When passing off is enough to successfully oppose a trade mark

5th June 2018

Singapore’s Intellectual Property Office decides that a foreign brand owner with no earlier trade mark registration or recognition of its brand being “well known” in Singapore can rely on “passing off” to prevent another trader from registering the same brand in Singapore.

Background

“Footpure” is a brand of foot deodorant powder from Taiwan. The applicant was a sole proprietor operating Nunufish.com (“Nunufish“), an online platform selling various personal care products. The opponent, U-Manga International Business Co., Ltd (“U-Manga“), was the owner of the registered trade mark “footpure” in Taiwan, but had not obtained registration for the mark in Singapore at the relevant date of the opposition. Nunufish had previously sold U-Manga’s goods in Singapore. U-Manga alleged that Nunufish was clearly aware of its rights in “footpure”; indeed, it had registered the “footpure” mark in Singapore a few days after U-Manga terminated Nunufish’s licence to distribute its “footpure” products locally. U-Manga opposed the application on two grounds under the Singapore Trade Marks Act:

(a) The use of the “footpure” trade mark constituted passing off of a protectable unregistered trade mark; and

(b) U-Manga’s “footpure” mark constituted an “earlier trade mark” as it qualified as a “well-known trade mark”, such that registration of the “footpure” mark would result in a likelihood of confusion and/or use would indicate a connection between the respective goods that would be likely to damage U-Manga’s interests.

Notably the opposition did not proceed on the ground of “bad faith”, apparently on the basis that U-Manga did not plead the correct operative section under the Singapore Trade Marks Act.

The Registrar’s decision

No earlier well-known trade mark

As for the claim that U-Manga’s “footpure” mark was well-known in Singapore (which does not require the mark to be registered), the Registrar, considering the evidence as a whole, concluded that it was insufficient to establish that that the “footpure” mark was well-known in Singapore. U-Manga had adduced a few pieces of evidence to show that the “footpure” mark was well-known in Singapore. First, U-Manga showed that the mark was registered in Taiwan and China, and submitted that these were both popular tourist destinations for Singaporeans. Unsurprisingly, the Registrar was unwilling to accept that the mere fact of registration in a foreign country would lead to marks being well-known in Singapore.

U-Manga also produced email conversations where Nunufish expressed confidence that there was a market for the “footpure” product in Singapore. However, the Registrar reasoned that Nunufish’s business ambitions and belief in the brand’s potential alone did not show that products were well-known. Finally, U-Manga adduced evidence of comments made by customers on an online shopping portal which sold the “footpure” products. These comments included accolades, recommendations and high ratings for U-Manga’s products. However, these also included complaints about the goods sold by Nunufish (which included U-Manga’s products) being suspected to be counterfeit. Considering the totality of the evidence, the Registrar concluded that “it would be a fantastic stretch to find the mark “footpure” well known”. The evidence merely demonstrated that the “footpure” mark was known, but not necessarily well known.

Passing Off

U-Manga was therefore left with the ground of opposition based on passing off under section 8(7)(a) of the Singapore Trade Marks Act, which requires proof of the classical trinity of: (1) goodwill, (2) misrepresentation and (3) damage. Neither misrepresentation nor damage was a difficult hurdle to cross in this case. Given that the opposed mark was “practically identical” to U-Manga’s “footpure” mark, the reasonable conclusion was that the public were likely to be deceived or confused into thinking that Nunufish’s goods were either those of U-Manga, or emanated from a source that was linked to U-Manga. This diversion of custom likewise established the element of damage. The main issue that fell to be considered was therefore whether goodwill existed in U-Manga’s business within Singapore.

Based on a review of the principles laid down by the Singapore Court of Appeal in the case of Singsung Pte Ltd v LG 26 Electronics Pte Ltd, the Registrar emphasized that goodwill does not exist on its own, but attaches to a business in the jurisdiction. In particular, goodwill in the context of passing off is concerned with goodwill in the business as a whole, and is not concerned with the constituent elements of the business, such as the marks, logos or get-ups specifically. Such goodwill attaches to a business in the jurisdiction and is manifested in the custom that the business enjoys.

For these reasons, U-Manga faced difficulty in establishing goodwill, where the evidence it submitted could not be traced back specifically to business in Singapore. It succeeded in doing so by adducing various website printouts of an online shopping portal (Qoo10), where U-Manga’s goods were sold by a third party distributor long before Nunufish sought to register its mark. Crucially, the website printouts reflected U-Manga’s name on the listing as the source of the “original” “footpure” foot powder. On the basis of this evidence, the Registrar accepted that there was goodwill in U-Manga’s business in Singapore. Therefore, U-Manga succeeded in establishing the ground of opposition under the tort of passing off, and the opposed mark was refused registration.

Comment

This case shows that passing-off is a separate and distinct cause of action for opposing a registration. To rely on passing off, U-Manga had to establish proof of goodwill in its business in Singapore and this case illustrates the kinds of evidence needed to establish goodwill relating to a business within the jurisdiction. This case also illustrates that evidence that may be sufficient to prove trade mark use may be different from that necessary to prove goodwill which attaches to a business in the jurisdiction.

The case also reinforces the applicable threshold for marks to be regarded as “well-known”. Singapore law recognizes that marks can be well-known in Singapore so long as it is well-known to any relevant sector of public in Singapore. Nonetheless, the Registrar emphasized that this does not mean that the threshold for being regarded as well-known is a low one. While the Registrar was willing to find that the “footpure” brand had protectable goodwill in Singapore, it did not find that the mark crossed the threshold to become “well-known”.