Chai Chyau Ling v Racing Technology: Trade Mark Infringement & Passing Off

In Chai Chyau Ling (doing business as Racetech Auto) v Racing Technology Pte Ltd, the High Court of Singapore dismissed Racing Technology Pte Ltd's appeal against the Assistant Registrar's decision granting summary judgment to Chai Chyau Ling for trade mark infringement and passing off. The court found that Racing Technology Pte Ltd's use of the 'RACE TECH' logo infringed on Chai Chyau Ling's registered 'RACETECH' trade mark and constituted passing off, as it was likely to cause confusion among the public. The court upheld the Assistant Registrar's decision.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Racing Technology Pte Ltd's appeal against summary judgment for trade mark infringement and passing off was dismissed. The court found likelihood of confusion.

1.7 Decision Date

3 May 2009

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Chai Chyau Ling (doing business as Racetech Auto)	Plaintiff, Respondent	Individual	Judgment for Plaintiff	Won	G Radakrishnan of Infinitus Law Corporation
Racing Technology Pte Ltd	Defendant, Appellant	Corporation	Appeal Dismissed	Lost	Patrick Chin of Chin Patrick & Co G Dinagaran of Thomas Tham Dinagaran & Company

3. Judges

Judge Name	Title	Delivered Judgment
Chan Seng Onn	Judge	Yes

4. Counsels

Counsel Name	Organization
G Radakrishnan	Infinitus Law Corporation
Patrick Chin	Chin Patrick & Co
G Dinagaran	Thomas Tham Dinagaran & Company

4. Facts

Chai Chyau Ling registered 'Racetech Auto' on 24 October 1998.
Chai Chyau Ling registered the 'RACETECH' trade mark on 20 October 2006.
Racing Technology Pte Ltd was incorporated on 2 May 2006.
Racing Technology Pte Ltd's logo comprises the words 'RACE TECH'.
Racing Technology Pte Ltd used the logo in its signage and advertising.
Chai Chyau Ling claimed Racing Technology Pte Ltd infringed her trade mark and passed off her trade name.
Racing Technology Pte Ltd alleged Chai Chyau Ling copied its logo and registered the trade mark in bad faith.

5. Formal Citations

Chai Chyau Ling (doing business as Racetech Auto) v Racing Technology Pte Ltd, Suit 422/2008, RA 393/2008, [2009] SGHC 105

6. Timeline

Date	Event
1978-10-01	Fong Kim Exhaust System incorporated
1988-09-01	Racetech Autosports Accessories registered
1998-10-15	Racetech Autosports Accessories de-registered
1998-10-24	Racetech Auto registered
2002-01-01	Fong Kim converted into a private limited company
2006-05-02	Racing Technology Pte Ltd incorporated
2006-10-20	RACETECH trade mark registered
2007-12-05	Letter sent to Appellant requesting to desist from using the Logo
2007-12-18	Letter sent to Appellant requesting to desist from using the Logo
2008-03-26	Letter sent to Appellant informing legal action would commence
2008-04-02	Appellant's solicitors replied taking instructions
2008-04-09	Respondent prepared to hold hands until this date
2008-06-19	Suit commenced for infringement and passing off
2008-10-06	AR Teo Guan Siew delivered decision
2009-05-04	Appeal dismissed

7. Legal Issues

Trade Mark Infringement
- Outcome: The court found that the Appellant's logo was similar to the Respondent's trade mark and that there was a likelihood of confusion, thus constituting trade mark infringement.
- Category: Substantive
- Sub-Issues:
  - Similarity of marks
  - Likelihood of confusion
  - Use in the course of trade
Passing Off
- Outcome: The court found that the Appellant had misrepresented its business as being connected to the Respondent's, causing probable damage to the Respondent's goodwill, thus constituting passing off.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage

