Case Details
- Citation: [2022] SGHC(A) 4
- Case Title: TMRG Pte Ltd & Anor v Caerus Holding Pte Ltd & Anor
- Court: Appellate Division of the High Court of the Republic of Singapore
- Date of Decision: 18 February 2022
- Date of Hearing: 4 February 2022
- Judges: Belinda Ang Saw Ean JAD, Woo Bih Li JAD, See Kee Oon J
- Appellants/Plaintiffs: (1) TMRG Pte Ltd (2) Luke’s Tavern Holdings Pte Ltd
- Respondents/Defendants: (1) Caerus Holding Pte Ltd (2) Lukes Seafood LLC
- Originating Suit: Suit No 723 of 2020
- Lower Court Decision: TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163
- Appeal Number: Civil Appeal No 80 of 2021
- Legal Areas: Intellectual Property; Trade Marks; Passing Off; Trade Mark Infringement; Trade Mark Invalidity
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) (including ss 28(1)(a) and 28(3))
- Cases Cited: [2021] SGHC 163; Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825; Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911
- Judgment Length: 12 pages, 2,634 words
Summary
This appeal concerned a branding dispute between two restaurant businesses that both used the name “Luke’s”. The appellants, TMRG Pte Ltd and Luke’s Tavern Holdings Pte Ltd, operated “Luke’s Oyster Bar & Chop House” and claimed that the respondents, Caerus Holding Pte Ltd and Lukes Seafood LLC, infringed their trade marks and committed passing off by using “Luke’s” for their restaurant “Luke’s Lobster”. The respondents also sought declarations that their own registered trade marks were valid, and the appellants sought invalidity declarations against those registrations.
The Appellate Division of the High Court dismissed the appeal. It upheld the trial judge’s findings that there was no trade mark infringement and no passing off. Central to the court’s reasoning was that the appellants’ registered trade mark was not “Luke’s” simpliciter; it consisted of a composite string of words, and the appellants’ evidence showed inconsistent use of the registered mark and reliance on an unregistered logo to bolster their infringement case. The court also emphasised that commonly used personal names are generally not particularly distinctive, and that any acquired distinctiveness must ultimately be assessed by reference to the impression of the mark as a whole.
What Were the Facts of This Case?
The dispute arose from competing restaurant brands in Singapore. The appellants’ business was associated with “Luke’s Oyster Bar & Chop House”, while the respondents operated “Luke’s Lobster”. Both parties used “Luke’s” as a prominent element in their branding, and the overlap in the shared word drove the litigation. The appellants alleged that the respondents’ use of “Luke’s” infringed their registered trade mark and amounted to passing off.
At first instance, the trial judge dismissed the appellants’ claims. The trial judge’s written reasons (reported at [2021] SGHC 163) addressed both trade mark infringement and passing off, and also considered the respondents’ defences under the Trade Marks Act. The trial judge found that the appellants failed to establish the necessary elements of infringement and passing off, and therefore did not grant an injunction. The claim for invalidity of the respondents’ registered trade marks also failed.
On appeal, the appellants largely repeated their arguments. Their primary focus was on the distinctiveness of “Luke’s” as a brand. They contended that, through use over nearly a decade, “Luke’s” had acquired distinctiveness (often referred to in trade mark jurisprudence as “acquired distinctiveness” or “secondary meaning”), such that consumers would associate “Luke’s” with the appellants’ business. They also argued that the respondents’ marks were sufficiently similar to cause confusion.
The appellate court, however, scrutinised the evidential basis for these claims. It noted that the appellants’ registered trade mark did not consist solely of “Luke’s”. Instead, the registered mark comprised nine words: “Luke’s Oyster Bar Chop House Travis Masiero Restaurant Group”. The appellants also used an unregistered seven-word logo that omitted “Restaurant Group”. On the appellants’ own evidence, the unregistered logo was what was “most commonly in use”, and the appellants’ restaurants were known to only a “very, very narrow audience” rather than the general population. The appellate court treated these points as undermining the appellants’ attempt to frame the dispute as being about “Luke’s” simpliciter.
What Were the Key Legal Issues?
The first key issue was whether the respondents’ use of “Luke’s” infringed the appellants’ registered trade mark. This required the court to compare the marks “mark-for-mark without consideration of any external matter”, and to assess whether the appellants could show that the relevant mark was distinctive (including by acquired distinctiveness) and that the overall impression of the marks was sufficiently similar to support infringement.
The second key issue was whether the appellants established passing off. Passing off in Singapore requires proof of goodwill, misrepresentation leading to deception (or a likelihood of deception), and damage. The court therefore had to determine whether the appellants’ goodwill was associated with “Luke’s” (as a standalone name) or with the composite branding used in the market, and whether the respondents’ conduct amounted to a misrepresentation that could cause consumers to believe that the respondents’ business was connected with the appellants.
Finally, because the appellants sought declarations of invalidity against the respondents’ registered trade marks, the court also had to consider the validity of those registrations in light of the infringement and passing off findings. While the appellate decision primarily turned on the absence of infringement and passing off, the invalidity claim necessarily depended on whether the appellants had established the legal basis to challenge the respondents’ marks.
How Did the Court Analyse the Issues?
The appellate court began with the established approach to trade mark infringement. It reiterated that the comparison of marks is conducted “mark-for-mark without consideration of any external matter”. It relied on the settled authorities, including Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd and Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. Applying those principles, the court accepted the trial judge’s analysis that the appellants’ arguments on distinctiveness and similarity were not persuasive.
