Case Details
- Citation: [2021] SGHC 163
- Title: TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another
- Court: High Court of the Republic of Singapore (General Division)
- Decision Date: 13 July 2021
- Case Number: Suit No 723 of 2020
- Judge: Andre Maniam JC
- Judgment Reserved: Yes
- Plaintiffs/Applicants: TMRG Pte Ltd and another
- Defendants/Respondents: Caerus Holding Pte Ltd and another
- Counsel for Plaintiffs: Lim Jun Hao Alvin, Alvin Tan Jing Han (Ravindran Associates LLP)
- Counsel for Defendants: Melvin Pang, Ong Eu Jin (Amica Law LLC)
- Legal Areas: Intellectual Property — Trade marks and trade names; Infringement; Invalidity; Defences (own name, prior user); Passing off; Goodwill; Misrepresentation; Likelihood of damage
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Key Statutory Provisions (as pleaded/considered): s 27(2)(b); s 23; ss 8(2)(b) and/or 8(7)
- Trade Mark(s) of Plaintiffs (registered): Trade mark no T1314356Z (Class 43): “Café, providing food and drink, take away food services, preparation of meals, restaurants, catering services, bar services.”
- Trade Mark(s) of Plaintiffs (unregistered): “Luke’s Oyster Bar & Chop House logo” (words include “Oyster Bar”, “Chop House” and “Travis Masiero Restaurant Group” / “Travis Masiero”)
- Trade Mark(s) of Defendants (registered): Trade mark no 40201812193V (Class 43): “Restaurants featuring lobster”; Trade mark no 40201809854R (Class 43): “Restaurant services.”
- Defendants’ Mark(s) (collectively): “Luke’s Lobster” word mark and “Luke’s Lobster” logo
- Defendants’ Registration Date: On or about 3 April 2018
- Judgment Length: 48 pages; 21,143 words
- Cases Cited (as provided): [2011] SGHC 176; [2013] SGIPOS 2; [2014] SGIPOS 11; [2020] SGIPOS 4; [2020] SGIPOS 8; [2021] SGHC 163
Summary
This High Court decision concerns a dispute between two restaurant businesses that both trade on the name “Luke’s”, albeit in different formats: the plaintiffs operate “Luke’s Oyster Bar & Chop House”, while the defendants operate “Luke’s Lobster” in Singapore. The plaintiffs alleged trade mark infringement and passing off, and also sought a declaration that the defendants’ “Luke’s Lobster” trade marks were invalid for being registered in breach of the Trade Marks Act provisions relating to earlier rights and passing off.
The court approached the trade mark infringement claim using the structured, step-by-step framework under s 27(2) of the Trade Marks Act. It analysed (i) whether the defendants’ signs were similar to the plaintiffs’ registered mark, (ii) whether the services were identical or similar, and (iii) whether there was a likelihood of confusion. The court then turned to passing off, focusing on goodwill, misrepresentation, and likelihood of damage, before finally addressing invalidity.
Although the full judgment text is not reproduced in the extract provided, the decision is framed around the court’s careful comparison of marks and the commercial context of restaurant branding—particularly how consumers perceive “Luke’s” as a name component when it is used alongside other distinctive elements such as “Oyster Bar & Chop House” and “Lobster”. The case is therefore a useful authority on how Singapore courts treat partial overlap in trade marks for food and hospitality services, and on the evidential requirements for passing off in the restaurant sector.
What Were the Facts of This Case?
The plaintiffs are Singapore companies operating fine dining restaurants under the name “Luke’s Oyster Bar & Chop House”. The first plaintiff opened its restaurant at Gemmill Lane in May 2011. The second plaintiff operated a restaurant by the same name at The Heeren from 2014 until it closed in December 2020 due to the landlord ceasing operations, with an intention to reopen at a new location. The plaintiffs’ branding includes both a registered trade mark and an unregistered logo. The registered mark is in Class 43, covering restaurant and related services.
The plaintiffs’ trade mark registration is for “Luke’s Oyster Bar & Chop House” services, and the plaintiffs also use an unregistered logo that contains additional words beyond “Luke’s”, including “Oyster Bar”, “Chop House” and “Travis Masiero Restaurant Group” / “Travis Masiero”. The name “Luke’s” is said to be distinctive to the plaintiffs’ business. The director and shareholder of the plaintiffs, Travis Masiero, named the restaurants after his son, Lucas. The plaintiffs therefore framed “Luke’s” as the key identifying element that signals origin and association with their restaurant group.
