Case Details
- Citation: [2013] SGCA 26
- Title: Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal
- Court: Court of Appeal of the Republic of Singapore
- Date of Decision: 15 March 2013
- Coram: Andrew Phang Boon Leong JA; V K Rajah JA; Sundaresh Menon JA (as he then was)
- Judgment Author: Sundaresh Menon CJ (delivering the judgment of the court)
- Case Numbers: Civil Appeals Nos 1 and 2 of 2012
- Procedural Posture: Appeal from the High Court decision in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another [2012] SGHC 104
- Parties: Hai Tong Co (Pte) Ltd (Plaintiff/Applicant); Ventree Singapore Pte Ltd and another (Defendants/Respondents)
- Other Party: Sky (sued as a firm; partnership)
- Legal Areas: Trade Marks and Trade Names — Infringement; Tort — Passing Off
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed); Trade Marks Act 1998 (as referenced in the metadata)
- Key Claims: Trade mark infringement under s 27(2)(b) of the Trade Marks Act; tort of passing off
- Counterclaim: Groundless threats of trade mark infringement proceedings under s 35(2) of the Act
- High Court Outcome (by reference): Trade mark infringement claim allowed; passing off claim dismissed; 90% of costs awarded to Hai Tong; counterclaim dismissed
- Appeals: CA 1 of 2012 (Hai Tong’s appeal against dismissal of passing off and costs); CA 2 of 2012 (Defendants’ cross-appeal against finding of infringement)
- Counsel: Drew & Napier LLC: Dedar Singh Gill, Yvonne Tang, Ong Sheng Li Gabriel and Chong Yi Ling Eileen (for appellant in CA 1 of 2012 and respondent in CA 2 of 2012); Eldan Law LLP: Wong Siew Hong and Ong Zhenhui Wayne (for respondents in CA 1 of 2012 and appellants in CA 2 of 2012)
- Judgment Length: 41 pages, 24,424 words
Summary
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] SGCA 26 is a Singapore Court of Appeal decision addressing trade mark infringement under the “cascading” infringement framework in the Trade Marks Act, as well as the tort of passing off. The dispute concerned cosmetic products marketed under a “Rose Lady” sign and packaging, and a registered composite trade mark used by Hai Tong for “Lady Rose” cosmetics. The Court of Appeal had to consider whether the Defendants’ use of the “Rose Lady” sign infringed Hai Tong’s registered mark under s 27(2)(b), and whether Hai Tong had proved the elements of passing off, including goodwill and damage.
The Court of Appeal upheld the High Court’s finding of trade mark infringement. It agreed that the Defendants’ sign functioned as a badge of origin in the course of trade, that the sign was sufficiently similar to the registered composite mark, that the goods were identical in nature (cosmetic products), and that there was a likelihood of confusion as to source or economically-linked undertakings. On passing off, however, the Court of Appeal’s analysis (as reflected in the appeal structure and the High Court’s reasoning) turned on the evidential burden of proving goodwill beyond “trivial” levels and demonstrating damage or likelihood of damage. The Court ultimately affirmed the High Court’s approach and orders, subject to the appellate outcomes on the passing off and costs issues.
What Were the Facts of This Case?
Hai Tong Co (Pte) Ltd (“Hai Tong”) is a Singapore company dealing in cosmetics, sundries and beauty accessories. It marketed cosmetic products under the brand “Lady Rose” and is the registered proprietor of a composite trade mark (the “Composite Mark”). The Composite Mark was registered by Hai Tong’s predecessor in 1970, but the mark had been used since 1960, predating registration. Hai Tong distributed its “Lady Rose” products to retailers across Singapore, including department stores and smaller retail cosmetics shops, and also sold to walk-in customers at its shop in Sago Lane.
