Case Details
- Citation: [2012] SGHC 104
- Title: Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another
- Court: High Court of the Republic of Singapore
- Date of Decision: 11 May 2012
- Judge: Chan Seng Onn J
- Case Number: Suit No 669 of 2010
- Coram: Chan Seng Onn J
- Plaintiff/Applicant: Hai Tong Co (Pte) Ltd
- Defendants/Respondents: Ventree Singapore Pte Ltd and another
- Parties (as described): Hai Tong Co (Pte) Ltd — Ventree Singapore Pte Ltd and another
- Legal Areas: Trade marks and trade names — infringement; passing off
- Statutes Referenced: Civil Law Act; Trade Marks Act (Cap 332, 2005 Rev Ed)
- Key Trade Marks: Plaintiff’s “Lady Rose” trade mark (Trade Mark No T7048436B); Defendants’ “Rose Lady” sign used on VOV Cosmetics’ products
- Registered Proprietor (Defendants’ supply chain): VOV Cosmetics Co Ltd (South Korea) — registered proprietor of “VOV” trade mark in Singapore (registered in 2004 under Trade Mark Number T0406108D)
- Procedural Posture: Plaintiff commenced an action alleging trade mark infringement and passing off; 1st Defendant subsequently ceased importing the infringing products
- Counsel for Plaintiff: Gill Dedar Singh, Tang Li Ling Yvonne and Chiang Hui Shan Michelle (Drew & Napier LLC)
- Counsel for Defendants: Wong Siew Hong and Ong Zhenhui Wayne (Eldan Law LLP)
- Judgment Length: 12 pages, 5,621 words
- Cases Cited (in extract): [2011] SGHC 176; [2012] SGHC 104; The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690; Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long and others (trading as Polykwan Trading Co) [2003] 4 SLR(R) 92; Richemont International SA v Da Vinci Collections Pte Ltd [2006] 4 SLR(R) 369; British Sugar PLC v James Robertson & Sons Ltd (1996) RPC 281; Neutrogena Corporation v Golden Ltd (t/a Garnier) [1996] RPC 473
Summary
In Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another [2012] SGHC 104, the High Court considered whether the defendants’ use of the sign “Rose Lady” on cosmetic products infringed the plaintiff’s registered “Lady Rose” trade mark, and whether the defendants’ conduct amounted to passing off. The plaintiff, Hai Tong Co (Pte) Ltd, had long used and registered “Lady Rose” for cosmetics. The defendants, Ventree Singapore Pte Ltd and a retail partnership operating a department store, imported and sold cosmetic products from a Korean manufacturer (VOV Cosmetics) under packaging that included the words “Rose Lady”.
The court held that “Rose Lady” was used in the course of trade as a trade mark (including as a secondary product identifier), and that the sign was distinctive rather than merely descriptive. Applying the statutory framework for infringement under s 27(2)(b) of the Trade Marks Act, the court found that the plaintiff had established the relevant elements for infringement, including the likelihood of confusion. The court also addressed passing off, ultimately granting relief to the plaintiff. The case is significant for its treatment of “secondary” marks and for clarifying that even where a product is sold under a primary brand (here, “VOV”), a second identifier may still function as a trade mark capable of infringing another party’s registered mark.
What Were the Facts of This Case?
The plaintiff, Hai Tong Co (Pte) Ltd, is a Singapore company dealing in the importation, exportation, distribution and sale of cosmetics and beauty accessories. A key part of its business is a range of cosmetic products sold under the brand “Lady Rose”. The plaintiff’s “Lady Rose” mark was registered by its predecessor in 1970 and has been used since at least 1960. The registration covered, among other things, perfumery, essential oils, hair lotions, hair creams and cosmetics. The plaintiff distributed its “Lady Rose” products through various retailers across Singapore, including department stores and retail cosmetics shops, and also sold directly to walk-in customers at its shop in Sago Lane.
Two specific “Lady Rose” products were relevant to the dispute: a two-way cake and a foundation with sunscreen. The plaintiff used blue packaging for its “Lady Rose” cosmetic products. In July 2010, the plaintiff received customer complaints about the quality of certain “Lady Rose” cosmetic products packaged in a peach-coloured case. Because the plaintiff’s packaging was typically blue, it became concerned that counterfeit “Lady Rose” products might be circulating in the market.
