Intuition Publishing Ltd v Intuition Consulting Pte Ltd: Trademark Infringement & Passing Off Dispute
Intuition Publishing Ltd, an Irish company, sued Intuition Consulting Pte Ltd in the High Court of Singapore, alleging trademark infringement and passing off. Intuition Publishing claimed that Intuition Consulting's use of similar signs infringed its registered trademarks. Judith Prakash J dismissed the plaintiff's claim, finding no infringement or passing off. The court revoked trademarks A and B due to non-use, while the defendant's counterclaim partially succeeded.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Plaintiff's claim dismissed; Defendant's counterclaim partially succeeds; Trademarks A and B revoked.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Trademark infringement and passing off dispute. The court dismissed the plaintiff's claim and revoked trademarks A and B.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| INTUITION PUBLISHING LIMITED | Plaintiff | Corporation | Claim Dismissed | Lost | |
| INTUITION CONSULTING PTE LTD | Defendant | Corporation | Counterclaim Allowed in Part | Partial |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Judith Prakash | Judge | Yes |
4. Counsels
4. Facts
- Intuition Publishing Ltd is an Irish company providing technology-enabled learning services.
- Intuition Consulting Pte Ltd is a Singaporean company providing bespoke consultancy training services.
- Intuition Publishing Ltd owns several registered trademarks in Singapore containing the word "INTUITION".
- Intuition Consulting Pte Ltd used signs containing the word "intuition" in its business.
- Intuition Publishing Ltd claimed trademark infringement and passing off.
- Intuition Consulting Pte Ltd counterclaimed for revocation of Intuition Publishing Ltd's trademarks based on non-use.
5. Formal Citations
- Intuition Publishing Ltd v Intuition Consulting Pte Ltd, Suit No 545 of 2010, [2012] SGHC 149
6. Timeline
| Date | Event |
|---|---|
| Intuition Publishing Ltd established. | |
| Trademark T8602731D (INTUITION) registered. | |
| Trademark T8602732B (INTUITION) registered. | |
| Intuition Publishing Ltd's website created. | |
| Financial Courseware adopted the name Intuition Publishing Limited. | |
| Trademarks T9809317A, T9809318Z, and T9809319H registered. | |
| Intuition Consulting Pte Ltd incorporated. | |
| Intuition Consulting Pte Ltd commenced operations. | |
| Intuition Consulting Pte Ltd's website created. | |
| Intuition Consulting Pte Ltd started phasing in the use of Signs E to G. | |
| Mr. Simon Banks had a telephone conversation with Mr. Robert Plant. | |
| Cease and desist letter sent to the defendant. | |
| Second cease and desist letter sent to the defendant. | |
| Defendant refused to accede to the plaintiff’s demands. | |
| Plaintiff commenced the present action. | |
| Judgment reserved. |
7. Legal Issues
- Trademark Infringement
- Outcome: The court found no trademark infringement under ss 27(1), 27(2), and 27(3) of the Trade Marks Act.
- Category: Substantive
- Sub-Issues:
- Similarity of marks
- Similarity of goods and services
- Likelihood of confusion
- Passing Off
- Outcome: The court found that the plaintiff had not established sufficient goodwill to support a passing off claim.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage
- Revocation of Trademark
- Outcome: The court revoked trademarks A and B due to non-use.
