Case Details
- Case Title: Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another
- Citation: [2012] SGHC 104
- Court: High Court of the Republic of Singapore
- Decision Date: 11 May 2012
- Judge: Chan Seng Onn J
- Case Number: Suit No 669 of 2010
- Plaintiff/Applicant: Hai Tong Co (Pte) Ltd
- Defendants/Respondents: Ventree Singapore Pte Ltd and another
- Second Defendant: SKY (a partnership) (as described in the judgment extract)
- Legal Areas: Trade marks and trade names; infringement; passing off
- Statutes Referenced: Civil Law Act (as indicated in the provided metadata); Trade Marks Act (Cap 332, 2005 Rev Ed) (TMA) (discussed in the extract)
- Key Statutory Provision Discussed: s 27(2)(b) TMA
- Key Definition Discussed: s 2(1) TMA (“sign”)
- 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 (as provided): 12 pages, 5,717 words
- Cases Cited (as provided): [2011] SGHC 176; [2012] SGHC 104
- Additional Cases Cited in Extract: 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
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another concerned competing cosmetic brands and the question whether the defendants’ use of the sign “Rose Lady” infringed the plaintiff’s registered trade mark “Lady Rose”, and whether the defendants also engaged in passing off. The plaintiff, a long-standing cosmetics distributor, owned a registered mark for “Lady Rose” and had used it since the 1960s. The defendants, through a distribution arrangement with a South Korean manufacturer, imported and sold cosmetics bearing the words “Rose Lady” alongside the manufacturer’s “VOV” branding.
The High Court (Chan Seng Onn J) approached the trade mark infringement claim by applying the statutory test in s 27(2)(b) of the Trade Marks Act (TMA). The court held that “Rose Lady” was used in the course of trade as a brand identifier for a line of cosmetics and that it was not merely descriptive of ingredients. The court further treated “Rose Lady” as a secondary trade mark capable of functioning independently, even though the packaging also displayed “VOV”.
On the infringement analysis, the court’s reasoning focused on distinctiveness, the factual use of the sign, and the likelihood of confusion arising from similarity and the overlap in goods. The case illustrates how Singapore courts treat composite signs formed from common words, and how secondary product identifiers can still amount to “use as a trade mark” for infringement purposes.
What Were the Facts of This Case?
The plaintiff, Hai Tong Co (Pte) Ltd, is incorporated in Singapore and carries on the business of importing, exporting, distributing and selling cosmetics and beauty accessories. It sells a range of cosmetic products under the brand “Lady Rose”. The plaintiff’s “Lady Rose” mark was registered in Singapore by its predecessor in 1970, and the mark had been in use by the plaintiff and/or its predecessors since 1960. The plaintiff distributed its “Lady Rose” products through multiple retail channels, including department stores and independent cosmetics shops, and also sold directly to walk-in customers at its shop in Sago Lane.
The plaintiff’s registered trade mark covered, among other things, perfumery, essential oils, hair lotions, hair creams and cosmetics. In the period relevant to the dispute, the plaintiff sold at least two cosmetic products under the “Lady Rose” mark: a two-way cake and a foundation with sunscreen. The plaintiff used packaging in blue for its “Lady Rose” products, which later became relevant to the plaintiff’s concern about counterfeit or misattributed goods.
The first defendant, Ventree Singapore Pte Ltd, is also incorporated in Singapore and distributes cosmetic products. It acted as the distributor of “Rose Lady” cosmetics under a Sole Agent Agreement with VOV Cosmetics Co Ltd, a South Korean manufacturer. VOV Cosmetics was the registered proprietor of the “VOV” trade mark in Singapore (registered in 2004). Although VOV Cosmetics was not a party to the proceedings, its products formed the basis of the defendants’ distribution activities.
The second defendant, SKY (a partnership), operated a retail department store at People’s Park Complex. SKY sold cosmetics and perfumes, including products from the “Rose Lady” brand. The extract indicates that SKY had previously sold the plaintiff’s “Lady Rose” products but had not sold them since around 2005. In or around July 2010, the plaintiff received complaints from customers about the quality of certain “Lady Rose” cosmetic products packaged in peach-coloured cases. Because the plaintiff’s “Lady Rose” packaging was blue, the plaintiff suspected that counterfeit “Lady Rose” products might be circulating.
What Were the Key Legal Issues?
The first key issue was whether the defendants used the sign “Rose Lady” in the course of trade within the meaning of s 27(2)(b) of the TMA. This required the plaintiff to show not only that the words appeared on packaging or marketing materials, but that they were used as a trade mark (or at least as a sign functioning to identify origin), rather than merely as a descriptive reference to ingredients or other non-trade-mark purposes.
The second issue was whether the sign “Rose Lady” was similar to the plaintiff’s registered “Lady Rose” trade mark. Similarity analysis in trade mark infringement cases is not limited to exact word matching; it also considers the overall impression created by the signs, including the order and combination of words and how consumers are likely to perceive them.
The third issue was whether the defendants’ use of “Rose Lady” was in relation to goods identical or similar to those for which the plaintiff’s “Lady Rose” mark was registered, and whether, on account of similarity and overlap of goods, there existed a likelihood of confusion on the part of the public. This required the court to consider the practical realities of the market: cosmetics are typically sold through overlapping retail channels, and consumers may not conduct careful side-by-side comparisons.
How Did the Court Analyse the Issues?
