Case Details
- Citation: [2025] SGHC 51
- Case Number: Not specified
- Decision Date: Not specified
- Coram: Kwek Mean Luck J
- Party Line: Sunrise Plus (Pte) Ltd v The Sunrider Corp dba Sunrider International
- Judges: Kwek Mean Luck J
- Counsel for Appellant: Millicent Lui Qiao Xin and Teh Ri Xing Ruth (Ghows LLC)
- Counsel for Respondent: Sukumar Karuppiah and Dinesh Kumar (Mirandah Law LLP)
- Statutes Cited: s 8(2)(b) the Act, s 8(7)(a) the Act, s 55(3) the Act
- Disposition: The court allowed the appeal regarding s 8(7)(a) but dismissed the appeal regarding s 8(2)(b), ultimately ordering that the subject trade mark applications shall not proceed to registration.
Summary
This appeal concerned the registrability of trade mark applications in Classes 5 and 35, specifically examining grounds of refusal under the Trade Marks Act. The dispute centered on whether the marks met the statutory requirements for registration, with the Appellant challenging the lower tribunal's findings regarding the applicability of s 8(2)(b) and s 8(7)(a) of the Act. The High Court, presided over by Kwek Mean Luck J, conducted a detailed review of the evidence and the legal standards governing the opposition proceedings.
In its final determination, the Court allowed the Appellant’s appeal in respect of the ground under s 8(7)(a) of the Act, finding merit in the arguments presented. However, the Court dismissed the appeal concerning the ground under s 8(2)(b) of the Act. Consequently, the Court ordered that Trade Mark Application Nos. 40201816175S-02 and 40201816175S-01 shall not proceed to registration. This decision reinforces the rigorous application of the Act's criteria for trade mark registration and clarifies the threshold for opposition grounds in Singapore intellectual property law.
Timeline of Events
- 16 August 2018: The Appellant, Sunrise Plus (Pte) Ltd, filed trade mark applications for registration in Classes 5, 29, 30, and 35.
- 13 March 2025: The High Court of Singapore heard the appeal regarding the opposition to the Appellant's trade mark applications.
- 17 March 2025: The court reserved judgment following the conclusion of the appeal proceedings.
- 26 March 2025: The High Court of Singapore delivered its judgment in [2025] SGHC 51, presided over by Kwek Mean Luck J.
What Were the Facts of This Case?
The dispute centers on trade mark applications filed by Sunrise Plus (Pte) Ltd (the Appellant) across multiple classes, including Class 5 (nutritional supplements), Class 29 (dairy and protein products), Class 30 (chocolate and cocoa products), and Class 35 (retail and distribution services). The Respondent, The Sunrider Corporation, opposed these applications based on its own earlier registered mark, T9300374C, which covers 'Herbal drinks included in Class 5'.
The Principal Assistant Registrar (PAR) of the Intellectual Property Office of Singapore initially allowed the Respondent's opposition against the Appellant's Class 5 and Class 35 applications, citing sections 8(2)(b) and 8(7)(a) of the Trade Marks Act 1998. The PAR determined that there was a likelihood of confusion between the marks and that the goods and services were sufficiently similar to warrant refusal.
Although the PAR found no similarity regarding the Appellant's applications in Classes 29 and 30, the legal framework regarding multi-class applications prevented the partial registration of the mark. Consequently, the entire application for the multi-class mark was blocked from proceeding to registration.
The Appellant appealed the PAR's decision to the High Court, challenging the findings on the similarity of goods and services and the alleged likelihood of confusion. The appeal focused on whether the statutory requirements for refusal under the Trade Marks Act were correctly applied, specifically regarding the comparison between the Appellant's broad range of nutritional and retail services and the Respondent's specific herbal drink mark.
What Were the Key Legal Issues?
The appeal in Sunrise Plus (Pte) Ltd v The Sunrider Corp [2025] SGHC 51 centers on the opposition to trademark registration under the Trade Marks Act. The court addressed the following core issues:
- Similarity of Goods and Services (s 8(2)(b)): Whether the Appellant’s "nutritional and dietary supplements" and "herbal drinks" in Class 5 and retail services in Class 35 are sufficiently similar to the Respondent’s earlier registered mark to create a likelihood of confusion.
- Interpretation of "Ordinary and Natural Meaning": Whether the scope of "nutritional and dietary supplements" should be narrowly construed to include only vitamin/mineral products, or broadly construed to encompass a wider range of health-related goods.
- Applicability of Retail Service Similarity (Guccitech Principle): Whether the principle that goods can be similar to retail services (and vice versa) applies even where the retail services are not limited to a specific brand or a wide range of products.
- Likelihood of Confusion: Whether, given the visual and conceptual similarity of the marks, the high degree of consumer scrutiny in the health sector is sufficient to dispel the risk of confusion.
How Did the Court Analyse the Issues?
The High Court upheld the Principal Assistant Registrar’s (PAR) decision, emphasizing that the "ordinary and natural meaning" of goods must not be strained to create artificial distinctions. Relying on Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911, the court rejected the Appellant’s attempt to limit "nutritional supplements" to vitamin-based products, noting that dictionary definitions confirm a broader scope that overlaps with "herbal drinks."
The court further addressed the similarity between goods and services. It affirmed the principle established in Guccitech (as cited in [2016] 3 SLR 517) that goods can be similar to retail services. The court clarified that this principle is not limited to cases where the retail store exclusively sells the brand's own goods, rejecting the Appellant's argument that the Respondent's limited product range precluded such a finding.
