Chong Peter v Triple 8 Enterprise: Trade Mark Infringement & Passing Off in KTV Industry

Chong Peter, trading as Myths KTV & Disco Pub, sued Triple 8 Enterprise Pte Ltd, trading as Mirage Deluxe KTV & Nightclub, in the High Court of Singapore, alleging trade mark infringement and passing off. The plaintiff claimed that the defendant's use of the words '' in its business sign infringed the plaintiff's registered trade mark and misrepresented the defendant's business as the plaintiff's. Justice Choo Han Teck dismissed the plaintiff's claim, finding no likelihood of confusion on the part of the public and a failure to establish goodwill, misrepresentation, or damage.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Plaintiff's claim dismissed

1.3 Case Type

Civil

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Chong Peter sued Triple 8 for trade mark infringement and passing off. The court dismissed the claim, finding no likelihood of confusion.

1.7 Decision Date

10 January 2010

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Chong Peter (trading as Myths KTV & Disco Pub)	Plaintiff	Partnership	Claim Dismissed	Lost	Leonard Loo Peng Chee of Leonard Loo LLP Edwin Loo Tien Chee of Leonard Loo LLP
Triple 8 Enterprise Pte Ltd (trading as Mirage Deluxe KTV & Nightclub)	Defendant	Corporation	Judgment for Defendant	Won	Tan Chau Yee of Harry Elias Partnership Bernice Tan Huilin of Harry Elias Partnership

3. Judges

Judge Name	Title	Delivered Judgment
Choo Han Teck	Judge	Yes

4. Counsels

Counsel Name	Organization
Leonard Loo Peng Chee	Leonard Loo LLP
Edwin Loo Tien Chee	Leonard Loo LLP
Tan Chau Yee	Harry Elias Partnership
Bernice Tan Huilin	Harry Elias Partnership

4. Facts

The plaintiff operates a karaoke pub under the name “Myths KTV DISCO PUB”.
The defendant operates a karaoke night club under the name “Mirage Palace Exclusive Niteclub”.
The plaintiff is the registered proprietor of the trade mark “ KTV and DISCO PUB”.
The plaintiff claimed the defendant infringed its trade mark by using the words '' in its business sign.
The plaintiff also claimed the defendant was passing off its business as the plaintiff’s.
The defendant's establishment is more sophisticated and operates on a larger, more glamorous scale than the plaintiff’s pub.
The plaintiff's profits increased from approximately $120,000 in 2007 to $220,000 in 2008.

5. Formal Citations

Chong Peter (trading as Myths KTV & Disco Pub) v Triple 8 Enterprise Pte Ltd (trading as Mirage Deluxe KTV & Nightclub), Suit No 133 of 2009, [2010] SGHC 9

6. Timeline

Date	Event
2005-12-06	Plaintiff registered a partnership under the name “Myths KTV & Disco Pub”
2006-10-01	Defendant began fitting out its premises at Orchard Plaza
2006-11-22	Defendant registered a sole proprietorship under the name “Mirage Deluxe KTV & Nightclub”
2007-01-01	Parties became aware of each other’s existence and business presence
2007-02-07	Mr Quek applied to register the trade mark “Mirage Palace Exclusive Niteclub”
2007-03-19	Plaintiff successfully applied to register its trade mark “ KTV and DISCO PUB”
2009-01-30	Plaintiff sent a letter of demand to the defendant
2009-02-16	Defendant denied any infringement of the plaintiff’s trade mark
2010-01-11	Judgment reserved

7. Legal Issues

Trade Mark Infringement
- Outcome: The court held that there was no trade mark infringement because the defendant's sign was not similar to the plaintiff's registered trade mark and there was no likelihood of confusion on the part of the public.
- Category: Substantive
- Sub-Issues:
  - Similarity of marks
  - Likelihood of confusion
- Related Cases:
  - [2005] 4 SLR 816
Passing Off
- Outcome: The court held that the plaintiff failed to establish the elements of goodwill, misrepresentation, and damage necessary for a passing off action.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage
- Related Cases:
  - [2003] 4 SLR 755

