Case Details
- Citation: [2013] SGCA 26
- Case 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
- Case Numbers: Civil Appeals Nos 1 and 2 of 2012
- Judges (Coram): Andrew Phang Boon Leong JA; V K Rajah JA; Sundaresh Menon JA (as he then was)
- Appellant in CA 1 of 2012 / Respondent in CA 2 of 2012: Hai Tong Co (Pte) Ltd
- Respondents in CA 1 of 2012 / Appellants in CA 2 of 2012: Ventree Singapore Pte Ltd and Sky (sued as a firm)
- Legal Areas: Trade Marks and Trade Names – Infringement; Tort – Passing Off
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) (notably ss 27(1), 27(2)(b), 27(3), and 35(2))
- Prior Decision: Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another [2012] SGHC 104
- Length of Judgment: 41 pages, 24,752 words
- Counsel: Drew & Napier LLC (Dedar Singh Gill, Yvonne Tang, Ong Sheng Li Gabriel and Chong Yi Ling Eileen) for the appellant in CA 1 of 2012 and the respondent in CA 2 of 2012; Eldan Law LLP (Wong Siew Hong and Ong Zhenhui Wayne) for the respondents in CA 1 of 2012 and the appellants in CA 2 of 2012
- Trade Mark at Issue: Hai Tong’s “Composite Mark” (registered in 1970; used since 1960) (Trade Mark No: T7048436B)
- Allegedly Infringing Sign: “Rose Lady” on peach-coloured packaging with flower sketches (five-petal designs); the sign was not registered under the Act
- Allegedly Infringing Products: VOV “Rose Lady” cosmetic products imported and sold by Ventree (including “VOV” Rose Lady Cover Foundation, “VOV” Rose Lady Skin Cover, and “VOV” Rose Lady Two Way Cake)
Summary
This appeal concerned a dispute between two cosmetic businesses over the use of “Rose Lady” branding on cosmetic packaging. Hai Tong Co (Pte) Ltd (“Hai Tong”) owned a long-established registered trade mark (the “Composite Mark”) used for cosmetics and related beauty products. Ventree Singapore Pte Ltd (“Ventree”) and Sky (a retail partnership) distributed and sold certain cosmetic products under the “Rose Lady” branding, imported from a South Korean manufacturer. Hai Tong sued for trade mark infringement under s 27(2)(b) of the Trade Marks Act and also in the tort of passing off.
The High Court found that Hai Tong succeeded on trade mark infringement under s 27(2)(b), but dismissed the passing off claim, holding that Hai Tong had only “trivial” goodwill and failed to prove damage or likelihood of damage. Both parties appealed: Hai Tong challenged the dismissal of passing off and the costs order; Ventree and Sky cross-appealed against the finding of trade mark infringement. The Court of Appeal’s decision addresses, in particular, the structured “cascading” infringement analysis under the Act and the evidential requirements for passing off goodwill and damage.
What Were the Facts of This Case?
Hai Tong is incorporated in Singapore and carries on the business of importing, exporting, distributing and selling cosmetics, sundries and beauty accessories. Its products have been marketed under the brand “Lady Rose”. Hai Tong is the registered proprietor of a composite trade mark (Trade Mark No T7048436B), registered by its predecessor in 1970 and used since 1960, prior to registration. Hai Tong distributes “Lady Rose” products to retailers across Singapore, including department stores such as Robinsons and other cosmetics stores in the heartlands, and also sells to walk-in customers at its Sago Lane shop.
Ventree is also a Singapore company engaged in importing, exporting and distributing cosmetic products. Ventree distributes a line of cosmetic products sold under the “Rose Lady” brand pursuant to a Sole Agent Agreement dated 15 July 2009 with the manufacturer, VOV Cosmetics Co Ltd (“VOV”). VOV is the registered proprietor of the “VOV” trade mark in Singapore, and VOV itself was not a party to the proceedings. Sky operates a retail department store at People’s Park Complex and sells cosmetics and perfumes, including products under the “Rose Lady” brand.
From 15 July 2009, Ventree imported three VOV “Rose Lady” products: “VOV” Rose Lady Cover Foundation, “VOV” Rose Lady Skin Cover, and “VOV” Rose Lady Two Way Cake (the “allegedly infringing products”). These products contain an ingredient described as rosa canina (or essence of dog rose). They are 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 in the background. Importantly, the Sign was never registered under the Trade Marks Act.
Hai Tong instituted Suit No 669 of 2010 on 1 August 2010 against Ventree and Sky. Hai Tong alleged that the Defendants infringed its Composite Mark by importing and offering for sale the allegedly infringing products. Hai Tong also alleged passing off, claiming that the Defendants had misrepresented their goods as being Hai Tong’s goods. Ventree and Sky denied infringement and passing off, and Ventree counterclaimed under s 35(2) of the Act for groundless threats of trade mark infringement proceedings. The Defendants’ positions were materially similar throughout, and they were represented by the same counsel in both the High Court and the appeals.
What Were the Key Legal Issues?
The Court of Appeal had to determine two principal issues. First, it had to decide whether the High Court was correct in finding that Hai Tong had proved the elements of trade mark infringement under s 27(2)(b) of the Act. This required the court to assess, on the evidence, the similarity between the registered mark and the allegedly infringing sign, the similarity between the goods, and whether there was a likelihood of confusion (including the statutory requirement that the use of the sign would indicate a connection between the goods and the proprietor of the mark, and that the proprietor’s interests would be damaged).
Second, the Court of Appeal had to decide whether the High Court was correct in concluding that Hai Tong had only “trivial” goodwill for passing off and that Hai Tong failed to prove damage or a likelihood of damage to such goodwill. Passing off claims in Singapore require proof of goodwill, misrepresentation, and damage (or a likelihood of damage). The High Court’s approach turned heavily on the evidential assessment of goodwill and the commercial impact of the Defendants’ conduct on Hai Tong’s market position.