The defendants, by contrast, are associated with the US restaurant brand “Luke’s Lobster”. The second defendant is a United States company that opened the first “Luke’s Lobster” shack in New York City on 1 October 2009. Through franchising and related expansion, “Luke’s Lobster” shacks were opened in multiple jurisdictions, including Japan and Taiwan, before the brand entered Singapore. In Singapore, the first “Luke’s Lobster” shack opened on 23 September 2020 at Isetan, Shaw House, through the first defendant as exclusive Singapore franchisee. A second shack opened in January 2021 at Jewel, Changi Airport.
“Luke’s Lobster” is a small, casual, self-service concept with a “grab-and-go” model and limited seating. Its products are lobster-focused, with the lobster roll as its best-selling item. The defendants’ trade marks in Singapore were registered in Class 43 on or about 3 April 2018. The brand name “Luke’s” is linked to a different Lucas: the co-founder and CEO is Lucas Alexander Holden, known as “Luke Holden”. The defendants therefore presented “Luke’s” as part of their own brand identity rather than as a reference to the plaintiffs’ restaurant group.
What Were the Key Legal Issues?
The principal issues were threefold. First, the court had to determine whether the defendants infringed the plaintiffs’ registered trade mark under s 27(2)(b) of the Trade Marks Act. This required the court to assess similarity of marks, similarity of services, and whether there was a likelihood of confusion among the relevant public.
Second, the court had to address the plaintiffs’ passing off claim. Passing off in Singapore requires proof of goodwill, misrepresentation, and likely damage. The plaintiffs’ case depended on establishing that “Luke’s” in their restaurant branding had acquired goodwill and that the defendants’ use of “Luke’s Lobster” would mislead consumers into believing there was a connection or association between the businesses, thereby causing likely damage to the plaintiffs.
Third, the plaintiffs sought invalidity of the defendants’ trade marks under s 23 of the Trade Marks Act, alleging that the defendants’ registrations were made in breach of ss 8(2)(b) and/or 8(7). The invalidity argument was tied to the passing off theory: if the plaintiffs could show that passing off would occur in relation to “Lukes” (as pleaded), then the defendants’ registration could be attacked on statutory grounds.
How Did the Court Analyse the Issues?
The court began with the trade mark infringement claim and set out the analytical framework under s 27(2). It emphasised the step-by-step approach: the plaintiffs must show (1) similarity between the alleged offending sign and the registered mark, (2) similarity between the goods or services, and (3) likelihood of confusion arising from the first two similarities. The court relied on established Singapore authority for this structured method, including the “Polo/Lauren” approach and the Court of Appeal’s guidance in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide.
In comparing the marks, the court applied the established criteria of visual, phonetic (aural), and conceptual similarity. It also treated distinctiveness as a factor integrated into these comparisons. Distinctiveness matters because a common element may be more or less significant depending on whether it is memorable and distinctive in the relevant context. The court’s analysis therefore required more than identifying that both parties used the word “Luke’s”; it required an assessment of how “Luke’s” functions within each mark as a whole, and whether consumers would perceive the marks as indicating the same origin.
The plaintiffs argued that “Luke’s” was the dominant and distinctive component of their trade mark. They pointed to the layout and relative prominence of “Luke’s” in their mark, where “Luke’s” appears at the top in a larger font than “Oyster Bar” and “Chop House”, and substantially larger than “Travis Masiero Restaurant Group” / “Travis Masiero”. They also argued that the defendants’ marks were confusingly similar because the defendants’ “Luke’s Lobster” marks also contain the word “Luke’s”.
However, the court did not treat the overlap as determinative. It recognised that “Luke’s” is not the only word in the plaintiffs’ mark and that the defendants’ marks incorporate “Lobster” (either as a word or via a lobster device). The court’s approach, consistent with Singapore trade mark jurisprudence, was to compare the marks as they would be perceived in the marketplace, not to isolate one component without regard to the overall impression. This is particularly important in restaurant branding, where consumers may pay attention to the type of food and the overall sign used at the point of sale.
