Summary of related Trademark Cases

Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide,Inc (Staywell)
This case concerned about trademark opposition proceedings that came from the Trade Marks Act.
Staywell Hospitality Group Pty Ltd submit an application to request for registration of the trademark
PARK REGIS in a series of two marks in Singapore under classes 35 as well as 43. Sheraton
International , Inc and Starwood Hotels & Resorts Worldwide, Inc (the Opponents) were against the
application because they are the proprietors of the trademark ST. REGIS in Singapore under class 42.
At first, the Opponents based their disagreement on ss 7(4)(b), 7(6), 8(2)(b), 8(4)(b)(i), 8(4)(b)(ii) and
8(7)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (the Act). Only ss 8(2)(b), 8(4)(b)(i) and
8(7)(a) were pertinent as oppositions when the case got to the High Court.

The High Court observed that although there were similarities in the usage of the marks regarding to the
companies marks and services, there was no possibility of misperception which is essential for a
successful opposition under ss 88(2)(b) and 8(4)(b)(i) of the Act. Besides, goodwill does not remain in
forced for the ST.REGIS mark during the date of Staywells application, thus there was no basis for
opposition under ss8(7)(a) of the Act. Staywell appealed in opposition to the verdict that both marks were
alike whilst the Opponents appealed in opposed to all three bases of the High Courts decisions.
In the final analysis by the Court of Appeal, it affirmed the High Courts decision that both marks are
unlikely to cause confusion given the prospective patrons of each brand and there was no possibility of
harming the ST.REGIS brand by using PARK REGIS mark and brand. Staywells appeal was
acceptable while the Opponents cross-appeal was rejected. An issue of evaluating the possibility of
confusion was raised due to the similarity involving the parties respective marks and similarity involving
the products with respect to the marks that were used, known as the confusion inquiry.
Sarika Connoisseur Caf Pte Ltd v Ferrero SpA (Sarika Connoisseur Caf)
The registered owner of the Nutella trademarks comprising of the Nutella word mark in Singapore
under Class 30 (the Respondent) also produced and sell hazelnut chocolate spread under the brand label
Nutella. As a businessperson in the food and beverage industry with a series of caf outlets (the
Appellant), an innovative gourmet hot coffee drink with espresso, milk foam, cocoa powder and
Nutella paste amid other ingredients offered in a shot glass under the Nutello name was launched at
all its cafes. Espresso with lashings of nutella perfect for cocoa lovers! was used to depict the
beverage on the Appellants caf menus and Nutello was marketed in many manners on menu,

website and booklet to promote the sales of Nutello beverage. The Respondent opposed to the usage of
Nutello name and menu depiction of Nutello drink so it filed a suit against the Appellant in the High
Court stating of a trademark infringement under s 27(2)(b) of the Trade Marks Act (TMA),
infringement of well-known trade mark under s 55(2) TMA, infringement by damaging connection of
well-known trade mark under s 55(3)(a) TMA, dilution by blurring of well-known trade mark under s
55(3)(b)(i) TMA, unfair advantage taken of the distinctive character of the Respondents well-known
trade mark under s 55(3)(b)(ii) TMA, and passing off.

The High Court supported the Respondent for each of its claims, except for the s 55(3)(b)(ii) TMA claim.
The Appellant appealed the whole of the High Courts conclusion except for that claim. For the final
decision, the Court of Appeal asserted the High Courts verdict on all of the above, apart from 55(3)(b)(ii)
TMA, which was not submitted for appeal. This case also brought forth an issue in confusion-based
infringement claim and dilution claim that will be discussed in the literature review.
Kickapoo (Malaysia) Sdn Bhd v The Monarch beverage Co (Europe) Ltd (Kickapoo case)
The registered owner of the trademarks Kickapoo and Kickapoo Joy Juice was the respondent. The
first appellant had the exclusive license of the marks in Singapore for many years, while its subsidiary
(the second appellant) aided the former in selling Kickapoo drinks. Resolute to cease the business
association with the appellants, the respondent gave out six cessation notices. The appellants turned down
the notices and confirmed the license agreement. In June 2005, the respondent ceased the license upon
founding out that the appellants had bought beverage bases from an unlawful supply due to insufficiency
of beverage bases which was against the license contract. Later, the respondent sued the appellants for
trademark infringement and passing off upon realizing that beverage containers displaying the trademarks
contain the appellants names and falsely specified that the drinks were manufactured under the approval
of the respondent. The appellants counterclaimed for breach of contract and illegal act of unlawful
conspiracy as the respondent increased the price of beverages bases by 1,000%, from to US$602 per
gallon toUS$66.25 per gallon.
The High Court supported the respondents proceedings for trademark infringement and passing off along
with the appellants counterclaims. The appellants appealed to the Court of Appeal against the courts
decision concerning trademark infringement and passing off. The Court of Appeal discharged the appeal
as both parties have to be accountable for their respective lawful damage. This case can be linked to legal
developments concerning trademark licenses and progressive easing of the constraints.

