Han's (F & B) Pte Ltd v Gusttimo World Pte Ltd: Trademark Infringement and Passing Off in Food & Beverage Industry

Han’s (F & B) Pte Ltd (“Plaintiff”) sued Gusttimo World Pte Ltd (“Defendant”) in the High Court of Singapore on 10 February 2015, for trademark infringement and passing off, alleging that the Defendant’s restaurant, HAN Cuisine of Naniwa, infringed on the Plaintiff’s registered “Han’s” trademarks. The Defendant counterclaimed for groundless threats of infringement proceedings. Wei JC dismissed both the Plaintiff's claim and the Defendant's counterclaim, finding no likelihood of confusion and that the threat of proceedings was related to the application of the mark to goods or the supply of services.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Plaintiff's claim dismissed. Defendant's counterclaim dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Han's (F & B) Pte Ltd sues Gusttimo World Pte Ltd for trademark infringement and passing off. The court dismisses the claims, finding no likelihood of confusion.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
HAN'S (F & B) PTE LTDPlaintiffCorporationClaim DismissedLost
GUSTTIMO WORLD PTE LTDDefendantCorporationCounterclaim DismissedNeutral

3. Judges

Judge NameTitleDelivered Judgment
George WeiJudicial CommissionerYes

4. Counsels

Counsel NameOrganization
Mark Goh Aik LengMG Chambers LLC
Cheryl Ng HuilingMG Chambers LLC
Suresh s/o DamodaraDamodara Hazra LLP

4. Facts

  1. Plaintiff owns a chain of restaurants named Han’s Café.
  2. Defendant owns a restaurant named HAN Cuisine of Naniwa.
  3. Plaintiff is the registered proprietor of four marks under the Trade Marks Act.
  4. Defendant’s restaurant offers traditional Naniwa cuisine.
  5. The HAN sign is a composite sign comprising the word “HAN”, the phrase “Cuisine of Naniwa”, and the Kushikatsu device.
  6. The Plaintiff claims that the HAN sign infringes the Han’s trade marks.
  7. The Plaintiff claims that the Defendant is passing off its business as the Plaintiff’s.

5. Formal Citations

  1. Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd, Suit No 255 of 2013, [2015] SGHC 39

6. Timeline

DateEvent
First Han’s restaurant opened.
Hankuk registered trademark “HANGLAS” in Singapore.
Plaintiff's four marks were registered under the Trade Marks Act.
Hanis Café, a sister chain, was created.
Dr. Lee began running the Defendant as a food and beverage business.
Defendant’s restaurant, HAN Cuisine of Naniwa, commenced business.
Plaintiff’s solicitors sent a letter to the Defendant’s solicitors alleging trademark infringement.
Suit No 255 of 2013 filed.
Plaintiff's 5-year Business Plan was created.
Judgment reserved.

7. Legal Issues

  1. Trademark Infringement
    • Outcome: The court found that while the HAN sign was similar to the Han’s word marks, it was not confusingly so, and dismissed the claim for trade mark infringement.
    • Category: Substantive
    • Sub-Issues:
      • Similarity of marks
      • Similarity of goods or services
      • Likelihood of confusion
  2. Passing Off
    • Outcome: The court found that the Defendant did not make a misrepresentation that gave rise to confusion, and dismissed the claim for passing off.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage
  3. Validity of Trade Marks
    • Outcome: The court held that the Han’s trade marks were capable of distinguishing the goods and services of the Plaintiff from that of other traders, and that all the Han’s trade marks had acquired distinctiveness through use.
    • Category: Substantive
    • Sub-Issues:
      • Distinctive character
      • Capability of distinguishing goods or services
  4. Groundless Threat of Infringement Proceedings
    • Outcome: The court dismissed the Defendant’s counterclaim, finding that the threat of proceedings was for infringement on grounds other than the application of the mark to goods or the supply of services under the mark.
    • Category: Procedural

8. Remedies Sought

  1. Injunction restraining the Defendant from trading under the HAN sign
  2. Inquiry to damages or an account of profits
  3. Order for full discovery of the infringing materials and articles
  4. Order that the Defendant transfers the domain, http://www.han.com.sg, to the Plaintiff

