OTO Bodycare v Hiew: Trademark Infringement & Passing Off of Electro-Reflexology Apparatus

OTO Bodycare Pte Ltd sued Hiew Keat Foong in the High Court of Singapore on 27 July 2005, alleging trademark infringement and passing off related to an electrical reflexology apparatus. OTO Bodycare claimed Hiew's use of "OTC Bodycare" and "Electro-Relaxologist" infringed their "OTO" trademark and passed off his product as theirs. The court found Hiew liable for trademark infringement and passing off for specific periods, granting an injunction and ordering damages to be assessed. Hiew's counterclaim was dismissed.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Plaintiff's claim allowed in part; defendant's counterclaim dismissed.

1.3 Case Type

Civil

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

OTO Bodycare sues Hiew for trademark infringement and passing off his product as theirs. The court found Hiew liable for trademark infringement and passing off.

1.7 Decision Date

26 July 2005

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
OTO Bodycare Pte Ltd	Plaintiff	Corporation	Claim allowed in part	Partial	Wong Siew Hong of Infinitus Law Corporation Nandakumar Renganathan of T M Hoon and Co
Hiew Keat Foong	Defendant	Individual	Counterclaim dismissed	Lost	Wong Seow Pin of S P Wong and Co

3. Judges

Judge Name	Title	Delivered Judgment
Tay Yong Kwang	Judge	Yes

4. Counsels

Counsel Name	Organization
Wong Siew Hong	Infinitus Law Corporation
Nandakumar Renganathan	T M Hoon and Co
Wong Seow Pin	S P Wong and Co

4. Facts

OTO Bodycare is the proprietor of the registered trademark “OTO” for massage apparatus.
OTO Bodycare sells an electrical reflexology apparatus called “OTO Electro-Reflexologist”.
Hiew Keat Foong sold a similar apparatus under the name “Electro-Relaxologist” with the mark “OTC Bodycare”.
The defendant’s mark had the same first two letters as the plaintiff’s trademark, a third letter that was dressed up to look remarkably like the letter “O” and horizontal stripes across the middle portion of the letters.
The defendant’s product was named “Electro-Relaxologist”, a word visually and phonetically similar to the plaintiff’s “Electro-Reflexologist”.
The defendant created a 'Notice of Agreement' suggesting he was an authorized dealer of OTO products after committal proceedings.

5. Formal Citations

OTO Bodycare Pte Ltd v Hiew Keat Foong, Suit 104/2004, [2005] SGHC 133

6. Timeline

Date	Event
1993-01-01	OTO Bodycare Pte Ltd started importing, distributing and marketing fitness, health and body care products.
1999-01-01	OTO Bodycare Pte Ltd changed its name from IPS Enterprises Pte Ltd.
2000-01-01	The innovative circuitry of the electrical reflexology apparatus was patented in Korea.
2002-06-01	OTO Bodycare Pte Ltd launched the electrical reflexology apparatus in Singapore.
2003-12-01	Hiew Keat Foong became aware of the HL1016 machine during the Guangzhou Trade Fair.
2003-12-01	OTO Bodycare Pte Ltd became aware that Hiew Keat Foong was selling a foot reflexology apparatus known as HL1016.
2004-01-01	Hiew Keat Foong started selling the HL1016 machine in Singapore.
2004-01-05	OTO Bodycare Pte Ltd purchased one unit of Hiew Keat Foong’s product.
2004-01-15	OTO Bodycare Pte Ltd issued a letter to Hiew Keat Foong to put him on notice of the trade mark infringement and of the passing off.
2004-02-07	OTO Bodycare Pte Ltd commenced action against Hiew Keat Foong.
2004-02-09	An interlocutory injunction was obtained restraining Hiew Keat Foong from dealing with materials carrying the name “OTC BODYCARE JAPAN” and from selling or distributing electrical foot massage or reflexology apparatus under the name “FOOT RELAXOLOGIST”.
2004-02-12	A private investigator purchased one unit of Hiew Keat Foong’s Electro-Relaxologist.
2004-03-03	The erroneous term, “FOOT RELAXOLOGIST”, was corrected by an amendment made on 3 March 2004 to read as “ELECTRO-RELAXOLOGIST”.
2004-03-04	Investigations revealed that Hiew Keat Foong was still distributing and selling the infringing product up to 4 March 2004.
2004-03-05	Hiew Keat Foong stopped his business of selling the HL1016 machine.
2004-03-06	Hiew Keat Foong placed an advertisement in the Tamil Murasu newspaper offering his product at a clearance sales price.
2004-04-15	JIT advertised in the Straits Times that it was selling the infringing product.
2004-04-23	JIT advertised in the Chinese newspapers.
2004-09-21	Hiew Keat Foong prepared a laminated certificate-like document which stated: Notice of Agreement.
2004-12-22	Hiew Keat Foong made an Offer to Settle under O 22A of the Rules of Court.
2005-07-27	The High Court issued its decision.

7. Legal Issues

Trademark Infringement
- Outcome: The court held that the defendant's mark was similar to the plaintiff's trademark and that there was a likelihood of confusion, thus infringing the trademark.
- Category: Substantive
- Sub-Issues:
  - Similarity of trademarks
  - Likelihood of confusion
Passing Off
- Outcome: The court found that the plaintiff had goodwill in its name and mark, and that the defendant had made misrepresentations, thus passing off his product as the plaintiff's for certain periods.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage

8. Remedies Sought

Injunction
Damages

9. Cause of Actions

Trademark Infringement
Passing Off

10. Practice Areas

Intellectual Property Litigation
Trademark Infringement
Passing Off

11. Industries

Retail
Health and Wellness

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Aktiebolaget Volvo v Heritage (Leicester) Ltd	N/A	Yes	[2000] FSR 253	N/A	Cited to support the argument that the use of a trademark as a distinct word, with or without additional words or material, amounts to infringement.
MI & M Corporation v A Mohamed Ibrahim	N/A	No	[1964] MLJ 392	N/A	Cited for the test of imperfect recollection in assessing likelihood of confusion, particularly in the context of less educated consumers.
Inland Revenue Commissioners v Muller & Co’s Margarine Ltd	N/A	No	[1901] AC 217	N/A	Cited for the definition of goodwill as the benefit and advantage of the good name, reputation, and connection of a business.

13. Applicable Rules

Rule Name
Rules of Court (Cap 322, R 5, 2004 Rev Ed) O 22A

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 1999 Rev Ed) Section 27(2)(b)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

OTO
OTC Bodycare
Electro-Reflexologist
Electro-Relaxologist
Trademark Infringement
Passing Off
Likelihood of Confusion
Goodwill
Massage Apparatus

15.2 Keywords

trademark
infringement
passing off
electro-reflexologist
oto bodycare
hiew keat foong
otc bodycare
electro-relaxologist

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Passing Off	90
Injunctions	50
Civil Procedure	30

16. Subjects

Intellectual Property
Trademark Law
Consumer Protection