Container of fake Lego, superhero goods seized

Singapore customs officers seized a container that contained trademark-infringing toys (such as fake Lego
items) and other childrens accessories displaying popular cartoon, comic book characters from Shenzhen,
China. Other trademark-infringing possessions were detained upon discovery in the workplace of the
importer. The Singapore Police Force (SPF)'s Intellectual Property Rights Branch was informed straight
away and a man and a woman were captured for custody of goods with falsely registered trademarks for
intention of trade under Section 49(c) of the Trade Marks Act (Cap 332). This action displayed the
authorities dedication in having a strong IP rights enforcement system, which will be developed in the
literature review.

Literature review
There is a clarification of legal standpoint by the court on the examination used in evaluating the
possibility of confusion in the Staywell case. To begin with, the court expressed a perspective that take
into account not just if the confusion was probably a consequence of actual use to which the competing
marks had been place, but if such confusion could be caused if marks were used in a notional and fair way
across the whole span of the description of goods and services under which the mark was registered or
request to be registered. This was referred to as notional fair use approach. In this regard, for the first
time, the court differentiated the approach for conducting the confusion inquiry in opposition and
infringement trials. For the former, the court would consider the entire scope of the actual and notional
uses whereby the competing marks could be placed in both cases. As for the latter, the court would
evaluate the entire scope of notional fair uses of the obligatory mark in contrast to the actual use that the
supposedly infringing mark had been placed.

Besides that, the court considered whether factors other than the similarity of marks and products
themselves could properly be considered by the court in assessing the likelihood of confusion arising
from the similarity of the marks and products. In a carefully considered retraction from the previous
approach of admitting essentially all and any extraneous factors that would operate to dispel confusion,
Staywell took the position that superficial steps taken by the trader to differentiate his goods should not be
considered in the confusion inquiry. Instead, only factors that are intrinsic to the goods themselves, and
which impact the consumers motivation and ability to exercise care in his purchase of the particular type
of products, are to be considered. The door through which extraneous factors could be considered in the

confusion inquiry was therefore the impact of marks- and product- similarity on the perception of the
consumer.

As for the Sarika Connoisseur Caf case, when the Court of Appeal moved on to consider the
respondents other claim based on dilution, its conclusion on confusion give rise to a preliminary issue,
whether is it conceptually incongruous to find both confusion-based infringement claim and dilution
claim using the same set of facts.

It is conclude that there is no conceptual incongruity between trade mark infringement and trade mark
dilution. The court pointed to the definition of dilution in s 2(1) of the Trade Marks Act which provides
that dilution can be established regardless of whether there is any likelihood of confusion on the part
of the public. Whilst the statutory definition of dilution is more often taken as a stipulation that
confusion is not a necessary ingredient to prove in a dilution claim, it is certainly possible that the
draftsman also meant for this definition to convey the message that the presence of confusion does not
preclude a finding of dilution. Besides that, it is possible for confusion to exist in the minds of some
consumers and dilution to exist in the minds of other consumers (those who were not confused) (McCabe,
2000). This is seen in the Sarika case as there was confusion amongst about 30% of the relevant public, a
portion which was substantial in the Court of Appeals view. This leaves 70% of the relevant public who
would not be confused. It is conceivable that dilution can occur in the minds of a significant portion of
this 70%. Further, the Court highlighted that the differences between the doctrinal bases for both actions.
In an action for trade mark infringement, the protection of trademarks is conditioned on avoiding
consumer confusion, whereas in an action for trade mark dilution, it is the very ownership of the mark and
its consequent value that is sought to be protected. In particular, in an action for dilution by blurring, the
court aims to avert the probability of damage to a marks advertising function as a vehicle for building
up and retaining brand loyalty.

