Case Details
- Citation: [2025] SGHC 51
- Case Number: Not specified
- Decision Date: 26 March 2025
- Coram: Kwek Mean Luck J
- Party Line: Sunrise Plus (Pte) Ltd v The Sunrider Corp dba Sunrider International
- 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)
- Judges: Kwek Mean Luck J
- 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.
- Court: High Court of Singapore
- Jurisdiction: Intellectual Property / Trade Marks
Summary
This appeal concerned the registrability of trade mark applications filed by the Appellant, which were challenged by the Respondent. The dispute centered on the application of the Trade Marks Act, specifically whether the marks were precluded from registration under s 8(2)(b) regarding likelihood of confusion and s 8(7)(a) regarding passing off. The High Court, presided over by Kwek Mean Luck J, conducted a detailed review of the lower tribunal's findings concerning the distinctiveness and potential for deception associated with the marks in Classes 5 and 35.
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 in favor of the Appellant on that specific point. However, the Court dismissed the appeal regarding the ground under s 8(2)(b), maintaining the finding that the marks could not proceed to registration. Consequently, the Court ordered that Trade Mark Application Nos. 40201816175S-02 and 40201816175S-01 shall not proceed to registration. This judgment reinforces the rigorous standards applied to trade mark opposition proceedings in Singapore, particularly the necessity for applicants to satisfy all statutory grounds for registration to overcome opposition successfully.
Timeline of Events
- 16 August 2018: 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 filed by The Sunrider Corporation.
- 17 March 2025: The court reserved its judgment following the conclusion of the appeal proceedings.
- 26 March 2025: The High Court issued its judgment in [2025] SGHC 51, addressing the appeal against the Principal Assistant Registrar's decision.
- 26 March 2025: The final version of the judgment was released, confirming the court's stance on the opposition to the trade mark applications.
What Were the Facts of This Case?
The dispute centers on trade mark applications filed by Sunrise Plus (Pte) Ltd (the Appellant) for a range of goods and services across Classes 5, 29, 30, and 35. These applications included various nutritional supplements, food products, and retail/wholesale services, which triggered an opposition from The Sunrider Corporation (the Respondent).
The Respondent, operating under the name Sunrider International, relied on its earlier registered trade mark (Reg No. T9300374C) for "Herbal drinks included in Class 5" to challenge the Appellant's applications. The core of the conflict lies in whether the Appellant's proposed marks are confusingly similar to the Respondent's established mark, particularly concerning the goods and services specified in the applications.
The Principal Assistant Registrar (PAR) of the Intellectual Property Office of Singapore initially ruled in favor of the Respondent, finding that the Appellant's applications in Class 5 and Class 35 infringed upon the Respondent's rights under sections 8(2)(b) and 8(7)(a) of the Trade Marks Act 1998. The PAR concluded that the similarity between the marks and the nature of the goods created a likelihood of confusion.
Although the PAR found no similarity regarding the Appellant's applications in Classes 29 and 30, the decision was complicated by the fact that the application for Class 35 was part of a multi-class filing. Because the law does not permit partial opposition for such applications, the entire application for that class was blocked from proceeding to registration.
The Appellant subsequently appealed the PAR's decision to the High Court, seeking to overturn the findings on the similarity of goods and services and the alleged likelihood of confusion. The High Court was tasked with determining whether the lower tribunal correctly applied the legal tests for trade mark opposition and passing off.
What Were the Key Legal Issues?
The appeal in Sunrise Plus Pte. Ltd. v The Sunrider Corporation [2025] SGHC 51 concerns the registrability of trade marks under the Trade Marks Act, specifically focusing on the similarity of goods and the likelihood of confusion.
- Similarity of Goods (s 8(2)(b)): Whether the Appellant’s goods (nutritional/dietary supplements) and the Respondent’s goods (herbal drinks) are similar, and whether retail services in Class 35 are similar to goods in Class 5.
- Ordinary and Natural Meaning: Whether the court should adopt a narrow or broad interpretation of "nutritional and dietary supplements" and "herbal drinks" when assessing notional use.
- Likelihood of Confusion: Whether, given the visual and conceptual similarities of the marks, there exists a likelihood of confusion among consumers, considering the degree of attention typically exercised by purchasers of health-related products.
How Did the Court Analyse the Issues?
The High Court, presided over by Kwek Mean Luck J, affirmed the decision to refuse registration, primarily relying on the framework established in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911. The court rejected the Appellant’s attempt to narrow the definition of "nutritional and dietary supplements" to only include vitamins and minerals, noting that dictionary definitions provide a broader scope that encompasses herbal products.
Regarding the similarity of goods, the court held that the ordinary and natural meaning of the terms creates an overlap. The court emphasized that "once the applicant has registered his trade mark, he acquires the exclusive right to use the mark... for the whole spectrum of goods and services within the specification." Consequently, the court found that herbal drinks and nutritional supplements serve similar health-related purposes.
