City Chain v Louis Vuitton: Trade Mark Infringement, Passing Off & Well-Known Trade Marks
In City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier, the Court of Appeal of Singapore heard an appeal regarding the alleged infringement by City Chain Stores (S) Pte Ltd of Louis Vuitton Malletier's registered Flower Quatrefoil trade mark, a claim of passing off, and a breach of Section 55 of the Trade Marks Act concerning well-known trade marks. The court allowed the appeal, finding that Louis Vuitton Malletier had not established its claims for trade mark infringement, passing off, or breach of Section 55 of the Trade Marks Act.
1. Case Overview
1.1 Court
Court of Appeal of the Republic of Singapore1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier concerns trade mark infringement, passing off, and well-known trade marks. The Court of Appeal allowed the appeal.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Louis Vuitton Malletier | Respondent | Corporation | Claims Dismissed | Lost | |
| City Chain Stores (S) Pte Ltd | Appellant | Corporation | Appeal Allowed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chao Hick Tin | Justice of the Court of Appeal | Yes |
| Andrew Phang Boon Leong | Justice of the Court of Appeal | No |
| V K Rajah | Justice of the Court of Appeal | No |
4. Counsels
4. Facts
- City Chain launched a range of watches in Singapore bearing the SOLVIL trade mark and flower devices.
- Louis Vuitton alleged that City Chain's flower design infringed its Flower Quatrefoil mark.
- The Flower Quatrefoil mark is part of the Louis Vuitton Monogram Canvas design.
- The Solvil Flower is displayed in a randomly-repeated pattern on the Solvil watch dial and strap.
- The Solvil watches are priced significantly lower than Louis Vuitton watches.
- Louis Vuitton's watches are sold in exclusive boutiques, while Solvil watches are sold in City Chain stores.
5. Formal Citations
- City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier, CA 150/2008, [2009] SGCA 53
- Louis Vuitton Malletier v City Chain Stores (S) Pte Ltd, , [2009] 2 SLR 684
6. Timeline
| Date | Event |
|---|---|
| City Chain Stores (S) Pte Ltd incorporated in Singapore | |
| Louis Vuitton started manufacturing and selling watches | |
| City Chain launched Solvil watches in Singapore | |
| Private investigator visited City Chain outlets | |
| Louis Vuitton filed complaints against City Chain | |
| Search warrants executed at City Chain outlets | |
| Charges issued against City Chain for breaching s 49(c) of the Act | |
| Louis Vuitton filed a writ of summons against City Chain | |
| Judgment reserved |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court held that the Appellant's use of the Solvil Flower on its watches did not infringe the Respondent's registered Flower Quatrefoil mark.
- Category: Substantive
- Sub-Issues:
- Use of sign as a trade mark
- Similarity of marks
- Likelihood of confusion
- Passing Off
- Outcome: The court held that the Respondent had not established the elements of passing off, including goodwill, misrepresentation, and damage.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage
- Protection of Well-Known Trade Marks
- Outcome: The court held that the Respondent's Flower Quatrefoil mark was not well-known to the public at large in Singapore and that Section 55 of the Act had not been breached.
- Category: Substantive
- Sub-Issues:
- Well-known to the public at large
- Dilution
- Tarnishment
8. Remedies Sought
- Injunction
- Declaration
- Inquiry into damages
- Delivery up of infringing articles
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
- Breach of statutory duty under s 55 of the Trade Marks Act
10. Practice Areas
- Intellectual Property Litigation
- Trade Mark Infringement
11. Industries
- Retail
- Luxury Goods
- Fashion
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Nation Fittings (M) Sdn Bhd v Oystertec Plc | High Court | Yes | [2006] 1 SLR 712 | Singapore | Discussed the requirement of use of the infringing sign as a trade mark. |
| R v Johnstone | House of Lords | Yes | [2003] FSR 42 | United Kingdom | Discussed the differing approaches of Lord Nicholls and Lord Walker regarding trade mark infringement. |
| Arsenal Football Club Plc v Reed | European Court of Justice | Yes | [2003] Ch 454 | European Union | Addressed whether the infringing use is liable to affect the functions of the registered trade mark. |
| British Sugar Plc v James Robertson & Sons Ltd | High Court | Yes | [1996] RPC 281 | England and Wales | Discussed the issue of trade mark infringement. |
| Arsenal Football Club Plc v Reed | English Court of Appeal | Yes | [2003] RPC 39 | England and Wales | Discussed the ECJ decision in Arsenal v Reed and the broader Community approach. |
| Anheuser-Busch Inc v Budejovicky Budvar, NárodnÍ Podnik | European Court of Justice | Yes | [2005] ETMR 27 | European Union | Applied the broader Community approach in an ECJ case. |
| Adam Opel AG v Autec AG | European Court of Justice | Yes | [2007] ETMR 33 | European Union | Applied the broader Community approach in an ECJ case. |
| Celine Sarl v Celine SA | European Court of Justice | Yes | [2007] ETMR 80 | European Union | Applied the broader Community approach in an ECJ case. |
| Rxworks Ltd v Dr Paul Hunter | High Court | Yes | [2008] RPC 13 | England and Wales | Explained that the reason why descriptive use was excluded from protection was because such use was regarded as not affecting those interests that trade mark law was there to protect. |
| Verimark (Pty) Ltd v BMW AG | Supreme Court of Appeal | Yes | [2007] SCA 53 (RSA) | South Africa | Considered and accepted the broader Community approach. |
| Bravado Merchandising Services Ltd v Mainstream Publishing (Edinburgh) Ltd | Scottish Court of Session (Outer House) | Yes | [1996] FSR 205 | Scotland | Cited for the proposition that use as a trade mark is necessary in the context of alleged trade mark infringement. |
