Hai Tong Co v Ventree Singapore: Trade Mark Infringement of 'Lady Rose' Mark
Hai Tong Co Pte Ltd (“Plaintiff”) sued Ventree Singapore Pte Ltd (“1st Defendant”) and SKY (“2nd Defendant”) in the High Court of Singapore, alleging trade mark infringement and passing off of its “Lady Rose” mark. The Plaintiff claimed the Defendants infringed its registered trade mark by importing and selling “Rose Lady” cosmetic products. Chan Seng Onn J found that the Defendants had infringed the Plaintiff’s “Lady Rose” mark under s 27(2)(b) of the Trade Marks Act and granted injunctions and ancillary orders. The passing off claim was dismissed.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Judgment for Plaintiff
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Hai Tong Co sues Ventree Singapore for trade mark infringement and passing off. The court found trade mark infringement but dismissed the passing off claim.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Hai Tong Co. (Pte) Ltd. | Plaintiff | Corporation | Injunction granted to restrain trade mark infringement | Won | Gill Dedar Singh, Tang Li Ling Yvonne, Chiang Hui Shan Michelle |
| Ventreee Singapore Pte Ltd | Defendant | Corporation | Trade mark infringement claim upheld, Passing off claim dismissed | Lost, Won | Wong Siew Hong, Ong Zhenhui Wayne |
| SKY | Defendant | Partnership | Trade mark infringement claim upheld, Passing off claim dismissed | Lost, Won | Wong Siew Hong, Ong Zhenhui Wayne |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chan Seng Onn | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Gill Dedar Singh | Drew & Napier LLC |
| Tang Li Ling Yvonne | Drew & Napier LLC |
| Chiang Hui Shan Michelle | Drew & Napier LLC |
| Wong Siew Hong | Eldan Law LLP |
| Ong Zhenhui Wayne | Eldan Law LLP |
4. Facts
- Plaintiff is the registered proprietor of the “Lady Rose” mark.
- The Plaintiff has been using the “Lady Rose” mark since 1960.
- The 1st Defendant entered into a Sole Agent Agreement with VOV Cosmetics.
- The 1st Defendant imported “Rose Lady” products into Singapore.
- The 2nd Defendant sold “VOV” Rose Lady Skin Cover.
- Plaintiff received complaints about the quality of certain “Lady Rose” products.
- The Plaintiff alleged that the Defendants infringed the Plaintiff’s “Lady Rose” mark.
5. Formal Citations
- Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another, Suit No 669 of 2010, [2012] SGHC 104
6. Timeline
| Date | Event |
|---|---|
| Plaintiff and/or its predecessors started using the 'Lady Rose' mark | |
| 'Lady Rose' mark registered by Plaintiff’s predecessor | |
| VOV trade mark registered in Singapore | |
| 2nd Defendant stopped selling Plaintiff's products | |
| 1st Defendant entered into Sole Agent Agreement with VOV Cosmetics | |
| 2nd Defendant started selling “VOV” Rose Lady Skin Cover | |
| Plaintiff received complaints about quality of 'Lady Rose' products | |
| Plaintiff issued Letter of Demand to 1st Defendant | |
| 1st Defendant denied trade mark infringement allegations | |
| Plaintiff filed action against the Defendants | |
| Decision Date |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court found that the Defendants had infringed the Plaintiff’s “Lady Rose” mark under s 27(2)(b) of the TMA.
