Although most trade mark disputes are usually settled at the interlocutory injunction stage, one of the few cases where, despite the grant of an interlocutory injunction, the matter proceeded to trial was recently decided by the High Court in Singapore. The case being OTO Bodycare Pte Ltd v Hiew Keat Foong  SGHC133 concerned the infringement of the Plaintiff’s “OTO” trade mark and passing off by the Defendant’s use of the words “OTC Bodycare” and “Electro-Relaxologist” on the apparatus that was sold by the Defendant.
The Plaintiff’s trade mark
Here the Plaintiff was in the business of importing, marketing and distributing fitness, health and body care products since 1993 and is the proprietor of the registered trade mark “OTO” in Class 10 for, inter alia, massage apparatus.
The Plaintiff had since 1993 marketed its products under the trade mark “OTO” being represented initially in italicised form and set in horizontally striped block letters in a rectangular background. Later in 1999, the Plaintiff changed the representation of the trade mark by setting the words “OTO” in prominent, plain white block text with horizontal stripes on the lower half of the letters set in a green box. In addition the Plaintiff used the word “Bodycare” in plain white block text set out in smaller type than the word “OTO” in a red box below the said green box. The new trade mark is awaiting registration.
The Plaintiff then in 2002 imported into Singapore an electrical reflexology apparatus, which was designed and patented in Korea by a Korean manufacturer in collaboration with a medical equipment company. The Plaintiff obtained the rights to market the apparatus in Singapore under its own “OTO” trade mark. The Plaintiff coined the word “Electro-Reflexologist” for this apparatus, which was also known as ER839.
When the product was launched in Singapore in June 2002, the Plaintiff claimed that it was one of the first electrical reflexology products in the market. There was extensive advertising and promotion by the Plaintiff through various channels amounting to S$ 1,857,000. The Plaintiff’s sales were very good and between June 2002 and April 2004, more than 75,000 units were sold with total revenue of S$ 28 million. Based on this, the Plaintiff claimed that it had developed goodwill and reputation not only in respect of the “OTO” and “OTO Bodycare”, but also “Electro-Reflexologist” which the distinctive shape and get-up was that of the Plaintiff’s and no one else. The Defendant denied this and claimed the words “Electro-Reflexologist” was descriptive of the Plaintiff’s machine.
The Defendant here sold foot reflexology apparatus known as HL 1016, which the Plaintiff claimed was identical or substantially similar to the Plaintiff’s product. The Defendant marketed these apparatus by way of posters with the words “OTC BODYCARE” with “OTC” in white set in a black box with horizontal stripes running through the letters. The letters were in a plain, bold typeface such that the letter “C” would appear like the letter “O”. The letters “TM” appeared in white as a superscript to “OTC” and the word “BODYCARE” was also in white set against a green background with the word “JAPAN” in small black type below it. The colour scheme of the Defendant’s posters was identical to the Plaintiff’s except that the colours were interchanged.
The Defendant had also named their product “Electro-Relaxologist” being a word that was visually and phonetically similar to the Plaintiff’s “Electro-Reflexologist”. The Plaintiff claimed that the design of the Defendant’s product was also virtually identical to the Plaintiff’s product and this also extended to the packaging, as the name of the product was positioned at the top right hand corner, and the lines used to describe the virtues of the Defendant’s product were identical to that of the Plaintiff’s product except for three added lines. The Defendant had in fact copied the descriptive words of the Plaintiff’s product on a side panel of the box but replaced the word “Reflex” with “Relax” rendering the sentences meaningless. The Defendant denied this and claimed there were substantive differences.
The Plaintiff then in February 2004 obtained an interlocutory injunction restraining the Defendant from dealing with materials carrying the name “OTC BODYCARE JAPAN” or selling foot reflexology apparatus under the name “FOOT RELAXOLOGIST”. The compliance with this injunction was the subject matter of a dispute between the Plaintiff and the Defendant, which resulted in committal proceedings being taken against the Defendant. Those proceedings were settled by undertakings being given to the Plaintiff by the Defendant. The matter then proceeded to trial.
Findings of the trial judge
The Court found that the Defendant’s mark was similar to the trade mark “OTO”. This was because there was too much coincidence that the Defendant’s mark had the same two letters as the Plaintiff’s trade mark, and that the third letter was dressed up remarkably like the letter “O” and there were horizontal stripes in the middle portion of the letters. The mere fact that the Plaintiff’s “OTO” was in italicised form while the Defendant’s “OTC” was not did not make a significant difference in visual impact. The Court also applied the “imperfect recollection” test and found that anyone looking at the Defendant’s mark without close scrutiny, whether due to distance or shortness of time, would have thought that they had seen the letters “OTO”. The fact there were other words below did not detract from the fact that the top three letters were in bold print and that they were the words which were distinctive and would register with the viewer.
As the Defendant had used its mark on foot massage apparatus and the Plaintiff’s trade mark was registered for the same apparatus, the Court held it was used for identical goods for which the Plaintiff’s trade mark was registered.
The Court went on to hold that the Plaintiff only need show “a likelihood of confusion” (based on the wording of Section 27(2)(b) of the Trade Marks Act); and here the Defendant had chosen a name that was deceptively presented to resemble “OTO”, and so what was important was whether the customers saw “OTO” when the letters were actually “OTC” disguised to look like “OTO”. The Court therefore applied an objective test, and held that without doubt confusion arose and that confusion was shown by customers asking whether the machine that was sold by the Defendant was an “OTO” product or not. Once that happens, it matters not whether the Defendant’s sales staff tried to explain that their product was not “OTO” as the public was already confused and it matters not whether any sales were made to them. Therefore the Court found that there was trade mark infringement.
The Plaintiff’s claim for passing off was based on the Defendant’s use of the words “OTC Bodycare” and “Electro-Relaxologist” as well as the similarities in shape, design, packaging and overall get-up between the Defendant’s HL1016 machine and the Plaintiff’s ER839 machine.
The Court found that the Plaintiff had goodwill in the words “OTO” and “OTO Bodycare” as it had used them for a number of years and had advertised extensively, and that the Defendant’s use of “OTC” and “OTC Bodycare” was a misrepresentation on the part of the Defendant and thereby there was passing off as long as those terms were used in connection with the Defendant’s apparatus.
However, as to the term “Electro–Reflexologist” which the Plaintiff claimed was associated with them and no other, the Court held that it was not proved that the public, on seeing or hearing the Plaintiff’s term would associate the same with the Plaintiff. As to the packaging box, the Court held that there were similarities but there were also differences. Thereby it was held that there was no goodwill and reputation in “Electro-Reflexologist” or in the shape, design and sales methodology of the Plaintiff’s product.
The Court went on to grant a permanent injunction restraining the Defendant from infringing the Plaintiff’s trade mark and from passing off his product as the Plaintiff’s and for damages to be assessed.
It would therefore be fair to say that the trial Court applied the principles of trade mark law and passing off well in the above decision and ensured that the trade mark owners rights were respected without being overzealous as the Court quite rightly denied the Plaintiff’s passing off claim when it quite rightly found that there was no goodwill.
©patrick mirandah co.