Johnson & Johnson v Uni-Charm: Passing Off & Trade Mark Infringement over 'Carefree' vs 'Careree' Marks
Johnson & Johnson, an American company, opposed Uni-Charm Kabushiki Kaisha (Uni-Charm Corporation), a Japanese company's application to register the trademark “Careree” for “napkins and pads for wear by person prone to incontinence” in Class 5, based on Johnson & Johnson's prior registration of the trademark “Carefree” for “catamenial products, sanitary tampons, napkins and napkin belts for hygiene” in Class 5. Johnson & Johnson argued that the use of “Careree” would amount to passing off. The Assistant Registrar dismissed Johnson’s case, but the High Court of Singapore allowed Johnson's appeal, finding a likelihood of confusion and potential passing off.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal allowed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Johnson & Johnson sues Uni-Charm for trade mark infringement and passing off over similar 'Carefree' and 'Careree' marks for hygiene products. The court allowed the appeal.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Johnson & Johnson | Appellant | Corporation | Appeal allowed | Won | Dedar Singh Gill |
| Uni-Charm Kabushiki Kaisha (Uni-Charm Corp) | Respondent | Corporation | Application to register trademark refused | Lost | Patrick Yap |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tan Lee Meng | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Dedar Singh Gill | Drew & Napier LLC |
| Patrick Yap | K L Tan & Associates |
4. Facts
- Johnson & Johnson owns the registered trademark “Carefree” for hygiene products.
- Uni-Charm applied to register the trademark “Careree” for incontinence pads.
- Johnson & Johnson opposed the registration, claiming trademark infringement and passing off.
- Johnson & Johnson's “Carefree” products have been sold in Singapore for over 15 years.
- Johnson & Johnson's sales of “Carefree” products in Singapore amounted to $2.3m in 2002.
- Johnson & Johnson spent $528,000 on advertising “Carefree” products in Singapore in 2002.
- The goods of both parties are classified in the same category under the Customs (Duties) Order.
5. Formal Citations
- Johnson & Johnson v Uni-Charm Kabushiki Kaisha (Uni-Charm Corp), OS 657/2006, [2006] SGHC 241
6. Timeline
| Date | Event |
|---|---|
| Uni-Charm applied for registration of trademark “Careree” | |
| Application for registration of trademark “Careree” was advertised | |
| Johnson & Johnson lodged a Notice of Opposition | |
| Hearing of the Opposition | |
| Judgment reserved |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court found that the marks were similar and there was a likelihood of confusion, thus allowing the appeal.
- Category: Substantive
- Sub-Issues:
- Similarity of marks
- Similarity of goods
- Likelihood of confusion
- Passing Off
- Outcome: The court found that the use of the “Careree” mark was likely to lead to passing off, thus allowing the appeal.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage
8. Remedies Sought
- Refusal of registration of the “Careree” trademark
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
10. Practice Areas
- Intellectual Property Law
- Trade Mark Litigation
11. Industries
- Hygiene Products
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Pianotist Co’s Application | N/A | Yes | (1906) 23 RPC 774 | N/A | Cited for the principle of determining similarity between trademarks by considering look, sound, nature of customer, and surrounding circumstances. |
| Aristoc Ltd v Rysta Ltd | N/A | Yes | [1945] 62 RPC 72 | N/A | Cited for the principle that aural similarity of trademarks depends on first impression and imperfect recollection. |
| London Lubricants | N/A | Yes | (1925) 42 RPC 264 | N/A | Cited for the principle that the first syllable of a mark is most important. |
| Premier Brands UK Ltd v Typhoon Europe Ltd | N/A | Yes | [2000] FSR 767 | N/A | Cited to show that conceptual differences can exist between marks, but distinguished on the basis of visual similarity in the present case. |
| Jordache Enterprises Inc v Millennium Pte Ltd | N/A | Yes | [1984-1985] SLR 566 | Singapore | Cited as an example of similar sounding trademarks ('Jordane' and 'Jordache'). |
| Mystery Drinks GmbH v OHIM | N/A | Yes | [2004] ETMR (18) 217 | N/A | Cited as an example of similar sounding trademarks ('Mystery' and 'Mixery'). |
| Pruriderm Trade Mark | N/A | Yes | [1985] RPC 187 | N/A | Cited as an example of similar sounding trademarks ('Pruriderm' and 'Prioderm'). |
| Icart SA’s Application | N/A | Yes | [2000] ETMR 180 | N/A | Cited as an example of similar sounding trademarks ('Eucerin' and 'Eudermin'). |
| British Sugar Plc v James Robertson & Sons Ltd | N/A | Yes | [1996] RPC 281 | N/A | Cited for the factors relevant to assessing similarity of goods and services in trademark cases. |
| Inadine Trade Mark | N/A | Yes | [1992] RPC 421 | N/A | Cited as an example of similar goods ('Inadine' and 'Anadin'). |
| Polo/Lauren Co, LP v Shop-In Department Shoe Pte Ltd | Court of Appeal | Yes | [2006] 2 SLR 690 | Singapore | Cited for the principle that confusion in trademark infringement is a matter of perception. |
| Perry v Truefitt | N/A | Yes | Perry v Truefitt (1842) 6 Beav 66 | N/A | Cited for the rationale behind the passing off action. |
| Wild Child Trade Mark | N/A | Yes | [1988] RPC 455 | N/A | Cited for the elements of an action for passing off. |
| Nippon Paint (Singapore) Co Pte Ltd v ICI Paints (Singapore) Pte Ltd | N/A | Yes | [2001] 1 SLR 1 | Singapore | Cited for the principle that courts are slow to allow a monopoly of descriptive words. |
| Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd and Another and Another Appeal | N/A | Yes | [2000] 3 SLR 145 | Singapore | Cited for the principle that courts are slow to allow a monopoly of descriptive words. |
| Wagamama v City Centre Restaurants | N/A | Yes | [1995] FSL 713 | N/A | Cited as an example of misrepresentation in a passing off action. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 1999 Rev Ed) | Singapore |
| Section 8(2) Trade Marks Act (Cap 332, 1999 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Passing off
- Carefree
- Careree
- Likelihood of confusion
- Goodwill
- Hygiene products
- Incontinence pads
- Catamenial products
15.2 Keywords
- Trade mark infringement
- Passing off
- Carefree
- Careree
- Hygiene products
- Singapore
- Intellectual property
16. Subjects
- Trade Mark Law
- Intellectual Property Law
- Passing Off
17. Areas of Law
- Trade Mark Law
- Passing Off