Motherhood Pte Ltd v Lau Elaine: Passing Off & Trade Marks Act Dispute

Motherhood Pte Ltd sued Lau Elaine, Lim Poh Heng, and TNAP Services LLP in the High Court of Singapore, alleging passing off and violations of the Trade Marks Act concerning the use of 'Today's Motherhood' mark. The Plaintiff claimed the Defendants' mark was confusingly similar to their 'Motherhood' mark. Chan Seng Onn J dismissed the Plaintiff's claim, finding no misrepresentation or likelihood of confusion, and awarded costs to the Defendants.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Claim Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Motherhood Pte Ltd sued Lau Elaine for passing off and Trade Marks Act violations, but the High Court dismissed the claim due to lack of misrepresentation.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
MOTHERHOOD PTE LTDPlaintiffCorporationClaim DismissedLost
LAU ELAINEDefendantIndividualJudgment for DefendantWon
LIM POH HENGDefendantIndividualJudgment for DefendantWon
TNAP SERVICES LLPDefendantLimited Liability PartnershipJudgment for DefendantWon

3. Judges

Judge NameTitleDelivered Judgment
Chan Seng OnnJudgeYes

4. Counsels

Counsel NameOrganization
Wun RizwiRHTLaw Taylor Wessing LLP
Ow Shi JackRHTLaw Taylor Wessing LLP
Thomas Sim Yuan PoEngelin Teh Practice LLC
Lee Xian CongEngelin Teh Practice LLC

4. Facts

  1. Motherhood Pte Ltd publishes Motherhood Magazine, a monthly periodical on parenting issues.
  2. The Defendants published an online periodical named 'Today’s Motherhood' from June 2009 to November 2011.
  3. The Plaintiff claimed the Defendants' use of 'Today’s Motherhood' constituted passing off.
  4. The Defendants rebranded their magazine to 'The New Age Parents' in January 2012.
  5. The Plaintiff registered 'MOTHERHOOD' as a trade mark on 4 July 2013, effective from 23 May 2012.
  6. The Plaintiff argued that the Defendants' use of the Disputed Mark was likely to cause confusion to the relevant public.
  7. The Defendants argued that the word 'motherhood' is descriptive and should receive a lesser degree of protection.

5. Formal Citations

  1. Motherhood Pte Ltd v Lau Elaine and others, Suit No 720 of 2012, [2013] SGHC 258

6. Timeline

DateEvent
Motherhood Magazine published in Singapore
Annual exhibition held under the Motherhood mark
Formation of Motherhood Pte Ltd
TNAP Services LLP set up
Defendants published online periodical 'Today’s Motherhood'
Defendants created a Facebook page named 'Today’s Motherhood'
Defendants' Magazine changed to a bi-monthly publication
Defendants participated in 'Star Kidz 2011' fair
Plaintiff's solicitors claimed passing off
Defendants' solicitors denied passing off allegations
Defendants undertook a rebranding exercise
Defendants informed Plaintiff of rebranding exercise
Eastern assigned intellectual property to Plaintiff
Plaintiff applied to register 'MOTHERHOOD' as a trade mark
Back issues removed from Defendants’ website
Plaintiff commenced suit against Defendants
Plaintiff's trade mark application granted
Plaintiff’s claim dismissed
Decision Date

7. Legal Issues

  1. Passing Off
    • Outcome: The court found that the element of misrepresentation was not made out, and therefore the passing off claim failed.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage
    • Related Cases:
      • [2009] 3 SLR(R) 216
  2. Trade Mark Infringement
    • Outcome: The court found that the Plaintiff's claim under ss 55(2) and 55(3)(a) of the Trade Marks Act failed because there was no likelihood of confusion.
    • Category: Substantive
    • Sub-Issues:
      • Likelihood of Confusion
      • Similarity of Marks
      • Well-known Trade Mark
    • Related Cases:
      • [2009] 3 SLR(R) 216