8. Remedies Sought

Injunction
Inquiry into damages

9. Cause of Actions

Trade Mark Infringement
Passing Off

10. Practice Areas

Trade Mark Infringement
Intellectual Property Litigation

11. Industries

Automotive
Retail

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Nation Fittings(M) Sdn Bhd v Oystertec Plc and Another Suit	High Court	Yes	[2006] 1 SLR 712	Singapore	Cited for the requirement of use as a trade mark in the context of alleged trade mark infringement.
British Sugar plc v James Robertson & Sons Ltd	N/A	Yes	[1996] RPC 281	England and Wales	Cited for the systematic approach to finding infringement under s 27(2)(b) of the Trade Marks Act.
The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd	Court of Appeal	Yes	[2006] 2 SLR 690	Singapore	Cited for the test for infringement, requiring similarity of sign and mark, similar goods/services, and likelihood of confusion.
Kellogg Co v Pacific Food Products Sdn Bhd	N/A	Yes	[1999] 2 SLR 651	Singapore	Cited for the principle that the court can look outside the mark and sign to assess likelihood of confusion.
McDonald’s Corp v Future Enterprises Pte Ltd	N/A	Yes	[2005] 1 SLR 177	Singapore	Cited for the principle that the court can look outside the mark and sign to assess likelihood of confusion.
SA Société LTJ Diffusion v Sadas Vertbaudet SA	European Court of Justice	Yes	[2003] FSR 34	European Union	Cited for the strict interpretation of 'identical' in trade mark law.
Louis Vuitton Malletier v City Chain Stores (S) Pte Ltd and Another Matter	High Court	Yes	[2009] SGHC 24	Singapore	Cited for the principle that minor differences in designs are insignificant for trade mark infringement.
Love & Co Pte Ltd v Carat Club Pte Ltd	High Court	Yes	[2008] SGHC 158	Singapore	Cited for the standard of the 'average consumer' in assessing trade mark similarity.
Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV	European Court of Justice	Yes	[2000] FSR 77	European Union	Cited for the imperfect picture of marks that the average consumer keeps in mind.
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd	N/A	Yes	[2005] 4 SLR 816	Singapore	Cited for the principle that differences in marks can distinguish them even with a common denominator.
Lee Cooper Group plc v Levi Strauss & Co	Singapore Registry of Trade Marks and Patents	Yes	[1995] AIPR 457	Singapore	Cited for the significance of word marks and how the public orders goods under the mark.
Amanresorts Limited and Another v Novelty Pte Ltd	High Court	Yes	[2008] 2 SLR 32	Singapore	Cited for the principle that font type and color are immaterial in word marks where the distinctiveness rests within the word itself.
de Cordova v Vick Chemical Coy	N/A	Yes	(1951) 68 RPC 103	N/A	Cited for the principle that the ascertainment of an essential feature is not to be by ocular test alone.
In the matter of an Application by the Pianotist Company Ld for the Registration of a Trade Mark	N/A	Yes	(1906) 23 RPC 774	N/A	Cited for the principle that you must judge words by their look and sound.
The European Limited v The Economist Newspaper Limited	N/A	Yes	[1998] FSR 283	N/A	Cited for the principle that the similarity must be such as to be likely to cause confusion in the mind of the public.
Polo/Lauren Co LP v United States Polo Association	High Court	Yes	[2002] 1 SLR 326	Singapore	Cited for the test applied to people with ordinary care and intelligence.
Morning Star Co-op Society v Express Newspapers	N/A	Yes	[1979] FSR 113	N/A	Cited for the principle that the test is not concerned with the 'moron in a hurry'.
Newsweek Inc v British Broadcasting Corp	N/A	Yes	[1979] RPC 441	N/A	Cited for the principle that the test is whether ordinary, sensible members of the public would be confused.
Wagamama Ltd v City Centre Restaurants Plc	N/A	Yes	[1995] FSR 713	N/A	Cited for the principle that the question of whether trade mark infringement had taken place is more a matter of feel than science.
CDL Hotels International Ltd v Pontiac Marina Pte Ltd	Court of Appeal	Yes	[1998] 2 SLR 550	Singapore	Cited for the three indispensable elements in establishing a claim of passing-off.
Pontiac Marina Pte Ltd v CDL Hotels International Ltd	N/A	Yes	[1997] 3 SLR 726	Singapore	Cited for the principle that the law has not laid down any restrictions as to how goodwill may be acquired.
Erven Warnink BV v J Townend & Sons (Hull) Ltd	N/A	Yes	[1979] AC 731	N/A	Cited for the principle that misrepresentation in passing-off need not be made fraudulently or with any intention to deceive.
Reckitt & Colman Products Ltd v Borden Inc	N/A	Yes	[1990] 1 WLR 491	N/A	Cited for the principle that no man may pass off his goods as those of another.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act	Singapore
Trade Marks Act (Cap. 332, 2005 Rev Ed)	Singapore
Rules of Court (Cap. 322, R 5, 2006 Rev Ed)	Singapore
Evidence Act, Cap.97. 1997 Rev Ed	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark
Passing off
Infringement
Likelihood of confusion
Goodwill
Misrepresentation
RACETECH
RACE TECH
Vehicle-related services
Portmanteau

15.2 Keywords

Trade mark infringement
Passing off
RACETECH
RACE TECH
Automotive services
Singapore High Court

17. Areas of Law

Area Name	Relevance Score
Trademarks	95
Passing Off	90
Trade names	85
Summary Judgement	30
Contract Law	10

16. Subjects

Trade Mark Law
Intellectual Property
Passing Off