9. Cause of Actions

  • Trade Mark Infringement
  • Passing Off

10. Practice Areas

  • Intellectual Property Litigation
  • Commercial Litigation

11. Industries

  • Food and Beverage

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Nichols plc v Registrar of Trade MarksEuropean Court of JusticeYes[2005] RPC 12European UnionCited to support the argument that surnames are capable of distinguishing services provided under the mark from services provided by another person.
Nation Fittings (M) Sdn Bhd v Oystertec plc and another suitHigh CourtYes[2006] 1 SLR(R) 712SingaporeCited for the principle that the requirement of capability to distinguish is not difficult to satisfy and that most cases where the trade mark has been held to fall foul of the threshold requirement were so decided because the sign was nothing more than a generic description of the product or service.
Philips Electronics NV v Remington Consumer Products Ltd (No 1)English High CourtYes[1998] RPC 283England and WalesCited to support the principle that a representation lacked any capability to distinguish the goods where the shape was essentially the shape of the product itself.
Love & Co Pte Ltd v The Carat Club Pte LtdHigh CourtYes[2009] 1 SLR(R) 561SingaporeCited to support the principle that a sign would not cross the threshold if it was so descriptive as to be synonymous with the product itself.
Smith Kline & French Laboratories Ltd’s Cimetidine Trade MarkN/AYes[1991] RPC 17England and WalesCited for the principle that the court takes account of the likelihood that other traders may, without improper motive, desire to use the trade mark in relation to their own goods.
The Polo/Lauren Co, LP v Shop In Department Store Pte LtdCourt of AppealYes[2006] 2 SLR(R) 690SingaporeCited for the principle that where common words are included in a registered mark, the courts should be wary of granting a monopoly in their use.
The Singapore Professional Golfers’ Association v Chen Eng Waye and othersCourt of AppealYes[2013] 2 SLR 495SingaporeCited for the principle that a name or a choice of words that is either meaningless or has no discernible correlation to the product or service generally serves no purpose other than as a mark or badge of origin or source of that product or service.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appealCourt of AppealYes[2013] 2 SLR 941SingaporeCited for general principles on visual, phonetic and conceptual similarity in trademark infringement analysis.
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appealCourt of AppealYes[2014] 1 SLR 911SingaporeCited for the principle that the court is concerned with the overall impression created in the mind of the average consumer, and in certain circumstances, that impression may be dominated by one or more of the mark’s components.
Oyster Cosmetics SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)European Court of JusticeYes[2011] ETMR 26European UnionCited regarding the weight given to word elements versus figurative elements in a composite mark.
Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE)High CourtYes[2012] 3 SLR 193SingaporeCited for the principle that a mark registered in upper case in plain font covers all stylistic permutations.
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpAHigh CourtYes[2013] 1 SLR 531SingaporeCited for the principle that registration of a word in block capital letters should cover use of the word in every font or style possible.
Valentino Globe BV v Pacific Rim Industries IncHigh CourtYes[2009] 4 SLR(R) 577SingaporeCited for the 'first syllable principle' in phonetic similarity.
Kenzo v Tsujimoto KenzoN/AYes[2013] SGIPOS 2N/ACited for conceptual dissimilarity despite sharing a distinctive word.
Future Enterprises Pte Ltd v McDonald’s CorpCourt of AppealYes[2006] 4 SLR(R) 629SingaporeCited for the principle that adequate allowance must be made for imperfect recollection and careless pronunciation and speech.
City Chain Stores (S) Pte Ltd v Louis Vuitton MalletierCourt of AppealYes[2010] 1 SLR 382SingaporeCited for the principle that confusion in the sense of 'mere association' is not enough.
Sabel BV v Puma AG, Rudolf Dassler SportN/AYes[1998] RPC 199N/ACited for the 'global assessment' method.
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (formerly Pathé Communications Corporation)N/AYes[1999] RPC 117N/ACited for the 'global assessment' method.
