Case Details
- Citation: [2005] SGHC 175
- Court: High Court of the Republic of Singapore
- Date: 2005-09-23
- Judges: Lai Kew Chai J
- Plaintiff/Applicant: The Polo/Lauren Co, LP
- Defendant/Respondent: Shop In Department Store Pte Ltd
- Legal Areas: Trade Marks and Trade Names — Infringement
- Statutes Referenced: Trade Marks Act
- Cases Cited: [1991] SLR 133, [2005] SGHC 175
- Judgment Length: 11 pages, 7,265 words
Summary
In this case, the High Court of Singapore considered whether the defendant, Shop In Department Store Pte Ltd, had infringed the trade marks of the plaintiff, The Polo/Lauren Co, LP, by using the sign "POLO PACIFIC" on its goods. The court analyzed the key legal issues of whether the defendant's sign was similar to the plaintiff's registered trade marks, whether the goods were identical or similar, and whether there was a likelihood of confusion among the public. Ultimately, the court found that the defendant had infringed the plaintiff's trade marks and granted an injunction against the defendant.
What Were the Facts of This Case?
The plaintiff, The Polo/Lauren Co, LP, is the registered proprietor in Singapore of several trade marks related to the "POLO" and "RALPH LAUREN" brands, including "POLO" (word mark), "POLO BY RALPH LAUREN" (word mark), and "POLO RALPH LAUREN & polo player device" (composite mark). The defendant, Shop In Department Store Pte Ltd, is a Singapore company that operates stores selling clothing, bags, shoes, and other goods.
In January 2004, one of the defendant's directors, Ang Chin Pong, decided to import and sell goods bearing the sign "POLO PACIFIC" from a factory in China. The defendant sought advice from trademark agents and filed an application to register the "POLO PACIFIC" mark, but began selling the goods before the mark was registered.
The plaintiff, through its solicitors, subsequently filed a notice of opposition to the defendant's trademark application. The plaintiff also purchased several articles of clothing bearing the "POLO PACIFIC" sign from the defendant's stores in July and August 2004. Additionally, the court noted that the defendant had previously been found selling counterfeit samples of the plaintiff's goods in December 2002, and the parties had settled that matter with the defendant providing an undertaking not to infringe the plaintiff's trade marks in the future.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the defendant's "POLO PACIFIC" sign was similar to the plaintiff's registered trade marks, such that it infringed the plaintiff's rights under Section 27(2)(b) of the Trade Marks Act.
2. Whether the goods on which the defendant used the "POLO PACIFIC" sign were identical or similar to the goods covered by the plaintiff's registered trade marks.
3. Whether the similarity between the defendant's sign and the plaintiff's marks, and the similarity between the goods, resulted in a likelihood of confusion among the public.
How Did the Court Analyse the Issues?
The court first considered the applicable law under Section 27(2)(b) of the Trade Marks Act, which states that a person infringes a registered trade mark if they use a similar sign in the course of trade, and there is a likelihood of confusion among the public due to the similarity of the sign and the goods or services.
The court rejected the defendant's argument for a "global assessment" approach, which would have allowed consideration of factors beyond just the similarity of the mark and goods. Instead, the court held that the likelihood of confusion must be the direct result of the similarity between the registered mark and the disputed sign, and the similarity between the goods or services.
In analyzing the similarity of the marks, the court noted that the defendant's "POLO PACIFIC" sign incorporated the distinctive "POLO" element of the plaintiff's registered marks. The court found that the defendant's sign was visually and conceptually similar to the plaintiff's marks, and that the defendant's goods were identical or similar to those covered by the plaintiff's registrations.
The court rejected the defendant's argument that factors such as the defendant's store branding and disclaimers on its products should be considered in assessing likelihood of confusion. The court held that the test under Section 27(2)(b) is strict, and the court cannot take into account such extraneous factors.
What Was the Outcome?
The court ultimately found that the defendant had infringed the plaintiff's registered trade marks under Section 27(2)(b) of the Trade Marks Act. The court granted an injunction restraining the defendant from using the "POLO PACIFIC" sign or any other mark similar to the plaintiff's registered marks.
The court also held that the defendant had breached its previous undertaking not to infringe the plaintiff's trade marks. As a result, the court ordered the defendant to pay damages to the plaintiff for the breach of the undertaking.
Why Does This Case Matter?
This case provides important guidance on the test for trade mark infringement under Section 27(2)(b) of the Singapore Trade Marks Act. The court's rejection of the "global assessment" approach in favor of a strict, step-by-step analysis of the similarity of marks and goods, and the direct likelihood of confusion, helps to clarify the legal principles applicable in such cases.
The case also demonstrates the courts' willingness to enforce trade mark rights and grant injunctions against the use of confusingly similar marks, even where the defendant has attempted to differentiate its products through branding and disclaimers. This sends a strong message to businesses about the need to respect registered trade mark rights.
Furthermore, the court's finding that the defendant had breached its previous undertaking not to infringe the plaintiff's marks highlights the serious consequences that can arise from such breaches of contract. This may encourage greater compliance with trade mark-related undertakings in the future.
Legislation Referenced
- Trade Marks Act (Cap 322, 1999 Rev Ed)
Cases Cited
- [1991] SLR 133
- [2005] SGHC 175
- British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
- Saville Perfumery Ld v June Perfect Ld and F W Woolworth & Co Ld (1941) 58 RPC 147
- Wagamama Ltd v City Centre Restaurants Plc [1995] FSR 713
- Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199
- The European Limited v The Economist Newspaper Limited [1998] FSR 283
- Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117
- Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [2000] FSR 77
- Marca Mode CV v Adidas AG [2000] 2 CMLR 1061
- Arsenal Football Club Plc v Reed [2001] RPC 46
- McDonald's Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177
Source Documents
This article analyses [2005] SGHC 175 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.