Staywell v Starwood: Trademark Dispute over 'Park Regis' and 'St. Regis' Brands
Staywell Hospitality Group Pty Ltd, an Australian hotel operator, appealed against the decision of the Principal Assistant Registrar of Trade Marks (PAR) to disallow the registration of its 'Park Regis' trademark due to opposition from Starwood Hotels & Resorts Worldwide, Inc and Sheraton International Inc, American hotel operators owning the 'St. Regis' trademark. The High Court of Singapore, presided over by Judith Prakash J, allowed Staywell's appeal, reversing the PAR's decision, finding no likelihood of confusion between the 'Park Regis' and 'St. Regis' brands. The court also dismissed the Opponents' cross-appeal.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Staywell's appeal allowed and the Opponents’ cross-appeal dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Written Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Trademark dispute between Staywell and Starwood over the 'Park Regis' and 'St. Regis' brands. The court allowed Staywell's appeal, finding no likelihood of confusion.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| STAYWELL HOSPITALITY GROUP PTY LTD | Appellant | Corporation | Appeal allowed | Won | |
| STARWOOD HOTELS & RESORTS WORLDWIDE, INC | Respondent | Corporation | Cross-appeal dismissed | Lost | |
| SHERATON INTERNATIONAL INC | Respondent | Corporation | Cross-appeal dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Judith Prakash | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Prithipal Singh | Mirandah Law LLP |
| Denise Mirandah | Mirandah Law LLP |
| Elaine Tan | Amica Law LLC |
4. Facts
- Staywell operates two hotel brands: Park Regis and Leisure Inn.
- The first Park Regis hotel opened in Sydney in 1972.
- Staywell opened a Park Regis hotel in Singapore in 2010.
- Starwood owns the 'St. Regis' trademark.
- The first St. Regis hotel opened in New York in 1902.
- Staywell applied to register the 'Park Regis' trademark in Singapore on 3 March 2008.
- Starwood opposed Staywell's trademark application.
5. Formal Citations
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another, Originating Summons No 679 of 2011, [2012] SGHC 204
6. Timeline
| Date | Event |
|---|---|
| First Park Regis hotel opened in Sydney. | |
| First St. Regis hotel opened in New York. | |
| Staywell applied to register the trademark in a series of two marks in Singapore. | |
| Staywell’s application was published for opposition purposes. | |
| Sheraton and Starwood filed a notice of opposition to oppose the registration of the Application Mark. | |
| The St. Regis Singapore opened officially. | |
| Staywell opened a hotel in Singapore called Park Regis Singapore. | |
| Hearing took place before the Principal Assistant Registrar of Trade Marks. | |
| The Principal Assistant Registrar of Trade Marks delivered her decision. | |
| Judgment reserved. |
7. Legal Issues
- Trademark Infringement
- Outcome: The court held that there was no likelihood of confusion between the 'Park Regis' and 'St. Regis' marks.
- Category: Substantive
- Sub-Issues:
- Likelihood of confusion
- Similarity of marks
- Similarity of services
- Passing Off
- Outcome: The court found that there was no goodwill in Singapore as at the application date because at that date, there was no St. Regis hotel in Singapore.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage
8. Remedies Sought
- Opposition to Trademark Registration
9. Cause of Actions
- Trademark Infringement
- Passing Off
10. Practice Areas
- Trademark Litigation
- Intellectual Property Litigation
11. Industries
- Hospitality
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Ozone Community Corp v Advance Magazine Publishers Inc | High Court | Yes | [2010] SGHC 16 | Singapore | Cited for the two-stage test in the determination of similarity between a trademark and a sign. |
| 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 issue of distinctiveness of a word mark. |
| Doctor’s Associates Inc v Lim Eng Wah Trading as Subway Niche | High Court | Yes | [2012] SGHC 84 | Singapore | Cited as a case where the order established in Ozone was followed. |
| Intuition Publishing Ltd v Intuition Consulting Pte Ltd | High Court | Yes | [2012] SGHC 149 | Singapore | Cited as a case where the approach taken in Polo was adopted. |
| CDL Hotels International Ltd v Pontiac Marina Pte Ltd | Court of Appeal | Yes | [1998] SGCA 23 | Singapore | Cited for the consideration of whether the word “Millenia” was a distinctive one. |
| McDonald’s Corp v Future Enterprises Pte Ltd | High Court | Yes | [2004] 2 SLR(R) 652 | Singapore | Cited for the principle that conceptual similarity is not overriding or determinative. |
| Polo (HC) | High Court | Yes | [2005] 4 SLR(R) 816 | Singapore | Cited for the statement that it would be a very rare case that a defendant could claim that its products, if listed in the same classification as the plaintiff’s, were not similar. |
| British Sugar Plc v James Robertson & Sons Ltd | N/A | Yes | [1997] ETMR 118 | N/A | Cited as a test that there is no need to apply. |
| Soon Peck Wah v Woon Che Chye | N/A | Yes | [1997] 3 SLR(R) 430 | Singapore | Cited for the application of the hearsay rule. |
| Reckitt & Colman Products Ltd and Borden Inc and Others | N/A | Yes | [1990] 1 WLR 491 | N/A | Cited as a case where the label was readily detachable from the product and customers were likely to associate the brand with the product packaging. |
| Novelty Pte Ltd v Amanresorts Ltd and another | Court of Appeal | Yes | [2009] SGCA 13 | Singapore | Cited for the consideration of what a well-known trademark is in the context of s 55 of the Act. |
| The Commissioners of Inland Revenue v Muller & Co’s Margarine, Limited | N/A | Yes | [1901] AC 217 | N/A | Cited for the definition of goodwill. |
| My Kinda Bones v Dr. Pepper’s Stove Co. | N/A | Yes | [1984] FSR 289 | N/A | Cited for the principle that a plaintiff cannot establish the existence of goodwill attached to the name of a projected restaurant, sufficient to ground a passing off action, at a time when he has as yet never opened a restaurant under such name to customers either in this country or elsewhere. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Evidence Act (Cap 97, Rev Ed 1997) s 108 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trademark
- Likelihood of Confusion
- Goodwill
- Passing Off
- Distinctiveness
- Hotel Services
- Well-known Trademark
15.2 Keywords
- trademark
- hotel
- Park Regis
- St. Regis
- Singapore
- intellectual property
- brand
- confusion
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Trademark Infringement | 90 |
| Passing Off | 60 |
| Contract Law | 20 |
| Breach of Contract | 20 |
| Commercial Law | 10 |
| Advertising and Marketing | 10 |
16. Subjects
- Intellectual Property
- Trademark Law
- Hotel Industry