Case Details
- Citation: [2006] SGCA 14
- Case Number: CA 67/2005
- Date of Decision: 06 April 2006
- Court: Court of Appeal of the Republic of Singapore
- Coram: Chao Hick Tin JA; Tan Lee Meng J; Yong Pung How CJ
- Judgment Author: Chao Hick Tin JA (delivering the judgment of the court)
- Plaintiff/Applicant: The Polo/Lauren Co, LP
- Defendant/Respondent: Shop-In Department Store Pte Ltd
- Legal Area: Trade Marks and Trade Names — Infringement
- Statute(s) Referenced: Trade Marks Act (Cap 332, 1999 Rev Ed)
- Key Provision: Section 27(2)(b) (infringement where sign is similar and used for identical/similar goods with likelihood of confusion)
- Issue Focus: Whether “POLO PACIFIC” was similar to the registered word mark “POLO”, whether goods were similar, and whether there was a likelihood of confusion
- Trial Court: Lai Kew Chai J (action dismissed)
- Counsel for Appellant: M Ravindran, Sukumar Karuppiah and Adrian Kwong (Ravindran Associates)
- Counsel for Respondent: Anthony Lee Hwee Khiam and Alvin Chen Yi Jing (Bih Li & Lee)
- Judgment Length: 11 pages, 6,893 words
- Notable Procedural/Related Matters: Opposition proceedings pending against the respondent’s application to register “POLO PACIFIC”
- Related Undertaking Alleged: Appellant also alleged breach of an undertaking given by respondent on 25 April 2003 not to infringe in future
Summary
The Court of Appeal in The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd ([2006] SGCA 14) considered the proper test for trade mark infringement under s 27(2)(b) of Singapore’s Trade Marks Act (Cap 332, 1999 Rev Ed). The appellant, the proprietor of several registered marks including the word mark “POLO”, alleged that the respondent infringed its mark by using the sign “POLO PACIFIC” on clothing, handbags and shoes sold in Singapore stores.
The Court of Appeal endorsed a structured, step-by-step approach to s 27(2)(b) derived from British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281. Under this approach, infringement requires three cumulative conditions: (1) similarity between the sign and the registered mark; (2) use of both in relation to identical or similar goods or services; and (3) a likelihood of confusion on the part of the public arising because of the first two conditions. The Court held that, on the facts, the respondent’s sign was not sufficiently similar to “POLO” and there was no likelihood of confusion, so the action failed.
What Were the Facts of This Case?
The appellant, The Polo/Lauren Co, LP, is an entity incorporated under the laws of the State of New York, USA. It owns multiple trade marks registered in Singapore under class 25 of the International Classification of Goods and Services (ICGS). Among these registrations is the word mark “POLO”. The appellant’s business model is positioned at the higher end of the market: its goods are sold through upmarket boutiques in prime shopping areas and are correspondingly priced at a premium.
The respondent, Shop-In Department Store Pte Ltd, is a private limited company incorporated in Singapore. Unlike the appellant, the respondent operates suburban stores and sells a broader range of consumer goods including clothing, bags, handbags, shoes, watches and household items at prices intended to be affordable to the mass market. This difference in retail positioning formed part of the factual context in which the alleged infringement occurred.
For the purposes of the appeal, only the appellant’s registered word mark “POLO” was in issue. In early 2004, the respondent imported goods manufactured in China bearing a composite sign that included the word “POLO” together with additional elements (including the words “PACIFIC” and a distinctive font/typeface and design). The sign was not identical to “POLO”; rather, it presented “POLO” as the first word of a longer phrase.
On 7 May 2004, after consulting solicitors, the respondent applied to the Registry of Trade Marks to register the sign “POLO PACIFIC” in classes 18 and 25 of the ICGS. The application was accepted for publication on 2 December 2004. The appellant then raised opposition to the registration, and that opposition proceeding was pending at the time the infringement action was commenced. Meanwhile, the respondent began selling goods bearing “POLO PACIFIC”. The appellant investigated by sending agents to obtain evidence of sales and, on 6 September 2004, commenced the infringement action.