Even to date, some legal commentators are uncomfortable with the interaction between actions for trade
mark infringement and trade mark dilution, and argue that the modern trade mark dilution doctrine does
not square with the fundamental purpose of trade mark law, namely, guaranteeing the identity of the
origin of a marked product to the consumer by enabling him, without any possibility of confusion, to
distinguish the product from others which have another origin. The decision by the
Court of Appeal goes some way in clarifying the distinction between both actions and affirms the
potentially wide scope of protection accorded to proprietors of trademarks that are well-known to the
public at large. Thus, there is a need for clear doctrine and well-defined boundaries of dilution.

http://www.sslawcorp.com/newsletters/April_2013_Newsletter.pdf

The Kickapoo case originates from the legal developments concerning trademark licenses and progressive
easing of the constraints regarding such license. Initially, the main purpose of trade mark is seen as a sign
of the actual source of goods or services to consumers as they depend on the mark to notify them that the
goods and services are authentic which originates from the actual source or contain the same traits or
quality as the goods or services acquired previously. As such, the convention trademark law discourages
the licensing of trademark due to the perception that purpose of the trademark as a sign of the origin of
source would be at risk or lost once the mark was used by others rather than the owner, although he had
agreed to it. The fundamental view behind this was such licensing would result in the public being misled
into buying goods or services in the view that it was created by the person behind the brand that they
trusted, however it was created by somebody else(1).

Such issue was seen in the Kickapoo case. This issue was raised due to the appellants of the Kickapoo
case claiming the absence of a misrepresentation of the origin of the goods since the public correlate the
Kickapoo drinks with the appellants and not the respondent. This issue is significant because of the
provision found in s 22(1)(d) of our Trade Mark Act 2005 that specify the registration of a trademark
could be revoked under the consequence of the use made of it by the proprietor or with his consent in
relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as
to the nature, quality or geographical origin of those goods or services. (2) However once the exclusive
license is over but the previous licensee continue to operate their business as usual, there is another
different issue that arose. There could be possibility for deception and confusion in this circumstance as
the consumers might still correlate the mark with the previous licensee and his current business, instead of
the licensor. In such case, the mark may not be representative of the source of trade origin at that time.
This could be seen in cases of trademark licensing and the trademark owner is at potential risk of having
his trademark retracted for absence of distinctiveness.

Due to the transformation of business processes, customer expectations and the acceptance of the
trademark license, the restriction in the assignment of trademark license was eased. Subsequently, the
constraint faced in the usage of the trademark license by the licensee was eliminated under the Trade
Mark Act. Currently, the trademark owner has to make sure that his trademark delivers the accurate
purpose of the trademark and such usage of the mark does not trick or delude the public, also known as
the hands-off approach. This aims to lessen the responsibility of the Registrar in overseeing and
regulating the usage of registered trademarks by their owners.

Lastly, about the seizing of trademark-infringing goods, it is known that registering for trademark only
offer legal rights. The actual challenge that exists is the enforcement of trademark rights against illegal
use by counterfeiters who brazenly continue to infringe the registered trademarks.

In Singapore, the criminal procedure used in the execution of trademark rights is quite effective, rapid and
straightforward thus it is extensively used by trademark owners and with great effect. The only
preconditions are a legal application of trademark and selection of local law firm possessing the right for
the trademark owner such as a signed letter, which does not need legalization or notarization.

It is four-step process for the enforcement that starts with tracking down the origin of counterfeit goods
by carrying out field investigation or market survey before performing trap purchase. Thereafter, it is the
judgment of the differences relating to the authentic and counterfeit goods. As soon as the owner is
certain that counterfeit goods is found during, trademark owner is able to carry on in handling over the
information, upon oath, with the court, and request a search warrant that permits police to search the
location or conveyance to seize any infringing items. From then on, it is the resolving of the matter by the
infringer and the owner. Once the matter is settled, the seized items are destroyed else there can be
relevant filing of court case and the infringer is criminally prosecuted. When condemned, the infringer
could be jailed or fined up to S$100,000 (US$81,000). The Singapore court system and subsequent
enforcement process is quite efficient, as seen from the statistics on raids and total value of seizure found
in Appendix A. (3), (4)

Solution
The solution for the confusion inquiry in Staywell case that was proposed by the Court of Appeal was
developing a framework for conducting the confusion analysis within the structure of s 27(2) of the Act.
Under this framework, the likelihood of confusion was described as the interplay between (a) the degree
of similarity between the competing signs; (b) the degree of similarity between the products in relation to
which the marks were used; and (c) the effect of these similarities on the relevant public.