Ventree Singapore Pte Ltd (“Ventree”) imports and distributes cosmetic products. Since 15 July 2009, Ventree imported three products from VOV Cosmetics Co Ltd (“VOV”), a South Korean manufacturer. These products were sold under the “Rose Lady” brand pursuant to a sole agent agreement. The allegedly infringing products contained an ingredient described as rosa canina (or essence of dog rose). They were sold in peach-coloured packaging printed with the product name, including the words “Rose Lady” (the “Sign”), accompanied by sketches of flowers with five petals in varying sizes. The Sign was not registered under the Trade Marks Act.
Sky, a partnership operating a retail department store at People’s Park Complex, sold cosmetics and perfumes, including products under the “Rose Lady” brand. Sky had previously sold the allegedly infringing products until sometime in 2005, but resumed selling one product, “VOV” Rose Lady Skin Cover, in January 2010. The allegedly infringing products were sold at various retail outlets, including department stores such as John Little and other cosmetics shops, including Sky’s store.
On 1 August 2010, Hai Tong commenced Suit No 669 in the High Court against Ventree and Sky. Hai Tong alleged trade mark infringement under s 27(2)(b) of the Trade Marks Act and also alleged passing off. Ventree’s defence included the contention that “Rose” and “Lady” and the floral elements were used descriptively to refer to the ingredient rosa canina, and that the products were marketed under the “VOV” brand. Ventree also denied similarity and likelihood of confusion, arguing that the words and floral device were different from those in the Composite Mark. Ventree further counterclaimed under s 35(2) for groundless threats of trade mark infringement proceedings.
What Were the Key Legal Issues?
The Court of Appeal identified two principal issues. First, it had to determine whether the High Court was correct in finding that Hai Tong had made out the elements of its trade mark infringement claim under s 27(2)(b) of the Trade Marks Act. This required the Court to examine the statutory requirements for infringement in the “intermediate” category: where there is not full identity between the registered mark and the sign, and/or not full identity between the goods/services, but where infringement can still be established if the statutory conditions are satisfied.
Second, the Court had to consider whether the High Court was correct in concluding that Hai Tong had only “trivial” goodwill for the purposes of passing off, and that Hai Tong failed to prove damage or a likelihood of damage to that goodwill. Passing off in Singapore requires proof of goodwill, misrepresentation leading to deception or a likelihood of deception, and damage (or a likelihood of damage). The evidential question in this case was whether Hai Tong’s goodwill was sufficiently substantial and whether the Defendants’ conduct had caused or was likely to cause damage.
How Did the Court Analyse the Issues?
The Court of Appeal began by situating the trade mark infringement claim within the statutory “cascading regime” in the Trade Marks Act. The Court explained that the Act provides different levels of protection depending on the degree of similarity between (i) the registered mark and the allegedly infringing sign, and (ii) the goods or services for which the mark is registered and those in relation to which the sign is used. At one end of the spectrum, where the marks and the goods/services are identical, infringement can be established without further inquiry under s 27(1). At the other end, where there is no similarity between goods/services, additional elements must be shown, including that the mark is well known and that use indicates a connection and causes a likelihood of confusion and damage.
Section 27(2) occupies the middle ground. For a claim under s 27(2)(b) to succeed, the claimant must show, among other things, that the sign is similar to the registered mark and that the use of the sign in relation to the relevant goods is likely to cause confusion on the part of the public as to origin or as to an economic connection. The Court emphasised that the analysis is not purely mechanical; it requires a holistic comparison of marks and a contextual assessment of how the public is likely to perceive the sign in the marketplace.
On the facts, the Court agreed with the High Court that the Sign was not merely descriptive of an ingredient. Although the Defendants argued that “Rose” and “Lady” and the floral sketches were used descriptively to refer to rosa canina, the Court accepted that the Sign was used “in the course of trade” as a badge of origin. Importantly, the Court treated the Sign as a “secondary identifier” even if the “VOV” brand also appeared on the packaging. This approach reflects a key trade mark principle: a sign can function as a trade mark even where other branding elements are present, provided that it is used to distinguish goods and indicate commercial origin.