8. Remedies Sought

  1. Injunction
  2. Inquiry as to Damages
  3. Account of Profits
  4. Order for Erasure
  5. Full Discovery

9. Cause of Actions

  • Passing Off
  • Trade Mark Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Trade Mark Infringement
  • Commercial Litigation

11. Industries

  • Publishing
  • Media
  • Advertising

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Novelty Pte Ltd v Amanresorts LtdCourt of AppealYes[2009] 3 SLR(R) 216SingaporeCited to establish the 'classical trinity' of goodwill, misrepresentation, and damage required to prove passing off.
The Commissioners of Inland Revenue v Muller & Co.’s Margarine, LimitedN/AYes[1901] AC 217N/ACited for the definition of goodwill as the attractive force which brings in custom.
The Singapore Professional Golfers’ Association v Chen Eng WayeHigh CourtYes[2013] 2 SLR 495SingaporeCited for the principle that a descriptive mark receives a lesser degree of protection and for factors relevant in assessing the likelihood of confusion.
Super Coffeemix Manufacturing Ltd v Unico Trading Pte LtdCourt of AppealYes[2000] 2 SLR(R) 214SingaporeCited as an example where the court refused to grant relief in a passing off claim because the marks were sufficiently different.
Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd (trading as ONE.99 SHOP)Court of AppealYes[2000] 1 SLR(R) 687SingaporeCited for the principle that there is a policy against allowing traders to monopolise the use of ordinary descriptive terms for their business.
Doctor's Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE)High CourtYes[2012] 3 SLR 193SingaporeCited as an example where the court refused to grant relief in a passing off claim because there was no likelihood of confusion between 'SUBWAY' and 'Subway niche'.
The Polo/Lauren Co, LP v Shop In Department Store Pte LtdCourt of AppealYes[2006] 2 SLR(R) 690SingaporeCited as an example where the court refused to grant relief in a passing off claim because 'POLO' and 'POLO PACIFIC' were not similar.
Ozone Community Corp v Advance Magazine Publishers IncHigh CourtYes[2010] 2 SLR 459SingaporeCited as an example where the court refused to grant relief in a passing off claim because 'GLAMOUR' and 'HYSTERIC GLAMOUR' were visually and aurally dissimilar.
London Lubricants (1920) Ltd’s ApplicationN/AYesLondon Lubricants (1920) Ltd’s Application (1925) 42 RPC 264N/ACited for the principle that the beginnings of marks tend to receive more emphasis when pronounced.
Healthy Food Media Limited v Healthy Options LimitedHigh Court of New ZealandYes[2005] NZHC 230New ZealandCited by the Plaintiff, but distinguished by the court because it dealt with an interlocutory injunction and the decision was based on the close similarities in the design and layout of the magazine cover pages.
Emap National Publications Limited v Security Publications LimitedN/AYes[1997] FSR 891N/ACited by the Plaintiff, but distinguished by the court because it dealt with an interlocutory injunction and the decision was based on the close similarities in the design and layout of the magazine cover pages.
Morgan-Grampian Plc v Training Personnel LimitedN/AYes[1992] FSR 267N/ACited by the Plaintiff, but distinguished by the court because it dealt with an interlocutory injunction and the defendant conceded that there was a serious question to be tried as to whether its actions constituted passing off.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(1)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(7)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(8)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(9)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 31Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 55(1)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 55(2)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 55(3)(a)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Passing Off
  • Trade Mark
  • Goodwill
  • Misrepresentation
  • Likelihood of Confusion
  • Descriptive Mark
  • Well Known Trade Mark
  • Motherhood Magazine
  • Today’s Motherhood
  • Rebranding

15.2 Keywords

  • Motherhood
  • Trade Mark Infringement
  • Passing Off
  • Magazine
  • Singapore
  • Intellectual Property
  • Likelihood of Confusion

17. Areas of Law

Area NameRelevance Score
Passing Off90
Trademarks75
Copyrights10
Contract Law10
Corporate Finance5

16. Subjects

  • Intellectual Property
  • Trade Marks
  • Passing Off
  • Media Law