| Hölterhoff v Freiesleben | European Court of Justice | Yes | [2002] FSR 52 | European Union | Cited for the proposition that use as a trade mark is necessary in the context of alleged trade mark infringement. |
| Whirlpool Corp v Kenwood Ltd | High Court | Yes | [2009] RPC 2 | England and Wales | Held that a defence to the effect that it was being used non-distinctively stood or fell on the proposition that there was no use for the purpose of distinguishing any goods or services in a manner liable to affect the functions of the protected trade mark. |
| Electrocoin Automatics Limited v Coinworld Limited | High Court of England and Wales | Yes | [2004] EWHC 1498 (Ch) | England and Wales | Concluded that the rights conferred by registration of a trade mark are not engaged by use of a sign other than for the purposes of distinguishing goods or services. |
| L’Oreal SA v Bellure NV | Court of Appeal | Yes | [2008] ETMR 1 | England and Wales | Recognized the linkage of the protection of a registered mark to the function of the registered mark as a guarantee of origin. |
| L’Oreal SA v eBay International AG | High Court | Yes | [2009] EWHC 1094 (Ch) | England and Wales | Criticized the broader Community approach adopted by the ECJ. |
| SA Société LTJ Diffusion v Sadas Vertbaudet SA | European Court of Justice | Yes | [2003] FSR 34 | European Union | Discussed the strict interpretation of 'identical' under s 27(1) of the Act. |
| Reed Executive plc v Reed Business Information Ltd | High Court | Yes | [2004] RPC 40 | England and Wales | Provided an illustration of the question of whether a sign is identical with a registered mark under s 27(1) of the Act. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | Court of Appeal | Yes | [2006] 2 SLR 690 | Singapore | Explained the factors to be shown to establish an infringement under s 27(2)(b) of the Act. |
| Levi Strauss & Co v Casucci SpA | European Court of Justice | Yes | [2007] FSR 8 | European Union | Stated that the question of likelihood of confusion is to be determined as at the time when the alleged infringing use of the sign commenced. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | High Court | Yes | [2005] 4 SLR 816 | Singapore | Opined that where the user of a potentially infringing sign had taken pains to distinguish his products from the registered proprietor’s goods and services, the effect might be that the likelihood of confusion, if any, was merely hypothetical or speculative. |
| Samsonite Corp v Montres Rolex SA | Registrar of Trade Marks | Yes | [1995] AIPR 244 | Singapore | Observed that luxury goods are bought after careful inspection and deliberation. |
| Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd | High Court | Yes | [2006] 1 SLR 401 | Singapore | Noted that the mere association of the public between the two signs based on their similar use is not in itself a sufficient basis for concluding that there is a likelihood of confusion on the part of members of the public in the absence of any possibility of a misapprehension as to the origin of the goods and services. |
| Novelty Pte Ltd v Amanresorts Ltd | Court of Appeal | Yes | [2009] 3 SLR 216 | Singapore | Held that the two essential features of goodwill are that it is the association of a good, service or business on which the plaintiff’s mark, name, labelling, etc has been applied with a particular source and this association is an attractive force which brings in custom. |
| CDL Hotels International Ltd v Pontiac Marina Pte Ltd | Court of Appeal | Yes | [1998] 2 SLR 550 | Singapore | Stated that the relevant date on which the reputation of the plaintiff in a passing-off action should be considered is the date on which the conduct complained of commences. |
| Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd | Court of Appeal | Yes | [1991] SLR 133 | Singapore | Held that it is not sufficient to establish goodwill in the Louis Vuitton brand generally, but rather, goodwill in the Flower Quatrefoil mark must be proved. |
| Love & Co Pte Ltd v The Carat Club Pte Ltd | High Court | Yes | [2009] 1 SLR 561 | Singapore | Held that the average discerning consumer would not normally dissect a trade mark into its constituent parts to analyse them but he will generally view the trade mark as a whole. |
| Da Vinci Collection Pte Ltd v Richemont International SA | Court of Appeal | Yes | [2006] 3 SLR 560 | Singapore | Stated that the respondent’s reputation in its watches was in the “IWC” mark, which is a prestigious international brand, rather than in the name mark itself. |
| Zheng Yu Shan v Lian Beng Construction (1988) Pte Ltd | High Court | Yes | [2009] 2 SLR 587 | Singapore | Held that the requirement of “certainty and precision” applies with no less force to any other fact which is alleged to be judicially noticeable. |
| Microsoft Corporation’s Applications | UK Trade Marks Registry | Yes | [1997–1999] | United Kingdom | Held that the WINDOWS trade mark was not a well-known mark. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(1) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(2) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 55(3) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 55(4) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(7) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(8) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark infringement
- Passing off
- Well-known trade mark
- Flower Quatrefoil mark
- Solvil Flower
- Likelihood of confusion
- Goodwill
- Misrepresentation
- Dilution
- Tarnishment
- Monogram
- Trade mark use
15.2 Keywords
- Trade mark
- Infringement
- Passing off
- Well-known
- Louis Vuitton
- City Chain
- Watches
- Singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Passing Off | 85 |
| Commercial Law | 10 |
| Contract Law | 10 |
| Corporate Law | 5 |
16. Subjects
- Intellectual Property
- Trade Marks
- Passing Off