Chan Seng Onn J began by setting out the statutory framework. Section 27(2)(b) of the TMA provides that a person infringes a registered trade mark if, without the proprietor’s consent, he uses in the course of trade a sign where (i) the sign is similar to the trade mark and (ii) the sign is used in relation to goods or services identical with or similar to those for which the trade mark is registered, and (iii) there exists a likelihood of confusion on the part of the public. The court also relied on the definition of “sign” in s 2(1) TMA, which expressly includes “any … word … brand … [or] aspect of packaging or any combination thereof”.
Applying the approach in The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd, the court identified three elements the plaintiff had to establish: (a) similarity between the “Rose Lady” sign and the “Lady Rose” trade mark; (b) use in relation to identical or similar goods; and (c) likelihood of confusion. However, the court treated the threshold question—whether the sign was used in the course of trade—as a necessary starting point. If the sign was not used as a trade mark, infringement could not be made out.
On the threshold issue, the defendants argued that “Rose Lady” was descriptive. They contended that the words referred to cosmetic products made with essence of the rosa canina plant and intended for ladies’ use, and that the phrase was commonly used in the cosmetics industry. The court rejected these arguments. It found that the combination of “Rose” and “Lady” was distinctive rather than descriptive. In doing so, the court drew on Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long, where the court had emphasised that even if individual words are common, their combination can create distinctive character functioning as a trade mark.
In the present case, the court treated “Rose Lady” as being used as a brand name for a line of cosmetics. Importantly, the court relied on admissions elicited during cross-examination. The defendants’ witness acknowledged that “Rose Lady” was used to identify a range of products and was “a name” rather than a description of ingredients. This factual finding was central: it supported the conclusion that “Rose Lady” operated as a trade mark (or at least as a sign used to identify commercial origin) in the defendants’ marketing and packaging.
The defendants also argued that “Rose Lady” was not used as a trade mark because the packaging and marketing emphasised the “VOV” mark. They submitted that the dominant mark was “VOV”, and that the products were marketed as “VOV Rose Lady” rather than “Rose Lady” per se. They further argued that “Rose Lady” was not registered in Singapore, unlike other VOV ranges such as “JADILLA J” and “CASTLEDEW”.
The court again rejected the defendants’ position. It held that “Rose Lady” functioned as a secondary product identifier and could operate as a secondary mark. The court cited Richemont International SA v Da Vinci Collections Pte Ltd for the proposition 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 to consumers that the product originates from a particular undertaking. The court also referred to British Sugar PLC v James Robertson & Sons Ltd, observing 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 a trade mark because it cannot be taken as anything else.
Applying these principles, the court concluded that the presence of “VOV” on packaging did not preclude “Rose Lady” from being used as a trade mark. The court treated “Rose Lady” as a fancy mark rather than a descriptive phrase. It therefore found that the defendants’ use of “Rose Lady” satisfied the “use in the course of trade” requirement under s 27(2)(b). This analysis is particularly useful for practitioners because it demonstrates that infringement can be established even where the defendant also uses another mark, provided the disputed sign is used to identify origin or a product line.
Although the extract provided truncates the remainder of the judgment, the reasoning up to this point shows the court’s method: (i) determine whether the sign is used as a trade mark (including as a secondary identifier); (ii) assess similarity between the signs; (iii) confirm that the goods are identical or similar; and (iv) evaluate likelihood of confusion. In a cosmetics context, where consumers may purchase based on branding and packaging cues, the court’s focus on distinctiveness and the factual manner of use would naturally feed into the confusion analysis.
What Was the Outcome?
Based on the court’s findings on the threshold issue and the characterisation of “Rose Lady” as a distinctive and trade-mark-signifying secondary identifier, the plaintiff’s trade mark infringement claim was treated as capable of succeeding under s 27(2)(b) TMA. The court’s reasoning undermined the defendants’ defences that the phrase was merely descriptive or that “VOV” branding negated any trade mark use of “Rose Lady”.
The extract also indicates that the first defendant ceased importing the infringing products after the commencement of the action. However, the practical effect of the judgment for the parties would have turned on the court’s final determinations on infringement and passing off, including whether injunctive relief and consequential orders were granted. For a complete view of the orders, a researcher would need to consult the full text beyond the truncated portion of the extract.
Why Does This Case Matter?
This case matters because it clarifies how Singapore courts approach “use in the course of trade” and “use as a trade mark” where a defendant uses a disputed sign alongside another prominent brand. The court’s acceptance that “Rose Lady” could function as a secondary product identifier reinforces that trade mark infringement is not limited to situations where the defendant uses only one mark. Practitioners should therefore evaluate not just the dominant mark, but also whether other words on packaging operate as origin indicators for a product line.
It also illustrates the evidential importance of how the sign is actually used in marketing. The court relied on admissions from cross-examination that “Rose Lady” was used to identify a range rather than describe ingredients. This suggests that, in disputes over descriptive versus trade mark use, the defendant’s own characterisation of its branding strategy can be decisive.
From a broader doctrinal perspective, the case demonstrates the application of established principles on distinctiveness of word combinations. Even where each word is individually common, the combination may still be distinctive and capable of functioning as a trade mark. This is particularly relevant in consumer goods markets like cosmetics, where brand names often combine everyday words to create memorable product lines.
Legislation Referenced
- Civil Law Act (as indicated in the provided metadata)
- 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.