Regarding the "British Sugar" factors, the court found the Appellant’s argument that consumers exercise high scrutiny to be insufficient. While acknowledging that consumers of herbal products may be discerning, the court held that the "high degree of similarity of the marks" and the functional overlap in health benefits created a significant risk of confusion.
The court notably rejected the Appellant’s contention that "Sunrise" possessed low distinctiveness due to common usage of "Sun" prefixes. It maintained that the overall impression of the marks, combined with the potential for imperfect recollection, favored the Respondent. Ultimately, the court dismissed the appeal against the s 8(2)(b) ground, concluding that the marks and goods were sufficiently similar to warrant refusal of registration.
What Was the Outcome?
The High Court allowed the Appellant's appeal regarding the ground under s 8(7)(a) of the Trade Marks Act, finding that the Respondent failed to establish the necessary elements of goodwill and misrepresentation for passing off. However, the Court dismissed the appeal concerning s 8(2)(b), resulting in the refusal of the Appellant's trade mark applications.
[2025] SGHC 51 36 Conclusion 114 For the above reasons, I allow the Appellant’s appeal in respect of the ground under s 8(7)(a) of the Act. However, I dismiss the Appellant’s appeal against the ground under s 8(2)(b) of the Act. Accordingly, Trade Mark Application No. 40201816175S-02 and 40201816175S-01 in Class 5 and 35 shall not proceed to registration.
The Court ordered that if parties are unable to agree on costs, they must submit written submissions not exceeding seven pages within one week of the judgment.
Why Does This Case Matter?
This case clarifies the evidentiary threshold for establishing goodwill in a passing-off claim within trade mark opposition proceedings. The Court affirmed that mere corporate existence or global sales figures are insufficient; a claimant must provide concrete evidence of local reputation and sales specifically linked to the mark at the relevant date of the alleged infringement.
The decision builds upon the principles established in Future Enterprises Pte Ltd v McDonald’s Corp and Singsung Pte Ltd v LG 26 Electronics Pte Ltd, reinforcing the distinction between general corporate goodwill and specific goodwill attached to a product or mark. It further clarifies that a finding of a 'likelihood of confusion' under s 8(2)(b) of the Trade Marks Act does not automatically satisfy the 'misrepresentation' requirement for passing off, as the two tests serve distinct legal purposes.
For practitioners, this case serves as a reminder that self-compiled sales summaries without supporting invoices or business records are inadequate to prove goodwill. In litigation, counsel must ensure that evidence of reputation is strictly contemporaneous with the date of the application for the mark in question, as evidence post-dating the application is generally inadmissible for establishing the requisite goodwill.
Practice Pointers
- Avoid Narrow Interpretations of Specifications: When assessing the similarity of goods, do not attempt to restrict the 'ordinary and natural meaning' of terms (e.g., 'nutritional supplements') to narrow, self-serving definitions. Courts will rely on dictionary definitions and common usage to determine the scope of a specification.
- Focus on Notional Use: Remember that the court assesses the similarity of goods based on the full spectrum of the specification, not just the specific product currently sold by the proprietor. Ensure your client understands that registration covers all goods within the class description, regardless of current commercial focus.
- Evidence of Goodwill is Paramount: In passing-off claims, a finding of likelihood of confusion under the Trade Marks Act does not automatically equate to a finding of misrepresentation. You must provide specific, localized evidence of goodwill linked to the mark at the relevant date to succeed in passing off.
- Anticipate Overlap in Health-Related Goods: The court is likely to find an overlap between 'nutritional supplements' and 'herbal drinks' because both relate to substances influencing bodily health. If your client's goods fall within these categories, assume a high likelihood of similarity in use.
- Use Expert or Dictionary Evidence Early: The court will readily consult standard dictionaries (e.g., Oxford, Cambridge) to define terms. If you intend to argue for a specialized industry meaning, you must provide robust, independent evidence to displace the 'ordinary and natural' dictionary definition.
- Prepare for 'Broad' Class 5 Interpretations: The court rejected the notion that Class 5 goods are limited to those with strictly medicinal or therapeutic properties. Be prepared for the court to interpret Class 5 specifications broadly to include health-benefit products.
Subsequent Treatment and Status
As the judgment in Sunrise Plus (Pte) Ltd v The Sunrider Corp dba Sunrider International [2025] SGHC 51 was delivered on 26 March 2025, it is a very recent decision. Consequently, it has not yet been substantively cited or applied in subsequent Singapore High Court or Court of Appeal jurisprudence.
The decision largely reinforces the established principles set out in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 regarding the interpretation of trade mark specifications and the 'ordinary and natural meaning' test. It serves as a contemporary application of these settled principles to the health and supplement sector, rather than a departure from existing law.
Legislation Referenced
- Trade Marks Act 1998, s 8(2)(b)
- Trade Marks Act 1998, s 8(7)(a)
- Trade Marks Act 1998, s 55(3)
Cases Cited
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2013] 1 SLR 531 — Principles regarding the likelihood of confusion in trade mark opposition.
- The Polo/Lauren Co, LP v Shop In Top Enterprise [2006] 4 SLR(R) 629 — Established the test for similarity of marks and goods.
- Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2013] 2 SLR 941 — Clarified the scope of protection for well-known marks.
- Hai Tong Banking Corp Ltd v United Overseas Bank Ltd [1997] 3 SLR(R) 797 — Discussed the requirements for establishing reputation.
- Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 — Addressed the threshold for distinctiveness and secondary meaning.
- McDonald's Corp v Future Enterprises Pte Ltd [2005] 1 SLR(R) 177 — Principles on the assessment of visual, aural, and conceptual similarity.