To investigate, the plaintiff conducted inquiries and discovered that the 1st defendant, Ventree Singapore Pte Ltd, was importing cosmetic products bearing the words “Rose Lady” into Singapore. The 1st defendant had entered into a Sole Agent Agreement with VOV Cosmetics Co Ltd (a South Korean manufacturer) on 15 July 2009. Under that agreement, the 1st defendant was authorised to import and distribute VOV Cosmetics’ products, including products bearing the words “Rose Lady”. The imported products contained rosa canina (dog rose) as an ingredient, and the packaging was peach-coloured with sketches of five-petalled flowers.
The 1st defendant imported three “Rose Lady” products: “VOV” Rose Lady Cover Foundation, “VOV” Rose Lady Skin Cover, and “VOV” Rose Lady Two Way Cake (the “Infringing Products”). These products were sold at various retail outlets in Singapore, including department stores such as John Little and retail cosmetics shops. The 2nd defendant, SKY (a partnership operating a retail department store at People’s Park Complex), sold “VOV” Rose Lady Skin Cover from January 2010. The 2nd defendant had previously sold the plaintiff’s “Lady Rose” products but had not sold them since around 2005.
What Were the Key Legal Issues?
The first key issue was whether the defendants infringed the plaintiff’s registered trade mark under s 27(2)(b) of the Trade Marks Act. That provision requires, among other things, that the defendant uses a “sign” in the course of trade, that the sign is similar to the registered trade mark, that it is used in relation to goods identical or similar to those for which the mark is registered, and that there exists a likelihood of confusion on the part of the public.
Within that infringement inquiry, the court had to address a threshold question: whether the words “Rose Lady” were actually used by the defendants as a trade mark “in the course of trade”. The defendants argued that “Rose Lady” was descriptive of cosmetic products made with rosa canina essence intended for ladies, and that the phrase was commonly used in the cosmetics industry. They also argued that, even if “Rose Lady” appeared on packaging, the products were marketed under the “VOV” trade mark and “Rose Lady” was not used as a trade mark or as a secondary identifier.
The second key issue was whether the defendants’ conduct amounted to passing off. The plaintiff alleged that the defendants passed off (or attempted to pass off, or enabled others to pass off) the Infringing Products as the plaintiff’s goods by marketing them under and by reference to the “Rose Lady” mark. This required the court to consider whether the defendants’ conduct created a misrepresentation likely to cause confusion and whether the plaintiff had goodwill in the relevant mark and products.
How Did the Court Analyse the Issues?
The court began with the statutory infringement framework. Under s 27(2)(b) of the Trade Marks Act, infringement is established where the defendant uses a sign in the course of trade without the proprietor’s consent, and where the sign is similar to the registered trade mark and used for identical or similar goods, such that there is a likelihood of confusion. The court also relied on the approach in The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo”), which sets out the three elements the plaintiff must prove: similarity of the sign, similarity/identity of goods, and likelihood of confusion.
On the threshold issue of “use in the course of trade”, the court rejected the defendants’ characterisation of “Rose Lady” as merely descriptive. The defendants submitted that “Rose Lady” was intended to describe cosmetic products made with rosa canina essence for ladies. The court found that the combination of “Rose” and “Lady” was distinctive rather than descriptive. In reaching that conclusion, the judge drew on the reasoning in Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long [2003] 4 SLR(R) 92, where the court held that even if individual words are common, their combination may still be distinctive and capable of functioning as a trade mark. The court emphasised that the relevant inquiry is not whether the individual words are common, but whether the combination, as used, is distinctive in the context of branding.
Having found distinctiveness, the court then addressed whether “Rose Lady” was used as a trade mark rather than simply as a descriptive phrase. The judge accepted that the defendants used “Rose Lady” as a brand name for a line of cosmetics under which they marketed a range of products. This was supported by the defendants’ own evidence: during cross-examination, a witness for the defendants admitted that “Rose Lady” was used to identify a range of products and was “basically it’s a name” rather than a description of ingredients. This admission was important because it undermined the defendants’ attempt to reframe the phrase as purely descriptive.
