“It is the time you have lost for your rose that makes your rose so important,” wrote Antoine de Saint-Exupéry in The Little Prince. This saying proved particularly apt in the feud between two cosmetic distributors, Hai Tong Co (Pte) Ltd v. Ventree Singapore Pte Ltd et al., which was finally settled in a cross-appeal case that was brought before the Court of Appeal in Singapore.
Since 1960, Hai Tong Co (Pte) Ltd (the Plaintiff) has marketed a range of cosmetic products in Singapore under the brand LADY ROSE. The mark “” was successfully registered by the Plaintiff in 1970. On the other side is Ventree Singapore Pte Ltd (the Defendant), distributor of the VOV brand of Korean cosmetic products in Singapore. The VOV brand includes a line of cosmetics under the name ROSE LADY (wherein the packaging includes sketches of flowers with five petals of various sizes in the background), which was not registered as a trademark.
Upon discovering the existence of the ROSE LADY mark in the market, the Plaintiff instituted a case against the Defendant claiming that it had infringed the LADY ROSE mark by importing and offering for sale the allegedly infringing products and that the Defendant had passed off the said products as the Plaintiff’s goods.
The Judge in the High Court allowed the Plaintiff to claim for trademark infringement but dismissed its claim in the tort of passing off, stating that the Plaintiff had “trivial” goodwill and that the sales figures were “not particularly impressive” and thus did not equate goodwill.
On the issue of trademark infringement, the Court of Appeal upheld the High Court’s finding that the Defendant had infringed the Plaintiff’s LADY ROSE mark. The Court of Appeal, in arriving at this conclusion, first reaffirmed that the ROSE LADY mark was used in the course of trade, i.e. the mark was used as a badge of origin for their goods, even though the Defendant claimed that the mark was just a secondary product identifier and not meant to function as a trademark.
To ascertain the degree of similarities shared between the LADY ROSE mark and the ROSE LADY mark, the Court of Appeal weighed the marks on their visual, aural and conceptual aspects. The Court considered the viewpoint of an average consumer who has imperfect recollection and the general impression left by the essential or dominant features of the marks on the average consumer. With that, the Court held that the simple stylised rose in the LADY ROSE mark was not a feature that drew any significant attention away from the words. As such, when a customer tries to recollect the LADY ROSE mark, they would most likely recall the textual component rather than the device component. Furthermore, since the textual component of the LADY ROSE mark and the ROSE LADY mark were found to be substantially similar, it was unlikely that the simple stylised rose in the LADY ROSE mark would serve as a point of distinction.
When comparing the marks aurally, the Court of Appeal found that even though the syllables in the two marks are articulated in an inverted order, it did not prevent the LADY ROSE mark and the ROSE LADY mark from being aurally similar. Apart from that, the Court of Appeal also agreed with the High Court’s finding that both marks are conceptually similar as both evoke the idea of “something floral and feminine”.
Having regarded all the factors above and the fact that the goods of the LADY ROSE mark and the ROSE LADY mark are identical, the Court of Appeal found that the Defendant had in fact infringed the Plaintiff’s mark as there was sufficient likelihood of confusion amongst the consumers whereby an average consumer might mistake one product line for the other or believe that they originated from the same or related source.
In regards to the claim in the tort of passing off, the Court of Appeal disagreed with the decision of the High Court Judge especially in finding the Plaintiff’s goodwill trivial or negligible because the sales figures of the Plaintiff’s LADY ROSE Mark line of products were “not particularly impressive”. Rather, the Court of Appeal found that the Plaintiff has indeed obtained goodwill since the public has been exposed to the LADY ROSE mark for the past 53 years. The Court further affirmed that goodwill can be limited to a small section of the public so long as they are not negligible.
On the issue of damage to the Plaintiff’s goodwill, the Court of Appeal disagreed with the High Court’s finding that there was no damage suffered by the Plaintiff as the Defendant’s VOV brand was deemed to be more well-known than LADY ROSE. The Court of Appeal found that there was no evidence that the Plaintiff’s products were inferior to the Defendant’s products, and instead upheld the Plaintiff’s arguments that by reason of the similarities shared between the marks and the goods, there was a real likelihood of damage to the Plaintiff’s goodwill arising from the diversion of sales of their products if consumers were led to believe that the products bearing the ROSE LADY mark originated from the Plaintiff or were otherwise connected with the Plaintiff. In light of the above, the claim in passing off was made out and the appeal was therefore allowed.
This judgment sets a very good reminder to all businesses who wish to enter their products into a new market to always conduct a freedom to operate search. The search should give you a good idea of whether the sale of your products may infringe upon the trademark rights of others. Further, this case also shows that the use of terms which are suggestive of the products themselves may also constitute infringement or passing off, if the terms have acquired a secondary meaning in the sense that the consumers have come to associate the terms with a particular producer.