8. Remedies Sought

Injunction
Damages

9. Cause of Actions

Trade Mark Infringement
Passing Off

10. Practice Areas

Intellectual Property Litigation

11. Industries

Entertainment
Nightlife

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd	High Court	Yes	[2005] 4 SLR 816	Singapore	Cited for observations on the similarity of marks, specifically visual, aural or phonetic, and conceptual similarity.
The European Limited v The Economist Newspapers Limited	N/A	Yes	[1996] FSR 431	N/A	Cited for the principle that when there is a common denominator between a mark and a sign, the differences must be examined to determine if the challenged sign sufficiently distinguishes itself.
Samsonite Corp v Montres Rolex SA	N/A	Yes	[1995] AIPR 244	N/A	Cited to illustrate that the inclusion of a registered mark in a challenged sign does not necessarily cause confusion.
Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd	N/A	Yes	(1993) 26 IPR 246	N/A	Cited to emphasize that decisions holding that adding a word to a mark constitutes infringement should not be applied mechanically.
Compass Publishing BV v Compass Logistics Ltd	N/A	Yes	[2004] EWHC 520	England and Wales	Cited for the principle that the proper comparison is with a notional and fair use of the registered mark in question.
Morcream Products Ltd v Heatherfresh (Foods) Ltd	N/A	Yes	[1972] RPC 799	N/A	Cited as an example where an injunction was granted specifically against business on telephone due to aural similarity.
Northern Foods Grocery Group Ltd’s Community Trade Mark Application; sub nom. FOX’S Trade Mark	N/A	Yes	[2002] ETMR 48	N/A	Cited as an example where marks different in appearance were held sufficiently similar aurally to block registration.
Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd	N/A	Yes	[2003] 4 SLR 755	Singapore	Cited for the 'oft-cited trinity of requirements for a passing off action': goodwill, misrepresentation, and damage.
IRC v Muller & Co’s Margarine Ltd	N/A	Yes	[1901] AC	N/A	Cited for the definition of 'goodwill' as 'the attractive force which brings in custom'.
Nation Fittings (M) Sdn Bhd v Oystertec Plc	N/A	Yes	[2006] 1 SLR 712	Singapore	Cited for the principle that mere sales without more are not necessarily coincident with goodwill.
Benchairs Limited v Chair Centre Limited	N/A	Yes	[1974] RPC 429	N/A	Cited for the principle that anyone is entitled to copy and sell any article on the market, and false representation and passing off only arise when a defendant does something further which suggests that the article which he is selling is that of the plaintiff.
Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd	N/A	Yes	[1991] SLR 133	Singapore	Cited for the test to be applied in a passing off action: whether ordinary sensible members of the public would be confused.
Newsweek Inc v British Broadcasting Corporation	N/A	Yes	[1979] RPC 441	N/A	Cited for the test to be applied in a passing off action: whether ordinary sensible members of the public would be confused.
Jumbo Seafood Pte Ltd and Another v Hong Kong Jumbo Seafood Restaurant Pte Ltd	N/A	Yes	[1998] 1 SLR 860	Singapore	Cited as an example where a survey amongst members of the public was conducted to adduce evidence of confusion on the part of the public.
Irvine v Talksport Ltd	N/A	Yes	[2002] 2 All ER 414	N/A	Cited for the principle that a defendant cannot avoid a finding of passing off by the mere fact that its goods or services are of as good or better quality than the plaintiff’s.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark
Passing off
Likelihood of confusion
Goodwill
Misrepresentation
Aural similarity
Visual similarity
KTV
Disco Pub

15.2 Keywords

Trade mark infringement
Passing off
KTV
Nightclub
Singapore
Intellectual property

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Passing Off	85
Commercial Law	10
Contract Law	10

16. Subjects

Intellectual Property
Trade Marks
Business Law