- Category: Substantive
- Sub-Issues:
- Similarity of Marks
- Likelihood of Confusion
- Use in the Course of Trade
- Related Cases:
- [2006] 2 SLR(R) 690
- Passing Off
- Outcome: The court found that the passing off claim had not been made out and dismissed it accordingly.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage to Goodwill
- Related Cases:
- [2009] 3 SLR(R) 216
8. Remedies Sought
- Injunction
- Delivery-up
- Inquiry as to damages or account of profits
- Payment of sums found due
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
10. Practice Areas
- Intellectual Property Litigation
- Trade Mark Infringement
11. Industries
- Cosmetics
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd | Court of Appeal | Yes | [2006] 2 SLR(R) 690 | Singapore | Cited for the elements required to establish trade mark infringement under s 27(2)(b) of the TMA. |
| Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long and others (trading as Polykwan Trading Co) | N/A | Yes | [2003] 4 SLR(R) 92 | Singapore | Cited for the principle that the combination of two common words can be distinctive. |
| Richemont International SA v Da Vinci Collections Pte Ltd | N/A | Yes | [2006] 4 SLR(R) 369 | Singapore | Cited for the principle that a product may have more than one trade mark. |
| British Sugar PLC v James Robertson & Sons Ltd | N/A | Yes | British Sugar PLC v James Robertson & Sons Ltd (1996) RPC 281 | N/A | Cited for the principle that you can have two trade marks used together. |
| Neutrogena Corporation v Golden Ltd (t/a Garnier) | N/A | Yes | [1996] RPC 473 | N/A | Cited regarding the visibility of a name on product packaging and its impact on consumer perception. |
| MediaCorp News Pte Ltd v Astro All Asia Networks plc | N/A | Yes | [2009] 4 SLR(R) 496 | Singapore | Cited for the principle that the law does not require visual, aural and conceptual similarities to be made out before finding that an allegedly infringing sign is similar to the registered trade mark. |
| Ozone Community v Advance Magazine Publishers Inc | N/A | Yes | [2010] 2 SLR 459 | Singapore | Cited for the factors to consider when determining visual similarity of word marks. |
| Hedgefund Intelligence Ltd v OHIM | N/A | Yes | Hedgefund Intelligence Ltd v OHIM (2009) Cast T-67/08 | N/A | Cited for the principle that marks consisting of inverted words can be visually similar. |
| Macquarie Bank Limited v Great Southern Loan (SP) Pty Ltd | N/A | Yes | [2007] 73 IPR 573 | N/A | Cited for the principle that marks with identical words in an inverted sequence can be visually similar. |
| R&C Products Pte Ltd v Hunters Products Pte Ltd | N/A | Yes | [1998] ATPR 40-839 | N/A | Cited for the principle that marks with identical words in an inverted sequence can be visually similar. |
| Automobile Club De L’ouest v Gardiakos | N/A | Yes | [2006] 66 IPR 191 | N/A | Cited for the principle that marks with identical words in an inverted sequence can be visually similar. |
| Nautical Concept Pte Ltd v Jeffrey Mark Richard | N/A | Yes | [2007] 1 SLR(R) 1071 | Singapore | Cited for the principle that when comparing two marks visually, what is relevant is the ‘imperfect recollection’ of the consumer. |
| Caterpillar Inc v Ong Eng Peng | N/A | Yes | [2006] 2 SLR(R) 669 | Singapore | Cited for the principle that the person who is confused often makes comparison from memory removed in time and space from the marks. |
| Future Enterprises Pte Ltd v McDonald’s Corp | N/A | Yes | [2006] 4 SLR(R) 629 | Singapore | Cited for the principle that in assessing aural similarity, allowance must be made for “imperfect recollection” and “careless pronunciation and speech”. |
| Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd | High Court | Yes | [2011] SGHC 176 | Singapore | Cited for the principle that the issue of likelihood of confusion is to be determined as at the time when the alleged infringing use of the sign commenced. |
| Novelty Pte Ltd v Amanresorts Ltd and another | N/A | Yes | [2009] 3 SLR(R) 216 | Singapore | Cited for the elements to succeed in an action for passing off. |
| Sutherland v V2 Music Ltd | N/A | Yes | [2002] EWHC 14 (Ch) | N/A | Cited for the principle that the law of passing off protects a small business as much as the large, but it will not interfere to protect the goodwill which any reasonable person would consider trivial. |
| Hart v Relentless Records Ltd | N/A | Yes | [2003] FSR 36 | N/A | Cited for the principle that the court is looking for more than minimal reputation in a passing off claim. |
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 |
| Civil Law Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark Infringement
- Passing Off
- Lady Rose
- Rose Lady
- Likelihood of Confusion
- Goodwill
- Cosmetic Products
- Sole Agent Agreement
- Secondary Mark
15.2 Keywords
- trade mark
- infringement
- passing off
- cosmetics
- lady rose
- rose lady
16. Subjects
- Trade Mark Law
- Intellectual Property
- Cosmetics
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law
- Passing Off