On services, the court would have considered whether restaurant and related services are sufficiently similar across the parties’ concepts. Both parties operate restaurants and provide food and drink services in Class 43. Even if the plaintiffs’ concept is fine dining and the defendants’ concept is casual and self-service, the court’s infringement analysis would still require an evaluation of similarity in the relevant sense used in trade mark law. The court’s step-by-step framework means that even if services are similar, infringement still depends on likelihood of confusion.
Turning to passing off, the court’s analysis would have focused on whether the plaintiffs had goodwill in “Luke’s” as a name and whether the defendants’ use of “Luke’s Lobster” constituted a misrepresentation. In restaurant disputes, misrepresentation often turns on whether consumers are likely to think the businesses are connected, franchised, or otherwise associated. The court’s extract includes the plaintiffs’ central question: would a customer purchase lobster rolls thinking they came from “Luke’s Oyster Bar & Chop House” or that the two establishments were associated? That question captures the essence of misrepresentation and likelihood of damage in passing off.
Finally, for invalidity, the court had to consider whether the defendants’ trade marks were registered in breach of the relevant statutory provisions. The plaintiffs’ invalidity theory was anchored in the passing off argument: if passing off would be established, then the defendants’ registration could be vulnerable under the TMA provisions that protect earlier rights and prevent registration where it would undermine actionable goodwill. The court therefore treated invalidity as closely linked to the passing off merits, while still applying the statutory tests for invalidity.
What Was the Outcome?
Based on the structure of the judgment and the issues identified, the court’s final orders would have addressed each pleaded head of claim: trade mark infringement, passing off, and invalidity. In practice, the outcome in such cases typically turns on whether the plaintiffs can satisfy the likelihood of confusion threshold for infringement and the goodwill/misrepresentation/damage elements for passing off.
Given the court’s emphasis on mark comparison beyond the shared “Luke’s” element, and its recognition that both parties use additional distinctive words (“Oyster Bar & Chop House” versus “Lobster”), the practical effect of the decision is that the plaintiffs’ ability to prevent the defendants from using “Luke’s” in the context of “Luke’s Lobster” would depend on whether the court found confusion or misrepresentation. The court’s orders therefore likely either granted or refused injunctive relief and declarations, and would have determined whether the defendants’ trade marks remained valid and enforceable in Singapore.
Why Does This Case Matter?
This decision is significant for practitioners because it illustrates how Singapore courts handle disputes where the parties share a common personal-name element but differ in the overall branding. The case reinforces that trade mark infringement analysis is not a mechanical “common word” exercise. Even where the shared element is visually and aurally prominent, the court will still compare the marks as a whole and consider how consumers are likely to perceive origin in the context of the services offered.
For passing off, the case is a reminder that goodwill and misrepresentation must be proven with a consumer-focused inquiry. Restaurant branding disputes often involve overlapping food themes and name components. The court’s framing—whether consumers would believe there is an association—highlights the evidential importance of market perception, branding presentation, and the likelihood of confusion at the point of sale.
Finally, the invalidity component shows how trade mark registration can be challenged through earlier rights theories. Where invalidity is pleaded on the basis of passing off, the success of the invalidity claim will often track the passing off analysis. Lawyers advising brand owners should therefore treat infringement, passing off, and invalidity as interlocking but distinct inquiries, each requiring careful evidence and structured legal argument.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) — s 27(2)(b)
- Trade Marks Act (Cap 332, 2005 Rev Ed) — s 23
- Trade Marks Act (Cap 332, 2005 Rev Ed) — s 8(2)(b)
- Trade Marks Act (Cap 332, 2005 Rev Ed) — s 8(7)
Cases Cited
- [2011] SGHC 176
- [2013] SGIPOS 2
- [2014] SGIPOS 11
- [2020] SGIPOS 4
- [2020] SGIPOS 8
- [2021] SGHC 163
- The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911
- Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825
- Taylor, Fladgate & Yeatman Limited v Taylors Wines Pty Ltd [2014] SGIPOS 11
- Kenzo v Tsujimoto Kenzo [2013] SGIPOS 2
- Valentino Globe BV v Pacific Rim Industries Inc [2009] 4 SLR(R) 577
Source Documents
This article analyses [2021] SGHC 163 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.