What Were the Key Legal Issues?
The central legal issue was whether the respondent’s use of “POLO PACIFIC” infringed the appellant’s registered word mark “POLO” under s 27(2)(b) of the Trade Marks Act. Specifically, the Court had to determine whether the respondent’s sign was “similar” to the registered mark and whether the sign was used in relation to goods that were identical with or similar to those for which the appellant’s mark was registered.
Even if similarity and goods overlap were established, infringement under s 27(2)(b) further requires that, “on account of” those similarities, there exists a likelihood of confusion on the part of the public. Accordingly, the Court also had to assess whether consumers were likely to be confused as to the origin or trade source of the goods bearing “POLO PACIFIC”.
A secondary but important issue concerned methodology: the trial judge had applied the three-step approach from British Sugar, rejecting the respondent’s argument that the Court should instead adopt a “global assessment” test associated with European jurisprudence (including Sabel BV v Puma AG and Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc). The Court of Appeal had to decide which analytical framework best reflected the wording and structure of s 27(2)(b).
How Did the Court Analyse the Issues?
The Court of Appeal began by setting out the statutory language of s 27(2). It noted that para (a) was not in issue because the respondent’s sign was not alleged to be identical to the appellant’s registered mark. The case therefore turned on s 27(2)(b), which is expressly framed in cumulative terms: infringement occurs only if (i) the sign is similar to the trade mark, (ii) the sign is used in relation to identical or similar goods or services, and (iii) because of those factors, there exists a likelihood of confusion on the part of the public.
On the methodological question, the Court endorsed the step-by-step approach in British Sugar. The Court reasoned that the wording of s 27(2)(b) is clear and conceptually aligned with a structured inquiry. It held that there will be infringement only if three conditions are present. First, the sign must be similar to the registered mark. Second, both must be used on identical or similar goods/services. Third, on account of the presence of the first two conditions, there must be a likelihood of confusion. The Court emphasised that s 27(2)(b) does not make it infringement if confusion is caused by some other factor unrelated to the similarity analysis.
The Court further explained that similarity between a mark and a sign is a matter of degree and does not automatically entail confusion. Likewise, even if the mark and sign are similar and used on similar goods, confusion is not presumed. The Court therefore rejected the idea that a global assessment test would collapse the statutory prerequisites into the final question of confusion. While it acknowledged overlap between similarity and confusion, it insisted that they are distinct inquiries: similarity is a threshold question, and confusion is a factual determination that may require looking beyond the mark and sign and beyond the goods themselves.
In support of this approach, the Court referred to Singapore authorities on “likely to cause confusion” in the context of opposition proceedings under the earlier Trade Marks Act (s 15), including Kellogg Co v Pacific Food Products Sdn Bhd [1999] 2 SLR 651 and McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177. Although those cases concerned opposition rather than infringement, the Court saw no reason to treat the concept of likely confusion differently under the present s 27(2)(b). It also noted that, in practice, the end result might often be the same whether one applies the step-by-step or global assessment framework, but the step-by-step method better respects the statutory structure.
Having endorsed the correct test, the Court turned to the first condition: similarity between the appellant’s mark “POLO” and the respondent’s sign “POLO PACIFIC”. The trial judge had found no visual, aural or conceptual similarity, notwithstanding that the respondent used “POLO” as the first word of its composite sign. The trial judge’s reasoning reflected a three-aspect understanding of similarity: visual, phonetic/aural, and conceptual. Where there is a common denominator (here, the word “POLO”), the analysis must still consider whether the differences are sufficient to distinguish the sign and prevent it from capturing the distinctiveness of the registered mark.