Intuition Publishing Ltd v Intuition Consulting Pte LtdHigh CourtYes[2012] SGHC 149SingaporeCited for the principle that the more descriptive a mark, the greater the latitude afforded to the defendant in using words or ideas of a generic nature, even if these have some similarity to what is found in the registered mark.
Maier v Asos plcN/AYes[2014] FSR 16N/ACited as an example of a case where the court recognised the principle nevertheless placed emphasis on the present actual use of the trade mark (expensive products) as there was no indication that they intended to move into cheaper products.
Wagamama Ltd v City Centre Restaurants Plc and AnotherN/AYes[1995] FSR 713England and WalesCited as an example of a case where the plaintiff owned and operated a successful inexpensive Japanese noodle bar and restaurant with minimalist décor under the brand “Wagamama” and the defendant opened an American-themed restaurant with Indian décor and food called “Rajamama” and the court held that there was a likelihood of confusion.
Reed Executive Plc v Reed Business Information LtdN/AYes[2003] RPC 12England and WalesCited for the principle that a 50 pence purchase in a station kiosk involves different considerations from a once-in-a-lifetime expenditure of 50,000 pounds.
Novelty Pte Ltd v Amanresorts Ltd and anotherCourt of AppealYes[2009] 3 SLR(R) 216SingaporeCited for the 'classical trinity' of goodwill, misrepresentation and damage must be present in order to succeed in a claim in passing off.
The Commissioners of Inland Revenue v Muller & Co’s Margarine, LimitedN/AYes[1901] AC 217England and WalesCited for the principle that goodwill consists of two essential features: the association of a business on which a mark has been applied with a particular source and an attractive force arising from that association which brings in custom.
Revlon Inc and Others v Cripps & Lee Ltd and OthersEnglish Court of AppealYes[1980] FSR 85England and WalesCited for the principle that in appropriate cases, the law was able to look at the separate legal entities within a group as a single economic entity.
DHN Food Distributors Ltd v Tower Hamlets London Borough CouncilN/AYes[1976] 1 WLR 852England and WalesCited for the principle that this is especially the case when a parent company owns all the shares of the subsidiaries—so much so that it can control every movement of the subsidiaries.
J Bollinger v Costa Brava Wine Co Ltd (No 2)N/AYes[1961] WLR 277England and WalesCited for the principle that each trader selling goods under that mark has been held to enjoy the several right to sue for passing off.
Erven Warnink BV v J Townend & Sons (Hull) LtdN/AYes[1979] AC 731England and WalesCited for the principle that a “joint” owner of goodwill enjoys the joint and several right to sue for infringement.
Reckitt & Colman Products Ltd v Borden Inc (No 3)N/AYes[1990] 1 WLR 491England and WalesCited for the principle that in a passing off action, a properly worded and prominently displayed disclaimer as to trade connection may protect against a finding of passing off.
Lego System Aktieselskab and Another v Lego M Lemelstrich LtdN/AYes[1983] FSR 155England and WalesCited as an example of a case where a claim for damage in the sense of loss of licensing opportunity has succeeded.
Imperial v Philip MorrisN/AYes[1984] RPC 293England and WalesCited for the requirements for a survey to be probative of confusion or deception.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks ActSingapore
s 2(1) of the TMASingapore
s 7(1)(a) of the TMASingapore
s 7(1)(b) of the TMASingapore
s 7(2) of the TMASingapore
s 22(1) of the TMASingapore
s 23(1) of the TMASingapore
s 23(2) of the TMASingapore
s 27(2) of the TMASingapore
s 27(1) of the TMASingapore
s 28(1)(a) of the TMASingapore
s 35 of the TMASingapore
Trade Marks Act 1938United Kingdom

15. Key Terms and Keywords

15.1 Key Terms

  • Trade mark infringement
  • Passing off
  • Distinctiveness
  • Likelihood of confusion
  • Goodwill
  • Misrepresentation
  • HAN sign
  • Han’s trade marks
  • Cuisine of Naniwa
  • Kushikatsu device

15.2 Keywords

  • Trade mark
  • Infringement
  • Passing off
  • Food
  • Restaurant
  • Singapore

17. Areas of Law

Area NameRelevance Score
Trademarks90
Passing Off85
Contract Law10
Commercial Law5

16. Subjects

  • Trade Mark Law
  • Intellectual Property
  • Food and Beverage Industry