Case Details
- Citation: [2006] SGHC 241
- Court: High Court of the Republic of Singapore
- Date: 2006-12-27
- Judges: Tan Lee Meng J
- Plaintiff/Applicant: Johnson & Johnson
- Defendant/Respondent: Uni-Charm Kabushiki Kaisha (Uni-Charm Corp)
- Legal Areas: Trade Marks and Trade Names — Passing off, Trade Marks and Trade Names — Registration criteria
- Statutes Referenced: Trade Marks Act, Trade Marks Act
- Cases Cited: [2006] SGHC 241
- Judgment Length: 6 pages, 3,319 words
Summary
In this case, the plaintiff Johnson & Johnson, an American company, opposed the registration of the trademark "Careree" by the defendant Uni-Charm Kabushiki Kaisha (Uni-Charm Corp), a Japanese company, on the basis of Johnson & Johnson's prior registration of the "Carefree" trademark. The key issues were whether the "Careree" mark was similar to the "Carefree" mark, and whether the use of "Careree" would amount to passing off of Johnson & Johnson's goods. The High Court of Singapore ultimately dismissed Johnson & Johnson's opposition, finding that while the marks were visually and aurally similar, there were conceptual differences and the goods were not sufficiently similar to create a likelihood of confusion.
What Were the Facts of This Case?
Johnson & Johnson, an American company, is the registered owner of the "Carefree" trademark in Singapore and several other countries. The "Carefree" mark has been extensively used since 1965 for "catamenial products, sanitary tampons, napkins and napkin belts for hygiene". In 2002, Johnson & Johnson's local sales of "Carefree" female hygiene products in Singapore amounted to $2.3 million, with advertising costs of $528,000.
On January 18, 2000, the defendant Uni-Charm Kabushiki Kaisha (Uni-Charm Corp), a Japanese company, applied to register the "Careree" trademark in Singapore in Class 5 for "napkins and pads for wear by person prone to incontinence". Johnson & Johnson opposed the registration, arguing that "Careree" was similar to its earlier "Carefree" mark and its use would amount to passing off.
The Assistant Registrar of Trade Marks dismissed Johnson & Johnson's opposition, allowing Uni-Charm to proceed with the registration of the "Careree" mark. Johnson & Johnson then appealed the decision to the High Court.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the "Careree" mark was similar to the earlier registered "Carefree" mark under Section 8(2)(b) of the Singapore Trade Marks Act, such that there was a likelihood of confusion on the part of the public.
2. Whether the use of the "Careree" mark would amount to passing off of Johnson & Johnson's goods under Section 8(4) of the Trade Marks Act.
How Did the Court Analyse the Issues?
On the issue of similarity of marks under Section 8(2)(b), the court considered the visual, aural, and conceptual similarity between "Carefree" and "Careree".
Visually, the court agreed that the two marks were similar, as they both began with "Care" and ended with "ree", differing only in the missing "f". Aurally, the court found that a person with an imperfect recollection of the "Carefree" mark may find "Careree" to be similar, as it could be pronounced as two words "Care" and "ree".
However, on the issue of conceptual similarity, the court was not convinced by Uni-Charm's argument that "Careree" was an invented word, while "Carefree" was an ordinary English word with a different meaning. The court held that there was no rule that an invented word would necessarily be conceptually different from an earlier registered mark that is an ordinary English word.
In considering the similarity of the goods, the court noted that while Uni-Charm's "napkins and pads for wear by person prone to incontinence" and Johnson & Johnson's "catamenial products, sanitary tampons, napkins and napkin belts for hygiene" were physically similar, the court applied the ejusdem generis rule and held that Johnson & Johnson's registered mark should be interpreted as covering only "sanitary napkins and sanitary napkin belts for hygiene".
On the issue of passing off under Section 8(4), the court acknowledged that there was a degree of similarity between the goods, as some people suffering from incontinence may use sanitary napkins. However, the court ultimately found that the differences in the nature and purpose of the goods were sufficient to conclude that the use of "Careree" would not lead to confusion or deception in the minds of the public.
What Was the Outcome?
The High Court dismissed Johnson & Johnson's appeal, finding that while the "Careree" and "Carefree" marks were visually and aurally similar, the conceptual differences and the lack of sufficient similarity between the goods meant that there was no likelihood of confusion or deception that would warrant refusing the registration of the "Careree" mark.
As a result, Uni-Charm was allowed to proceed with the registration of the "Careree" trademark in Singapore.
Why Does This Case Matter?
This case provides important guidance on the assessment of trademark similarity and the likelihood of confusion under Section 8(2)(b) of the Singapore Trade Marks Act. It highlights that while visual and aural similarity are relevant factors, conceptual differences and the nature of the goods can also play a significant role in the overall assessment.
The case also demonstrates the application of the ejusdem generis rule in interpreting the scope of a registered trademark, which can impact the assessment of similarity of goods. Additionally, the court's analysis of the passing off issue under Section 8(4) offers insights into the factors considered in determining whether the use of a mark would lead to confusion or deception in the minds of the public.
This judgment is a useful reference for trademark practitioners in Singapore, as it provides a detailed examination of the legal principles and considerations involved in opposing the registration of a potentially similar trademark.
Legislation Referenced
- Trade Marks Act (Cap 332, 1999 Rev Ed)
Cases Cited
- [2006] SGHC 241
- Pianotist Co's Application (1906) 23 RPC 774
- Aristoc Ltd v Rysta Ltd [1945] 62 RPC 72
- London Lubricants (1925) 42 RPC 264
- Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767
- Jordache Enterprises Inc v Millennium Pte Ltd [1984-1985] SLR 566
- Mystery Drinks GmbH v OHIM [2004] ETMR (18) 217
- Pruriderm Trade Mark [1985] RPC 187
- Icart SA's Application [2000] ETMR 180
- British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
- Inadine Trade Mark [1992] RPC 421
Source Documents
This article analyses [2006] SGHC 241 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.