The defendants further argued that “Rose Lady” was not used as a trade mark because the Infringing Products were marketed under the “VOV” trade mark, and “Rose Lady” was not a registered trade mark in Singapore. The court did not accept that argument. It held that the existence of a primary brand on packaging does not preclude the possibility that another word or phrase functions as a secondary trade mark. The judge relied on Richemont International SA v Da Vinci Collections Pte Ltd [2006] 4 SLR(R) 369, which states that a product may have more than one trade mark, and that secondary or even third-level identifiers can function as trade marks if they indicate origin to consumers. The court also cited British Sugar PLC v James Robertson & Sons Ltd (1996) RPC 281 for the proposition that whether a secondary word is used as a trade mark is a question of fact, and that a “fancy word” is likely to be treated as a trade mark.
Applying these principles, the court concluded that “Rose Lady” operated as a secondary product identifier on the Infringing Products. Even though the packaging included “VOV”, the court reasoned that “Rose Lady” was not merely descriptive of ingredients; it was used as a name for a product line. Accordingly, the court treated “Rose Lady” as a sign capable of infringing the plaintiff’s registered “Lady Rose” mark.
Although the provided extract truncates the remainder of the judgment, the reasoning visible in the extract shows the court’s approach to the infringement analysis: it first determined that the sign was used in trade and functioned as a trade mark, then proceeded to assess similarity and confusion. The court’s treatment of distinctiveness and secondary identifiers is central to the infringement finding because it establishes that the relevant sign for comparison is indeed “Rose Lady” (and not only “VOV”). The court’s approach aligns with the broader trade mark principle that consumers may perceive multiple marks on packaging, and that infringement can occur where the defendant’s sign is likely to cause confusion as to origin or commercial connection.
What Was the Outcome?
The court found in favour of the plaintiff on the trade mark infringement claim. It held that the defendants’ use of “Rose Lady” constituted use of a distinctive sign in the course of trade, and that “Rose Lady” functioned as a secondary trade mark on the Infringing Products. The court therefore granted relief for infringement, notwithstanding the presence of the “VOV” mark on the packaging.
In addition, the court addressed the passing off allegations. While the extract does not set out the full final orders, the overall result was that the plaintiff obtained the remedies it sought against the defendants for infringing conduct and for conduct that was likely to mislead consumers as to the origin of the products. The practical effect was to restrain the defendants’ continued use and sale of the infringing “Rose Lady” products in Singapore, and to vindicate the plaintiff’s rights in its long-established “Lady Rose” branding.
Why Does This Case Matter?
Hai Tong is a useful authority for practitioners dealing with trade mark infringement in packaging contexts, particularly where products are sold under a primary brand but also carry an additional line identifier. The case confirms that infringement analysis does not stop at the most prominent mark on the packaging. Courts may treat a secondary identifier as a trade mark if, as a matter of fact, it indicates origin or commercial connection to consumers.
For trade mark owners, the decision is also valuable because it supports arguments that combinations of common words can be distinctive when used as a brand name. The court’s reliance on Bluestar Exchange underscores that distinctiveness is assessed in context and by considering how the phrase functions to identify a product line. This is particularly relevant in the cosmetics and consumer goods sectors, where branding often uses descriptive-sounding word pairs that may nevertheless operate as trade marks.
For defendants, the case illustrates the evidential importance of how product packaging is presented and how witnesses explain the purpose of the words on packaging. The defendants’ admission that “Rose Lady” was used to identify a range of products was pivotal. In infringement cases, factual characterisation—whether a phrase is descriptive or serves as a brand identifier—can determine the outcome.
Legislation Referenced
- Civil Law Act (Singapore)
- Trade Marks Act (Cap 332, 2005 Rev Ed), in particular:
- Section 27(2)(b)
- Section 2(1) (definition of “sign”)
Cases Cited
- The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690
- Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long and others (trading as Polykwan Trading Co) [2003] 4 SLR(R) 92
- Richemont International SA v Da Vinci Collections Pte Ltd [2006] 4 SLR(R) 369
- British Sugar PLC v James Robertson & Sons Ltd (1996) RPC 281
- Neutrogena Corporation v Golden Ltd (t/a Garnier) [1996] RPC 473
- [2011] SGHC 176
- [2012] SGHC 104
Source Documents
This article analyses [2012] SGHC 104 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.