The Court also endorsed the High Court’s comparison between the Composite Mark and the Sign. It found visual, aural and conceptual similarity in the overall impression. The Court’s reasoning indicates that the comparison is conducted from the perspective of how an average consumer would perceive the marks in their real-world context, rather than by dissecting each element in isolation. In addition, the Court accepted that the goods were identical in nature: both parties’ products were cosmetic products, including ladies’ skin cover and foundation products. The overlap in product category and retail environment mattered to the confusion analysis.
Finally, the Court agreed that there was a likelihood of confusion. It relied on several factors: (i) the high degree of similarity between the Composite Mark and the Sign; (ii) the identical nature of the goods; (iii) the similarity of retail locations (department stores and cosmetics shops); and (iv) the targeting of the same customer group—females who purchase cosmetics. These factors collectively supported the conclusion that consumers might believe the allegedly infringing products came from the same source as Hai Tong’s “Lady Rose” products or from economically-linked undertakings.
On passing off, the High Court had dismissed Hai Tong’s claim on the basis that Hai Tong’s goodwill was “trivial” and that Hai Tong failed to adduce evidence of damage or likelihood of damage. The Court of Appeal’s treatment of this issue underscores the evidential discipline required in passing off cases. Goodwill must be more than nominal; it must be shown through credible evidence of market presence and reputation. Further, damage is not presumed merely because there is a misrepresentation; the claimant must show that the misrepresentation has caused or is likely to cause harm to goodwill.
What Was the Outcome?
The Court of Appeal upheld the High Court’s finding that Ventree and Sky infringed Hai Tong’s Composite Mark under s 27(2)(b). The practical effect was that the Defendants were restrained from infringing the Composite Mark, and the Court maintained the remedial framework ordered at first instance, including injunctive relief and delivery up/destruction of infringing materials, as well as damages or an account of profits (to be assessed) and interest.
On the passing off claim and costs, the Court of Appeal’s disposition followed the High Court’s approach to goodwill and damage. The High Court had dismissed passing off and awarded Hai Tong 90% of its trial costs, and the appellate outcome preserved the substance of that result, subject to any adjustments made in the Court of Appeal’s final orders in relation to the costs and the passing off issues.
Why Does This Case Matter?
This decision is significant for practitioners because it clarifies how Singapore courts apply the Trade Marks Act’s “cascading” infringement regime. By confirming that s 27(2)(b) can be satisfied even where the allegedly infringing sign coexists with other branding (such as “VOV”), the Court reinforces that trade mark infringement analysis focuses on the sign’s function in the course of trade and the overall impression on consumers. The case also illustrates that descriptive arguments will not succeed where the sign is used in a manner that consumers would understand as indicating origin or commercial source.
From a passing off perspective, the case highlights the evidential burden on claimants. Even where there is overlap in branding and consumer confusion, passing off requires proof of goodwill and damage. The High Court’s “trivial goodwill” finding—based on sales figures and lack of advertising—demonstrates that courts will scrutinise the claimant’s market presence and promotional efforts. This is a reminder that trade mark infringement and passing off, while conceptually related, are distinct causes of action with different statutory and common law elements.
For lawyers advising brand owners or defendants, the case provides a structured framework for assessing infringement: compare marks holistically, assess goods/services overlap in real market conditions, and evaluate confusion factors such as retail channels and target consumers. It also provides a cautionary lesson for defendants: even if a sign is not registered, its use in packaging and marketing can still attract infringement liability where similarity and confusion are established.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), in particular s 27(2)(b), s 27(1), s 27(3), and s 35(2)
- Trade Marks Act 1998 (as referenced in the case metadata)
Cases Cited
- [2009] SGHC 105
- [2012] SGHC 104
- [2012] SGHC 149
- [2013] SGCA 18
- [2013] SGCA 26
Source Documents
This article analyses [2013] SGCA 26 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.