Taken together therefore, the framework, notional fair use approach and the tightening of the range of
admissible extraneous factors at the confusion-inquiry stage in Staywell represent a definite shift in
judicial philosophy towards more robust protection of registered trademarks. By widening the comparator

against which junior marks (whether marks seeking registration or allegedly infringing marks) are
assessed to the whole spectrum of notional fair uses to which the senior mark can be it, the potential for
overlap is vastly increased. Further, in opposition cases consideration of the particular circumstances of
actual use to which both the junior and senior marks have been put is completely jettisoned, leaving the
battle to be fought largely on the ground of the objective similarity of the marks themselves, and the
courts understanding of scope of the specification and the consumer patterns within that specification.
This pro-mark approach is still open to criticism.

- identify criticism & benefit of the pro-mark approach here

Regarding the Sarika Connoisseur Caf case, it can be seen that dilution is not, a consequence of
infringement. Rather, dilution is a separate concept, independent of an infringement claim, and should not
be analyzed using infringement standards. Dilution should be analyzed apart from infringement resist
properly evaluating dilution-by-blurring, the most common dilution claim. There is a fear that accepting
the anti-dilution right which is now part of the trade mark landscape in Singapore, will result in an
overexpansion of trademark protections, resulting in a monopoly of a mark's language and design by its
owner to the detriment of competition. Modern trade mark law is no longer just about preventing
confusion in the marketplace; it is also about preventing dilution of the distinctiveness or reputation of a
trade mark. The anti-dilution right has been the subject of much debate. Critics have slammed this right
for its lack of juridical basis and for its very amorphous scope and therefore raising the concern that the
uncertainty caused by this right can have a chilling effect on fair and free competition in business. This
part suggest a modified standard that is neither a grant of property rights in gross nor an ineffectual
strawman, but one that can be used to evaluate a dilution-by-blurring claim so that blurring may be
identified by the courts as effectively as dilution-by-tarnishment and right to enjoin acts that take unfair
advantage of the well-known mark. Courts should adopt this standard rather than using a traditional
customer confusion standard that results in the reincorporation of an infringement standard into dilution.
The factors that courts should consider in addressing any dilution-by-blurring claim are renown of the
senior mark, similarity of the marks, similarity of the products, predatory intent and mental association.

First, assessing the renown of the senior mark answers the FTDA's requirement that the plaintiffs mark be
famous. Second, by evaluating the similarity of the marks to measure whether they are
"essentially the same "or of "sufficient similarity. . . to evoke an 'instinctive mental association' of the two
[marks],' a court can gauge the likelihood that a consumer will perceive the junior user's mark to be
similar to the senior user's, thereby weakening the latter. If a mark bears only a slight resemblance to the

senior mark, dilution of the senior mark will probably not occur. Next, an appraisal of the similarity of the
products at issue is important, as similar products reinforce a consumer's perception of similar marks.
While lack of similarity between goods is not a definitive indication of lack of dilution and is not required
under the FTDA, similarity between goods can create dilution where the same claim would not exist
between noncompeting goods. Additionally, predatory intent can gauge the defendant's own evaluation of
the likelihood of a mental association between the marks. While the language of the FTDA does not
include an element weighing the bad faith of the defendant, except in assessing damages, a finding that
the defendant purposely chose the senior user's mark for her own goods in order to benefit from the
investment and goodwill made in the senior mark can provide empirical evidence of a mental association
between the marks, thereby causing dilution. Finally, the most significant factor in measuring dilution is a
finding of mental association. This mental association assesses whether a consumer, upon viewing the
junior mark, will be reminded of the senior mark. The appraisal is crucial to a dilution-by-blurring
evaluation, because dilution-by-blurring is defined as the creation of a mental association between the
marks that falls short of confusion. If such a mental association is not found, there is de facto no dilution
and the claim fails. To attempt to analyze blurring without evaluating the public's perception of the marks
is to fall prey to a vague standard that only skirts the borders of dilution.