- Category: Substantive
- Sub-Issues:
- Non-use of trademark
- Genuine use in the course of trade
8. Remedies Sought
- Injunction
- Damages
- Account of Profits
9. Cause of Actions
- Trademark Infringement
- Passing Off
10. Practice Areas
- Trademark Infringement
- Intellectual Property Litigation
11. Industries
- Education
- Consulting
- Information Technology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier | Court of Appeal | Yes | [2010] 1 SLR 382 | Singapore | Affirmed the strict approach in examining the degree of likeness to each other of marks or signs under s 27(1) of the Trade Marks Act. |
| SA Société LTJ Diffusion v Sadas Vertbaudet SA | N/A | Yes | [2003] FSR 34 | N/A | The criterion of identity of the sign and the trade mark must be interpreted strictly. The very definition of identity implies that the two elements compared should be the same in all respects. |
| Reed Executive plc v Reed Business Information Ltd | N/A | Yes | [2004] RPC 40 | N/A | Provides a useful illustration. There the court, confronted with the question of whether "Reed Business Information" was identical to "Reed", held that it was not |
| Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd | N/A | Yes | [2003] 4 SLR(R) 755 | N/A | To establish that a mark and sign are identical, it would suffice if the distinctive and dominant components of the alleged infringing sign are identical to the registered trade mark. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | Court of Appeal | Yes | [2006] 2 SLR(R) 690 | Singapore | Cast doubt on the broader approach in Pan-West when determining whether marks and signs are identical. |
| Origins Natural Resources Inc v Origin Clothing Ltd | N/A | Yes | [1995] FSR 280 | N/A | "Origin" was not identical to the registered mark "Origins" because of the omission of the letter “s”. |
| Ferrero SPA v Sarika Connoisseur Cafe Pte Ltd | High Court | Yes | [2011] SGHC 176 | Singapore | A mark registered in upper case in plain font covers all stylistic permutations of the mark. |
| Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd | N/A | Yes | [2006] 1 SLR(R) 401 | N/A | When determining the nature of goods under s 27(1) of the Act, only the specifications need to be compared. |
| British Sugar Plc v James Robertson & Sons Ltd | N/A | Yes | [1996] RPC 281 | N/A | A global assessment of the facts using the factors in British Sugar would only be necessary if the goods are not found to be identical and the court moves on to considering similarity. |
| Johnson & Johnson v Uni-Charm Kabushiki Kaisha | N/A | Yes | [2007] 1 SLR 1082 | N/A | When considering whether a Mark and a Sign are similar, the court considers whether there is visual, aural and conceptual similarity between the two. |
| Ozone Community Corp v Advance Magazine Publishers Inc | N/A | Yes | [2010] 2 SLR 459 | N/A | The courts have taken a two-step approach to this exercise in that they have considered both similarity to and the distinctiveness of the trademark that has allegedly been infringed. |
| Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) | High Court | Yes | [2012] SGHC 84 | Singapore | Factors may be relevant in determining whether a mark has acquired distinctiveness through use. |
| Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel | N/A | Yes | [1999] 2 CMLR 1343 | N/A | Factors may be relevant in determining whether a mark has acquired distinctiveness through use. |
| Pontiac Marina Pte Ltd v CDL Hotels International Ltd | High Court | Yes | [1997] 1 SLR(R) 422 | Singapore | One of the issues the High Court had to decide was whether the word “Millenia” was a descriptive word or a fancy one in the context of a passing off claim. |
| CDL Hotels International Ltd v Pontiac Marina Pte Ltd | Court of Appeal | Yes | [1998] 1 SLR(R) 975 | Singapore | Affirmed the approach in Pontiac Marina Pte Ltd v CDL Hotels International Ltd. |
| Festina Lotus SA v Romanson Co Ltd | N/A | Yes | [2010] 4 SLR 552 | N/A | Tay J placed emphasis on the visual and oral impact of the word component in a word plus device mark. |
| Novelty Pte Ltd v Amanresorts Ltd and another | Court of Appeal | Yes | [2009] 3 SLR(R) 216 | Singapore | The factors laid out in ss 2(7)(a)-2(7)(e) ... are not an exhaustive list in that the court is obliged to take into account “any matter from which it may be inferred that the trade mark is well known”. |
| Mobil Petroleum Co Inc v Hyundai Mobis | N/A | Yes | [2010] 1 SLR 512 | N/A | The Court of Appeal discussed the element of “connection” under s 8(3) of the Act, which has the same elements as those under s 27(3) of the Act. |
| Nation Fittings (M) Sdn Bhd v Oystertec plc | N/A | Yes | [2006] 1 SLR(R) 712 | N/A | The case law appears to suggest that the ‘average consumer’ need not, depending on the specific facts, necessarily mean the general public. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act | Singapore |
| Trade Marks Act (Cap 332, 2000 Rev Ed) | Singapore |
| Trade Marks Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trademark
- Infringement
- Passing Off
- Goodwill
- Likelihood of Confusion
- Non-use
- Revocation
- Distinctiveness
- Bespoke Services
- Training Materials
15.2 Keywords
- trademark infringement
- passing off
- trade marks act
- revocation
- non-use
- intuition publishing
- intuition consulting
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Unfair Competition | 60 |
| Commercial Law | 30 |
| Contract Law | 30 |
16. Subjects
- Intellectual Property
- Trademark Law
- Commercial Law