A major flaw identified by the court was that the appellants’ registered trade mark was not “Luke’s” alone. The appellants’ registration comprised nine words, and their evidence showed that they did not use the registered mark exclusively. Instead, they also used an unregistered logo omitting “Restaurant Group”. The court treated this as significant because acquired distinctiveness cannot be built on a different sign than the one actually registered, or on inconsistent branding that does not reflect the impression created by the registered mark in the market.
In addressing acquired distinctiveness, the court emphasised that even if distinctiveness is found in a dominant component of a mark, it “must ultimately be related back to the impression given by the mark as a whole”. This meant that the court could not simply isolate the word “Luke’s” and treat it as the entire basis for distinctiveness. The appellate court agreed with the trial judge that, when the appellants’ mark is read as a composite, the entire string of words forms the appellants’ brand and serves to differentiate the appellants from other establishments with similar names.
The court also addressed the general principle that commonly used personal names are not particularly distinctive. “Luke” was not an uncommon or distinctive personal or trading name. While the appellants had used their branding for almost ten years and generated substantial revenue (approximately S$63m up to trial), the court held that these factors did not, without more, establish acquired distinctiveness in the relevant sense. The court’s reasoning reflects a cautious approach: longevity and sales may support goodwill and recognition, but they do not automatically transform a non-distinctive element into a trade mark that is protectable in isolation.
On confusion, the appellate court considered the appellants’ survey evidence. It upheld the trial judge’s rejection of the survey evidence due to problems with methodology and reliability. Importantly, the appellants did not identify specific errors in the trial judge’s detailed reasoning on the survey. The appellate court therefore did not disturb the trial judge’s assessment.
The court also considered evidence of actual confusion, including emails and a Facebook post. It accepted that certain items were not inadmissible hearsay if tendered to show confusion on the face of the exhibits rather than to assert the truth of their contents. However, this did not change the outcome. The court agreed with the trial judge that the relevant test is confusion at the point of purchase, and the evidence showed at best initial interest confusion. The court further noted that the number of alleged confusion instances was small relative to the volume of communications received by the appellants during the relevant period.
Beyond evidential issues, the appellate court examined market realities. It accepted that while the parties provided similar services (restaurants), there were “obvious distinctions” in target customer base and menu concept. The appellants operated fine dining with upscale ambience and higher prices. The respondents sold fast food with a grab-and-go concept. Although both parties served lobster rolls, the appellants’ lobster-related dishes formed only a small portion of their total revenue (about 5%), and the pricing and menu presentation differed. The appellants’ own evidence therefore undermined the likelihood of confusion.
The court also considered the parties’ conduct in the trade mark registration process. It noted that the respondents applied to register their trade marks in April 2018, and when those applications were published in September and October 2018, they were unopposed. The court accepted the respondents’ submission that by September 2018, the appellants must have been aware of the respondents’ likely intent to launch in Singapore. Yet the appellants did not oppose within the two-month window. The court treated this omission as suggesting that “Luke’s” simpliciter was not as important or distinctive in the appellants’ branding as they claimed in litigation.
In addition, the appellate court referred to an amicable resolution of a trade mark revocation action in Hong Kong and a concession in the appellants’ solicitors’ letter of 15 May 2020 that the parties had different target customer bases. Although the letter was marked “without prejudice save as to costs”, the court held that privilege had been waived because the appellants had referred to and exhibited the respondents’ earlier solicitors’ letter in response. This allowed the respondents to rely on the concession as part of the overall assessment.
Turning to passing off, the appellate court found that the trial judge’s reasoning on passing off largely overlapped with the reasoning on trade mark infringement, particularly on distinctiveness and goodwill. Since “Luke’s” simpliciter was not distinctive, the appellants’ goodwill was not associated with the standalone name “Luke’s”. Instead, the goodwill was associated with the appellants’ composite branding. Without goodwill tied to the relevant sign, the passing off claim could not succeed. The court therefore affirmed the dismissal of passing off.
What Was the Outcome?
The Appellate Division dismissed the appeal and upheld the trial judge’s decision in full. As a result, the appellants’ claims for trade mark infringement and passing off were rejected, and their claim for declarations of invalidity against the respondents’ registered trade marks failed.
Practically, the decision meant that the respondents were not restrained by an injunction from continuing to use their registered trade marks. The court’s confirmation of the absence of infringement and passing off also reinforced that the appellants could not rely on “Luke’s” as a standalone protected identifier in the circumstances of this case.
Why Does This Case Matter?
This decision is significant for practitioners because it illustrates how courts approach acquired distinctiveness and similarity analysis in trade mark disputes involving common personal names. Even where a word is prominently used and has been used for years, the court will not necessarily treat it as protectable in isolation. The mark must be assessed as a whole, and acquired distinctiveness must be demonstrated in a way that aligns with the actual sign used and registered.
The case also provides useful guidance on evidential strategy. The appellate court’s critique of inconsistent use—where the registered mark is not used exclusively and where reliance is placed on unregistered logos or cutlery branding—highlights the risk of building infringement arguments on a different “variant” of the brand than the one that is registered. For litigants, this underscores the importance of aligning evidence of market recognition with the precise trade mark claimed.
Finally, the decision reinforces the practical nature of the confusion inquiry. Survey evidence will be scrutinised for methodology and reliability, and evidence of actual confusion must be assessed against the correct legal test (confusion at the point of purchase). The court’s attention to market segmentation, menu concept, and pricing demonstrates that “similarity” in a broad sense does not automatically translate into legal confusion in the relevant consumer context.
Legislation Referenced
Cases Cited
- Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911
- TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163
Source Documents
This article analyses [2022] SGHCA 4 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.