The trial judge had relied on the principle that inclusion of the registered mark within a challenged sign does not necessarily mean confusion will follow. In Samsonite Corp v Montres Rolex SA [1995] AIPR 244, the court had held that the fact that the registered mark is wholly included in a challenged sign does not automatically establish confusion. Applying that reasoning, the trial judge in the present case held that the addition of “PACIFIC”, together with differences in font, typeface and design, was sufficient to prevent the respondent’s sign from capturing the distinctiveness of “POLO”.
Crucially, the trial judge assessed the distinctiveness of the appellant’s word mark. The Court of Appeal noted that the trial judge accepted that “POLO” was somewhat distinctive but not strikingly so. That assessment affected the weight given to the differences introduced by “PACIFIC” and the overall composite presentation. In other words, where the registered mark is not highly distinctive, a composite sign that adds meaningful additional matter may be able to distinguish itself sufficiently.
Although the extract provided is truncated after noting that the trial judge had observed something about the appellant’s advertising practices, the overall thrust of the Court of Appeal’s analysis is clear: similarity is not determined solely by the presence of the word “POLO” at the beginning of the respondent’s sign. The Court considered how the sign would be perceived as a whole, including the additional word “PACIFIC” and the visual presentation. If the sign is not sufficiently similar, the inquiry need not proceed to the likelihood of confusion stage, because the statutory conditions are cumulative.
Accordingly, the Court of Appeal agreed with the trial judge that the first condition—similarity—was not satisfied. It also agreed that there was no likelihood of confusion. The Court’s reasoning on confusion was consistent with its earlier insistence that confusion must be “on account of” the similarity and goods overlap. Where the sign is not similar enough to capture the registered mark’s distinctiveness, and where the overall presentation does not create a real risk of misattribution, the infringement threshold is not met.
What Was the Outcome?
The Court of Appeal dismissed the appellant’s appeal. It affirmed the trial judge’s conclusion that the respondent did not infringe the appellant’s registered word mark “POLO” under s 27(2)(b) of the Trade Marks Act. The practical effect of the decision was that the respondent was not restrained from selling goods bearing “POLO PACIFIC” on the basis of infringement of the “POLO” word mark.
In addition, the Court’s endorsement of the British Sugar step-by-step approach provides guidance for future infringement cases, particularly where the challenged sign is composite and contains the registered mark as part of a longer phrase. The decision therefore both resolved the dispute between the parties and clarified the analytical framework to be applied under s 27(2)(b).
Why Does This Case Matter?
The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd is significant for two reasons. First, it provides authoritative guidance on the correct test for infringement under s 27(2)(b) in Singapore. The Court of Appeal’s insistence on a structured, cumulative analysis—similarity, goods similarity, and likelihood of confusion “on account of” those factors—helps practitioners and courts avoid conflating threshold similarity with the ultimate confusion inquiry.
Second, the case illustrates how courts evaluate similarity when the registered mark appears within a composite sign. The presence of a common element (here, “POLO”) does not automatically establish similarity sufficient for infringement. The Court’s focus on distinctiveness and on whether the additional matter in the sign (such as “PACIFIC” and the overall design) is enough to distinguish the sign is particularly relevant for brand owners and retailers alike.
For trade mark owners, the decision underscores the importance of demonstrating not only that a sign contains a registered word, but also that the overall sign is sufficiently similar to capture the registered mark’s distinctiveness and that confusion is likely in the relevant market context. For defendants, the case supports arguments that meaningful differences in composite branding can defeat infringement, even where the registered mark is embedded at the start of the sign.
Legislation Referenced
- Trade Marks Act (Cap 332, 1999 Rev Ed), s 27(2)(b)
Cases Cited
- British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
- Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199
- Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117
- Kellogg Co v Pacific Food Products Sdn Bhd [1999] 2 SLR 651
- McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR 177
- Samsonite Corp v Montres Rolex SA [1995] AIPR 244
- [1991] SLR 133
- [2006] SGCA 14
Source Documents
This article analyses [2006] SGCA 14 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.