It is suggested that the legal difficulties and uncertainties highlighted in the Kickapoo case are the
unavoidable consequences of the policy choice of adopting the hands-off approach in the Trade Mark
Act and, in particular, the abandonment of any quality control obligation imposed on the proprietor. The
search for doctrinal coherence and clear bright-line solutions is likely to be futile. It is, therefore, indeed
true to say that in every case where a trademark is license, the trade mark proprietor is at potential risk of
having his trademark revoked for lack of distinctiveness. It is, thus, left to the courts to decide in each
case whether there is such a risk based on the facts of the case or on a global appreciation of all relevant
factors. Whether there is a risk would also depend on the perception of the average, reasonably wellinformed, observant and circumspect consumers of the goods in question.

Phang JA in the Kickapoo case suggested an approach to adopt the traditional approach (of viewing trade
source as residing in the trademark proprietor) as a starting point by way of a rebuttable presumption and
place the burden on the licensee to rebut the presumption by clear and convincing evidence that the public
no longer associates the business source of the goods concerned with the trade proprietor but with the
licensee. It is suggested that there is no necessity to place such an onerous burden on the licensee,
especially as, pursuant to the hands-off policy of the Trade Mark Act, it is the responsibility of the
trademark proprietor (and in his own self-interest) to protect the value of his own trademark from being

diminished by uncontrolled or untrammeled use of his mark by the licensee and to ensure that the use
accrues to him, rather than the licensee. He can simply do this by obliging his licensee to cease carrying
on the same or similar business after the termination of the license or, it this is not possible, to take
practical steps (eg, by advertising, marketing the products or otherwise) to ensure that the licensees
customers are aware that the proprietor or business source of the trademark is the licensor, not the
licensee.

Concerning the strong enforcement rights for trademark infringement, Singapore has a comprehensive
plan for the judicatory work concerning all trademark infringement related cases including the criminal
ones. These judicial interpretations and regulatory documents with relatively strong practicability are of
great significance for the peoples court to hear criminal cases involving trademarks rights violation in
accordance with law, to combat crimes of this kind more effectively and to enhance trademark protection
through criminal justice.

Singapore courts take a very serious view of trade mark offences; in fact, custodial sentences are the norm
unless the quantity of infringing articles is quite small. The importance of public interest element in
providing greater protection for intellectual property rights in tandem with the governments efforts to
promote Singapore as a regional intellectual property centre and to promote Singapore to high value
knowledge-intensive companies. In this regard, the court noted that the legislative intent behind the
punishment provisions for trade mark infringement was to provide greater protection for trade marks
against infringement and against sale of counterfeit products and to provide more severe penalties for
the sale of counterfeit goods to protect the rights of owners of those goods who have invested heavily in
research, design, production and marketing, as manifested by the increase in the penalty for trade mark
infringement from a $2,000 fine and/or one years imprisonment to a maximum fine of up to $100,000
and/or five years imprisonment. Such stringent enforcement of the trademark rights infringement in
Singapore is provided with the public interest to deter potential criminals who are minded to use
Singapore as a distribution centre for transhipment of counterfeit products to other neighbouring
countries. Such offences may cause injury to Singapore as a reputable business place that affords strong
and effective protection of intellectual property rights. The governments determination to clamp down on
piracy of trademark rights is indeed praise worthy.

References
McCabe, K. B. (2000). Dilution-by-blurring: A theory caught in the shadow of trademark infringement.
Fordham Law Review, 68(5), 1827.

(1) Earl Loreburn in the House of Lords decision of Bowden Wire Ltd v Bowden Brake Co Ltd (1914) 31
RPC 385 at 392

(2) http://statutes.agc.gov.sg/aol/search/display/view.w3p;ident=5631d733-4b9f-491f-aea5aba0a41ede41;page=0;query=DocId%3A%22eda8ae51-9095-4ada-b5e40407c03ca714%22%20Status%3Ainforce%20Depth%3A0;rec=0#pr21-he-.

(3) http://www.mirandah.com/pressroom/item/376-criminal-enforcement-of-trademark-rights-insingapore-and-malaysia

(4) http://www.mirandah.com/pressroom/item/373-singapore-effective-criminal-enforcement-of-ip-rights