Reed [2003] Ch 454
• British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
• Philips Electronics NV v Remington Consumer Products [1998] RPC 283
• Rxworks Ltd v Dr Paul Hunter [2008] RPC 13
• E-Accounting Solutions Limited (trading as Advancetrack) v Global Infosys Limited (trading as GI Outsourcing) [2023] EWHC 2038 (Ch)

Source Documents

• Original Judgment PDF
• eLitigation Case Summary