The court further addressed the similarity between goods in Class 5 and retail services in Class 35. Relying on the principle from Guccitech [2018] SGIPOS 18 and Daidoh Limited, the court held that goods can be similar to retail services where the mark is registered for the retail of those specific goods. The court rejected the Appellant’s argument that this principle requires the retail store to share the same brand as the goods.
On the issue of confusion, the court upheld the Principal Assistant Registrar’s (PAR) finding that the marks were visually and conceptually similar to a large extent. The court noted that even if consumers exercise a higher degree of scrutiny when purchasing health products, the high degree of similarity between the marks and the overlapping nature of the goods were sufficient to create a likelihood of confusion.
The court dismissed the Appellant’s argument that the word "Sunrise" lacked distinctiveness, noting that the overall impression of the marks, including the Sun in Splendour device, led to a finding of similarity. The court concluded that the Appellant failed to demonstrate that the PAR’s assessment of the consumer segment was erroneous, ultimately affirming that the marks should not proceed to 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 a passing off claim. 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 reach an agreement on costs, they must submit written submissions not exceeding seven pages within one week of the judgment.
Why Does This Case Matter?
This case serves as a critical reminder of the evidentiary burden required to establish goodwill in a passing off action under s 8(7)(a) of the Trade Marks Act. The Court clarified that self-compiled sales data without supporting documentation (such as invoices or purchase orders) is insufficient to prove the existence of goodwill, particularly when the evidence provided post-dates the relevant date of the alleged conduct.
The decision reinforces the doctrinal lineage established in Novelty Pte Ltd v Amanresorts Ltd and Future Enterprises Pte Ltd v McDonald’s Corp, emphasizing 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) does not automatically satisfy the 'misrepresentation' requirement for passing off, as the former concerns origin confusion while the latter is strictly tied to the existence of established goodwill.
For practitioners, this case underscores the necessity of robust, contemporaneous evidence when asserting unregistered trade mark rights. In litigation, counsel must ensure that evidence of sales and promotional expenditure is not only specific to the mark in question but also strictly aligned with the relevant date of the alleged infringement. Transactionally, this highlights the risks of relying on unregistered marks without verifiable proof of market reputation.
Practice Pointers
- Adopt a broad, natural interpretation of goods: When defining the scope of goods for trade mark specifications, courts will rely on the 'ordinary and natural meaning' of terms. Avoid overly narrow, technical definitions that do not align with dictionary or industry-standard usage, as these are unlikely to be accepted by the court.
- Use dictionary definitions as a baseline: While dictionary definitions are not exhaustive, they serve as a primary tool for the court to determine the 'ordinary and natural meaning' of goods. Ensure your client's proposed specifications are supported by standard definitions to avoid being forced into a broader classification than intended.
- Anticipate the 'Staywell' scope: Remember that a registered mark covers the 'whole spectrum' of goods within its specification, not just those currently sold. Litigation strategy must account for the fact that the court will consider the entire potential range of goods under a class, regardless of the proprietor's current product line.
- Evidence of actual product claims: If you are arguing that your client's goods do not fall within a certain category (e.g., 'nutritional supplements'), be prepared for the court to examine your client's own historical marketing materials. Claims made in past advertisements (e.g., 'delivers a wealth of vitamins') can be used to defeat your narrow interpretation.
- Address the 'British Sugar' factors holistically: When arguing similarity of goods, do not focus solely on one factor (like the specific ingredients). The court will look at the nature, purpose, and users of the goods. Even if products are not direct substitutes, they may be considered similar if they serve overlapping health-related functions.
- Distinguish between 'medical' and 'nutritional' properties: The court is unlikely to accept a rigid distinction between 'supplementing nutrition' and 'offering medical benefits' unless there is clear evidence that the goods are mutually exclusive in the eyes of the consumer.
Subsequent Treatment and Status
As this judgment was delivered on 26 March 2025, it is currently in its nascent stage and has not yet been substantively cited or applied in subsequent Singapore High Court or Court of Appeal decisions. The case serves as a recent reinforcement of the principles established in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 regarding the interpretation of trade mark specifications.
Practitioners should monitor future developments to see how this decision influences the interpretation of 'Class 5' and 'Class 35' specifications, particularly in the health and wellness sector, where the boundaries between dietary supplements and herbal products remain a frequent point of contention in trade mark opposition proceedings.
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
- The Polo/Lauren Co LP v Shop In Department Store Pte Ltd [2006] 4 SLR(R) 629 — Principles on the likelihood of confusion in trade mark infringement.
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 — Test for determining similarity of marks and goods/services.
- Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR 941 — Application of s 8(2)(b) regarding visual, aural, and conceptual similarity.
- Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR(R) 216 — Framework for assessing the reputation of a mark under s 8(7)(a).
- Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2013] 1 SLR 531 — Guidance on the distinctiveness and scope of protection for well-known marks.
- Ozone Community Corp v Advance Magazine Publishers Inc [2021] 3 SLR 319 — Clarification on the threshold for establishing dilution under the Trade Marks Act.