Case Details
- Citation: [2025] SGHC 51
- Court: High Court of the Republic of Singapore
- Date: 2025-03-26
- Judges: Kwek Mean Luck J
- Plaintiff/Applicant: Sunrise Plus (Pte) Ltd
- Defendant/Respondent: The Sunrider Corp dba Sunrider International
- Legal Areas: Intellectual Property — Trade mark and trade names
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2018] SGIPOS 1, [2018] SGIPOS 18, [2020] SGIPOS 11, [2021] SGHC 165, [2021] SGHC 165, [2022] SGIPOS 4, [2022] SGIPOS 19, [2024] SGIPOS 9, [2025] SGHC 51
- Judgment Length: 39 pages, 10,743 words
Summary
This case involves a trademark dispute between Sunrise Plus (Pte) Ltd ("the Appellant") and The Sunrider Corp dba Sunrider International ("the Respondent"). The Appellant had applied to register several trademarks in Classes 5, 29, 30, and 35, which the Respondent opposed. The Principal Assistant Registrar (PAR) allowed the Respondent's opposition against the Appellant's trademark applications in Class 5 and the Class 35 portion of the multi-class application 40201816175S-01, finding that they were similar to the Respondent's earlier registered trademark and were likely to cause confusion among the public.
What Were the Facts of This Case?
The Appellant, Sunrise Plus (Pte) Ltd, had applied to register several trademarks in Classes 5, 29, 30, and 35. The Respondent, The Sunrider Corp dba Sunrider International, opposed these applications. The Respondent relied on its earlier registered trademark, T9300374C, which covered "Herbal drinks included in Class 5".
The PAR allowed the Respondent's opposition against the Appellant's trademark application 40201816175S-02 in Class 5 and the Class 35 portion of the multi-class application 40201816175S-01. The PAR found that some of the Appellant's goods in Class 5, such as "Nutritional supplements for humans; Dietary and nutritional supplements; dietary supplements; nutritional supplements; nutritional additives and supplements; vitamins and vitamin formulations for human consumption; minerals and mineral formulations for human consumption", were similar to the Respondent's earlier registered trademark for "Herbal drinks included in Class 5".
The PAR also found that the Appellant's goods and services in Class 35, which included retail and wholesale services for various health and nutrition products, were similar to the Respondent's earlier registered trademark and were likely to cause confusion among the public.
What Were the Key Legal Issues?
The two main issues in this appeal were:
- Whether the Appellant's trademark applications in Class 5 and 35 fell foul of Section 8(2)(b) of the Trade Marks Act 1998 (the "Earlier Registered Mark ground").
- Whether the Appellant's trademark applications in Class 5 and 35 fell foul of Section 8(7)(a) of the Trade Marks Act 1998 (the "Passing Off ground").
How Did the Court Analyse the Issues?
On the first issue, the court applied the three-step test set out in the Staywell case, which requires an assessment of: (a) similarity of marks, (b) similarity of goods or services, and (c) likelihood of confusion arising from the two similarities.
The Appellant did not contest the PAR's finding on the similarity of marks, but challenged the PAR's findings on the similarity of goods or services and the likelihood of confusion.
On the similarity of goods or services, the court applied the factors set out in the British Sugar case, which include the respective uses of the goods, the respective users, the physical nature of the goods, the trade channels, and the extent of competitiveness.
The court agreed with the PAR's finding that some of the Appellant's goods in Class 5, such as nutritional supplements and vitamins, were similar to the Respondent's earlier registered trademark for "Herbal drinks included in Class 5". The court also agreed that the Appellant's goods and services in Class 35, which included retail and wholesale services for various health and nutrition products, were similar to the Respondent's earlier registered trademark.
On the likelihood of confusion, the court considered factors such as the impact of the similarity of the marks, the impact of the similarity of the goods or services, and the overall impression on the average consumer.
The court agreed with the PAR's finding that there was a likelihood of confusion among the public between the Appellant's trademarks and the Respondent's earlier registered trademark, both in relation to the Class 5 goods and the Class 35 services.
On the second issue, the court also agreed with the PAR's finding that the Appellant's trademark applications in Class 5 and 35 were likely to constitute passing off, as the Respondent had established the necessary elements of goodwill, misrepresentation, and damage.
What Was the Outcome?
The court dismissed the Appellant's appeal and upheld the PAR's decision to allow the Respondent's opposition against the Appellant's trademark applications in Class 5 and the Class 35 portion of the multi-class application 40201816175S-01.
As a result, the Appellant's trademark applications in those classes were not allowed to proceed to registration.
Why Does This Case Matter?
This case is significant for several reasons:
- It provides guidance on the assessment of similarity of goods or services under Section 8(2)(b) of the Trade Marks Act 1998, particularly in the context of nutritional supplements and related products.
- It reinforces the importance of the likelihood of confusion test in determining whether a trademark application should be allowed to proceed, even if the goods or services are not identical to the earlier registered trademark.
- The court's analysis on the passing off ground under Section 8(7)(a) of the Trade Marks Act 1998 is also noteworthy, as it demonstrates the high threshold for establishing the necessary elements of goodwill, misrepresentation, and damage.
- The case highlights the challenges faced by trademark applicants in navigating the complex landscape of trademark law, particularly when seeking to register marks that may be perceived as similar to earlier registered trademarks.
This judgment is likely to be of significant interest to trademark practitioners, brand owners, and businesses operating in the health and nutrition sectors, as it provides valuable insights into the legal principles and considerations that courts apply in resolving trademark disputes.
Legislation Referenced
Cases Cited
- [2018] SGIPOS 1
- [2018] SGIPOS 18
- [2020] SGIPOS 11
- [2021] SGHC 165
- [2021] SGHC 165
- [2022] SGIPOS 4
- [2022] SGIPOS 19
- [2024] SGIPOS 9
- [2025] SGHC 51
Source Documents
This article analyses [2025] SGHC 51 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.