Appellate Division of Singapore High Court discusses factors affecting distinctiveness of trade marks

17 March 2022

TMRG Pte Ltd & Anor v Caerus Holding Pte Ltd & Anor [2022] SGHC(A) 45

In the case of TMRG Pte Ltd & Anor v Caerus Holding Pte Ltd & Anor, the Appellate Division of the Singapore High Court (“Appellate Division”) considered whether the name “Luke’s” had acquired distinctiveness through use for the purposes of alleging trade mark infringement and passing off.

Background 

The plaintiffs, TMRG Pte Ltd and Luke’s Tavern Holdings Pte Ltd (“Plaintiffs”), are Singapore companies that operate restaurants under the name “Luke’s Oyster Bar & Chop House”. The defendants, Caerus Holdings Pte Ltd and Lukes Seafood LLC (“Defendants”), operate the “Luke’s Lobster” chain of restaurants in Singapore.

Before the General Division of the High Court (“General Division”), the Plaintiffs sued the Defendants for trade mark infringement, passing off and trade mark invalidation. The Plaintiffs submitted that “Luke’s” was the dominant and distinctive component of its registered trade mark, and was distinctive of its restaurant business.

In TMRG Pte Ltd & Anor v Caerus Holding Pte Ltd & Anor [2021] SGHC 163, the General Division held that the word “Luke’s” was not the dominant and distinctive component of the Plaintiffs’ registered trade mark, which contained nine words: “Luke’s / Oyster Bar / Chop House / Travis Masiero Restaurant Group”. The court further held that a commonly used personal name such as “Luke” was of low distinctiveness, and remarked that there were many business entities and products which incorporated the name “Luke”. Accordingly, the Plaintiffs’ trade mark was viewed as a whole to be dissimilar to the Defendants’ registered trade marks complained of.

As for the Plaintiffs’ passing off claim, the General Division held that the Plaintiffs’ goodwill was not associated with the word “Luke’s”, but “Luke’s Oyster Bar & Chop House” as part of the Travis Masiero Restaurant Group, as a personal name like “Luke” was of low distinctiveness and the average consumer would be sensitive to additional words or features that accompanied “Luke’s”. The court concluded that there was no passing off, as the Plaintiffs’ and Defendants’ restaurants were significantly different, and the marks employed by the Plaintiffs and Defendants were not similar.

The Plaintiffs then appealed to the Appellate Division.

Appellate Division decision

The Plaintiffs were the Appellants and the Defendants were the Respondents in the appeal before the Appellate Division.

The Appellate Division held that “Luke’s” had not been used consistently by the Appellants to the extent that the Appellants had become known simply as “Luke’s”. While there were instances where “Luke’s” was used in a standalone fashion on the shopfront of the Appellants’ restaurants and restaurant’s cutlery, its restaurant windows used the registered trade mark which consisted of nine words. “Luke’s” was also never used by the Appellants in a standalone fashion on their business cards, website or social media.

Further, the Appellate Division held that even if distinctiveness was found in any particular dominant component of a mark, this must ultimately relate back to the impression given by the mark as a whole. The Appellate Division upheld the General Division’s decision that commonly used personal names are not distinctive, and agreed with the conclusion that the registered trade marks of the Appellants and Respondents were not similar.

The Appellate Division went further to note that when the Respondents applied to register the two Singapore registered trade marks in dispute, the Appellants did not oppose the registrations. The Appellate Division remarked that the lack of opposition from the Appellants suggested that the word “Luke’s” was not as important to or distinctive in their restaurant’s branding as they had strenuously contended.

The Appellate Division also considered matters relating to a Hong Kong trade mark revocation action filed by the second Respondent to revoke the first Appellant’s registration of its mark in Hong Kong, in particular a letter from the Appellants’ solicitors in the Hong Kong action which stated that the parties had different target consumer bases. The Appellate Division held that this was a concession on the part of the Appellants.

The Appellate Division ultimately held that the General Division did not err in law or principle in dismissing the Appellants’ trade mark infringement, passing off and trade mark invalidation claims.

Impact of decision

The Appellate Division’s decision affirms the importance of maintaining a consistency of usage of registered trade marks. Doing so will facilitate the mark’s acquiring of distinctiveness through use, which may be relevant in potential trade mark infringement, invalidation or passing off actions.

The decision also affirms the General Division’s findings that commonly used personal names are not particularly distinctive. As such, a would-be applicant should carefully consider the above before deciding to apply for a trade mark which includes personal names.

This decision also highlights the importance of opposing trade mark applications which may be potentially infringing as the court may cast an adverse inference on the failure to oppose in any future trade mark infringement action after the trade mark’s registration.

Parties in cross-border trade mark disputes should also note that the court considered matters raised in foreign proceedings as relevant to the issue of distinctiveness in Singapore. As illustrated by this decision, parties should be cautious when making assertions in other jurisdictions, as such assertions, even in the context of a dispute in another jurisdiction, may be relevant to a trade mark dispute in Singapore.

Reference materials

The judgment is available on the Singapore Courts website judiciary.gov.sg.