Challenger Technologies v Courts Singapore: Trademark Infringement & Comparative Advertising
Challenger Technologies Limited applied for an interim injunction in the High Court of Singapore on August 21, 2015, against Courts (Singapore) Pte Ltd, alleging trademark infringement, defamation, and malicious falsehood due to Courts' advertising campaign that claimed its "3SIXT" products were cheaper than Challenger's. The court dismissed Challenger's application, finding that while there was a serious issue to be tried regarding trademark infringement, the balance of convenience did not favor granting the injunction. The court awarded costs to Courts.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Plaintiff's application for an interim injunction dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Challenger Technologies sought an injunction against Courts Singapore for trademark infringement and false representation in advertising. The High Court dismissed the application.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| COURTS (SINGAPORE) PTE LTD | Defendant | Corporation | Application for interim injunction dismissed | Won | |
| Challenger Technologies Limited | Plaintiff | Corporation | Application for interim injunction dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judge | Yes |
4. Counsels
4. Facts
- Plaintiff and defendant are retailers in Singapore.
- Defendant launched a marketing campaign for its "3SIXT" brand.
- Defendant's advertisements stated "Guaranteed At least 10% Cheaper Than Any CHALLENGER".
- Plaintiff alleged trademark infringement, defamation, and malicious falsehood.
- Defendant removed the advertisements from singpromos.com and Facebook.
- Plaintiff is the registered proprietor of several trademarks with the word "CHALLENGER".
5. Formal Citations
- Challenger Technologies Limited v Courts (Singapore) Pte Ltd, Suit No 455 of 2015 (Summons No 2421 of 2015), [2015] SGHC 218
6. Timeline
| Date | Event |
|---|---|
| Defendant published advertisement in The Straits Times. | |
| Similar advertisement run in The Straits Times; advertisements appeared on defendant's website. | |
| Plaintiff's employees discovered poster of defendant's advertisement at Causeway Point store. | |
| Defendant's catalogue lodged with SingPost. | |
| Advertisement displayed on www.singpromos.com; defendant's Facebook page displayed pictures of advertisements. | |
| Plaintiff's General Manager received defendant's catalogue. | |
| Defendant requested removal of link from www.singpromos.com and removed Facebook photos. | |
| Plaintiff commenced suit. | |
| Court dismissed plaintiff's application for an interim injunction. |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court found that there was a serious issue to be tried regarding trademark infringement.
- Category: Substantive
- Sub-Issues:
- Use of identical sign
- Use in relation to identical goods or services
- Fair use in comparative commercial advertising
- Interim Injunction
- Outcome: The court dismissed the application for an interim injunction, finding that the balance of convenience did not favor granting the injunction.
- Category: Procedural
- Sub-Issues:
- Serious question to be tried
- Balance of convenience
- Adequacy of damages
- Related Cases:
- [1975] AC 396
- Fair Use in Comparative Advertising
- Outcome: The court considered whether the defendant's use of the trademark was fair use in comparative advertising but did not make a definitive ruling on the issue.
- Category: Substantive
- Sub-Issues:
- Honest practices
- Misleading advertising
- Advantage taken of goodwill
- Related Cases:
- [1997] ETMR 199
8. Remedies Sought
- Injunction to restrain trademark infringement
- Injunction to restrain use of trade name
- Injunction to restrain false representation
9. Cause of Actions
- Trade Mark Infringement
- Defamation
- Malicious Falsehood
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Retail
- Information Technology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| American Cyanamid Company v Ethicon Limited | House of Lords | Yes | [1975] AC 396 | United Kingdom | Cited for the principles governing whether an interim injunction should be granted. |
| Hong Kong Vegetable Oil Co Ltd v Wicker and others | High Court | Yes | [1977–1978] SLR(R) 65 | Singapore | Cited for the interpretation of the test for a serious question to be tried in an application for an interim injunction. |
| Barclays Bank Plc v RBS Advanta | English High Court | Yes | [1997] ETMR 199 | United Kingdom | Cited for the element of honesty in comparative advertising under the UK Trade Marks Act 1994. |
| Singsung Pte Ltd and another v LG 26 Electronics Pte Ltd (Trading as LS Electrical Trading) and another | High Court | Yes | [2015] SGHC 148 | Singapore | Cited for the proposition that a brand name is an indicator of origin and generates goodwill. |
| Gatekeeper, Inc v Wang Wensheng (trading as Hawkeye Technologies) | High Court | Yes | [2011] SGHC 239 | Singapore | Cited for the proposition that the loss of goodwill is hard to compensate and most difficult to quantify. |
| Da Vinci Collection Pte Ltd v Richemont International SA | Court of Appeal | Yes | [2006] 3 SLR(R) 560 | Singapore | Cited regarding the effect of an interim injunction being equivalent to a permanent injunction. |
| Garden Cottage Foods Ltd v Milk Marketing Board | N/A | Yes | [1984] AC 130 | N/A | Cited for the definition of status quo as the state of affairs immediately before the issue of the writ. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(1) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 28(4)(a) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trademark infringement
- Interim injunction
- Comparative advertising
- Balance of convenience
- Serious question to be tried
- Goodwill
- Status quo
- Honest descriptive use
- 3SIXT
15.2 Keywords
- trademark infringement
- injunction
- comparative advertising
- Challenger
- Courts
- Singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Injunctions | 80 |
| Trademarks | 75 |
| Unfair Competition | 60 |
| Defamation | 40 |
| Fraud and Deceit | 30 |
| Contract Law | 20 |
| Cannabis Law | 0 |
16. Subjects
- Intellectual Property
- Trade Marks
- Advertising