How Did the Court Analyse the Issues?
The Court of Appeal began by situating the infringement claim within the Trade Marks Act’s statutory design. The Act provides a “cascading regime” for trade mark protection, with different requirements depending on the degree of similarity between (i) the registered mark and the allegedly infringing sign and (ii) the goods or services. At the simplest end, where the marks and the goods are identical, infringement can be established under s 27(1) without additional elements. Where there is no similarity between the goods or services, s 27(3) applies and imposes higher thresholds, including that the registered mark is well known and that the use of the sign would indicate a connection and cause confusion and damage.
Section 27(2) occupies the intermediate space. The Court of Appeal explained that s 27(2)(b) is engaged where the registered mark and the sign are similar and the goods are similar, but not necessarily identical. In such cases, the proprietor must still establish the likelihood of confusion and the statutory link between the sign’s use and the proprietor’s interests. The court’s analysis therefore required a careful comparison of the Composite Mark and the Sign, and a comparison of the goods in question, followed by an assessment of how the relevant public would likely perceive the source of the goods.
On the facts, the High Court had found that the Sign was used in the course of trade as a badge of origin, even though it also functioned as a “secondary identifier” to the “VOV” mark. The Court of Appeal’s treatment of this point is significant for practitioners because it addresses a common defence in packaging disputes: that words and images on packaging are merely descriptive or decorative. The court accepted that, in context, the “Rose Lady” branding could operate as an indicator of commercial origin, notwithstanding that the products also bore the “VOV” mark.
Next, the court considered similarity. The High Court had found that the Sign was visually, aurally and conceptually similar to the Composite Mark, and that the overall comparison supported a finding of similarity. The Court of Appeal’s reasoning (as reflected in the High Court’s findings summarised in the appeal record) also emphasised that the comparison is not conducted by dissecting marks into components in isolation, but by considering the overall impression created on consumers. This is particularly relevant in cosmetics, where consumers may rely on branding cues and packaging aesthetics when selecting products.
Third, the court assessed the goods. The Composite Mark was registered for perfumery, essential oils, hair lotions, hair creams and cosmetics. The allegedly infringing products were cosmetic items such as foundation and skin cover products. The High Court therefore found that the goods were identical in nature or at least sufficiently closely related for the statutory infringement analysis. The Court of Appeal’s approach underscores that, for s 27(2)(b), the similarity of goods is assessed in a practical commercial sense: the question is whether the relevant public would regard the goods as coming from the same or economically linked undertakings.
Finally, the court addressed likelihood of confusion. The High Court found that confusion was likely because of (i) the high degree of similarity between the Composite Mark and the Sign, (ii) the identical nature of the goods, (iii) similar retail channels (department stores and cosmetics shops), and (iv) the same target customers (women who use cosmetics). The Court of Appeal’s analysis reflects the statutory concern that the use of a similar sign on similar goods may cause consumers to believe that the goods are connected to the trade mark proprietor, even where another brand name appears on the packaging. In other words, the presence of “VOV” did not eliminate the risk that consumers would still associate “Rose Lady” products with Hai Tong’s “Lady Rose” branding.
On passing off, the High Court’s dismissal turned on goodwill and damage. The High Court held that Hai Tong’s goodwill was “trivial”, relying on sales figures it considered “not particularly impressive” and the lack of advertising effort since 1979. It further held that Hai Tong failed to adduce evidence of damage or likelihood of damage. The Court of Appeal therefore had to examine whether the High Court’s evidential conclusions were correct, and whether the record supported a finding that Hai Tong had sufficient goodwill and that the Defendants’ conduct had caused or was likely to cause commercial harm.
What Was the Outcome?
The Court of Appeal’s decision upheld the High Court’s approach to trade mark infringement under s 27(2)(b), confirming that the Defendants’ use of the “Rose Lady” sign on similar cosmetic goods was sufficiently similar to Hai Tong’s Composite Mark and was likely to cause confusion as to origin or economic connection. The practical effect is that the injunctions and related relief granted by the High Court remained in force (subject to any adjustments made by the Court of Appeal).
On passing off, the Court of Appeal addressed Hai Tong’s challenge to the High Court’s finding that Hai Tong had only trivial goodwill and failed to prove damage. The outcome of the passing off appeal determined whether Hai Tong could obtain additional relief beyond the trade mark infringement remedies, and it also affected the allocation of costs between the parties.
Why Does This Case Matter?
This case is important for trade mark practitioners because it illustrates how Singapore courts apply the Trade Marks Act’s structured infringement framework, particularly the intermediate category under s 27(2)(b). The decision reinforces that infringement analysis is not limited to a mechanical comparison of words; it requires a holistic assessment of overall impression, the context of use in the market, and the likelihood that consumers will assume a connection between undertakings.
For packaging and cosmetics disputes, the case is also a useful authority on how courts treat branding elements that may be argued to be merely descriptive or decorative. Even where a product bears another prominent brand (here, “VOV”), the court may still find that the contested sign functions as a badge of origin and can mislead consumers. This has practical implications for brand owners and distributors: risk assessments should consider not only the presence of a house mark, but also the consumer-facing branding that consumers are likely to remember and associate with source.
On passing off, the case highlights the evidential burden on claimants to establish goodwill beyond mere registration or historic use, and to show damage or a likelihood of damage. Where sales are modest and advertising evidence is thin, courts may be reluctant to infer harm. Practitioners should therefore ensure that passing off pleadings are supported by concrete evidence of market presence, consumer recognition, and the commercial impact of the defendant’s conduct.
Legislation Referenced
Cases Cited
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.