Cordlife Group v. Cryoviva Singapore: Trademark, Copyright Infringement & Passing Off Assessment
Cordlife Group Limited, a private cord blood bank, sued Cryoviva Singapore Pte Ltd for trade mark and copyright infringement and passing off related to content on Cryoviva's websites. The High Court of Singapore, presided over by Assistant Registrar Nicholas Poon, ordered Cryoviva to pay Cordlife $63,904.63 in damages, comprising nominal damages for trade mark infringement and passing off, special damages, and additional damages for copyright infringement. The court dismissed Cordlife's claims for loss of business reputation and goodwill, loss of profit, and exemplary damages.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Judgment for Plaintiff
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Cordlife sued Cryoviva for trademark and copyright infringement and passing off. The court awarded damages of $63,904.63 to Cordlife.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Cordlife Group Limited | Plaintiff | Corporation | Judgment for Plaintiff | Won | |
| Cryoviva Singapore Pte Ltd | Defendant | Corporation | Damages Awarded | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Nicholas Poon | Assistant Registrar | Yes |
4. Counsels
4. Facts
- The Plaintiff, Cordlife, operates a private cord blood bank in Singapore.
- The Defendant, Cryoviva, intended to enter the private cord blood banking business in Singapore.
- The Defendant engaged Maverick to design and create a website.
- The Defendant's Trial website went live sometime between late August 2013 to October 2013.
- The Defendant's Actual website went live on or around 27 December 2013.
- The Plaintiff alleged that the Defendant infringed its trade marks and copyright by reproducing electronic forms, content and getup from the Plaintiff’s website.
- The Plaintiff alleged that the Defendant was passing off as the Plaintiff by representing that it was related to or associated with the Plaintiff.
5. Formal Citations
- Cordlife Group Ltd v Cryoviva Singapore Pte Ltd, Suit No 91 of 2014 (Assessment of Damages No 15 of 2015), [2016] SGHCR 5
6. Timeline
| Date | Event |
|---|---|
| Cordlife Group Limited incorporated | |
| Cordlife Group Limited started operations | |
| Cordlife Group Limited listed on the Singapore Exchange Securities Trading Limited | |
| Cryoviva Singapore Pte Ltd incorporated | |
| Defendant engaged Maverick Innovations Pvt Ltd to design and create a website | |
| Defendant’s Trial website went live | |
| Defendant’s Actual website went live | |
| Plaintiff came to know of the Actual website | |
| Plaintiff determined Defendant used Plaintiff’s proprietary information and intellectual property on the two websites | |
| Plaintiff’s solicitors wrote to the Defendant, demanding the Defendant cease operation of the Trial and Actual websites | |
| Plaintiff took out an application for an interim injunction | |
| Consent Order was entered into | |
| Defendant posted a public apology in the major local newspapers | |
| Defendant posted a public apology in the major local newspapers | |
| Plaintiff filed its claim for the present action for assessment of damages | |
| Hearing date | |
| Hearing date | |
| Hearing date | |
| Hearing date | |
| Hearing date | |
| Judgment reserved |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court found trade mark infringement by virtue of the Trial website and awarded nominal damages.
- Category: Substantive
- Copyright Infringement
- Outcome: The court found copyright infringement by virtue of the Trial and Actual websites and awarded additional damages.
- Category: Substantive
- Passing Off
- Outcome: The court found passing off by virtue of the Trial and Actual websites and awarded nominal damages.
- Category: Substantive
- Assessment of Damages
- Outcome: The court assessed the damages payable by the Defendant to the Plaintiff.
- Category: Procedural
- Additional Damages
- Outcome: The court awarded additional damages for copyright infringement.
- Category: Substantive
- Exemplary Damages
- Outcome: The court declined to award exemplary damages.
- Category: Substantive
8. Remedies Sought
- Damages
- Injunction
9. Cause of Actions
- Trade Mark Infringement
- Copyright Infringement
- Passing Off
10. Practice Areas
- Intellectual Property Litigation
- Trade Mark Infringement
- Copyright Infringement
- Passing Off Actions
11. Industries
- Healthcare
- Cord Blood Banking
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Mopi Pte Ltd v Central Mercantile Corp (S) Ltd | High Court | Yes | [2005] SGHC 183 | Singapore | Cited for the principle that damages for loss of reputation arising from passing off and trade mark infringements is not synonymous with damages for differences in quality. |
| Converse Inc v Ramesh Ramchandani and another | High Court | Yes | [2014] SGHCR 11 | Singapore | Cited to distinguish the present case from one where statutory damages were awarded for losses including loss of reputation. |
| Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd | High Court | Yes | [2015] SGHCR 15 | Singapore | Cited for the principle that statutory damages is an alternative remedy to and mutually exclusive from the traditional remedies of general damages and account of profit. |
| John While Springs (S) Pte Ltd and another v Goh Sai Chuah Justin and others | High Court | Yes | [2004] SGHC 76 | Singapore | Cited as authority that an award of special damages for the costs of investigation is permissible. |
| Work Model Enterprises Ltd v Ecosystem Ltd and Clix Interiors | English High Court | Yes | [1996] FSR 356 | England | Cited for the principle that the damage suffered by the plaintiff was due to the competition between the two office partition systems, with there being no sufficient nexus between the text copied and the lawful competition which is the cause of the alleged damage. |
| Blayney v Clogau St Davids Gold Mines Ltd | Unspecified | Yes | [2002] FSR 233 | Unspecified | Cited for the principle that it is a question in each individual case whether it should be inferred that the claimant would have made all or some of the sales made by the infringer, and that the burden of proof remains on the claimant throughout. |
| Peninsular Business Services Ltd v Citation Plc | Unspecified | Yes | [2004] FSR 17 | Unspecified | Cited as an example of a case with a similar outcome, where the claimant failed in its claim for damages for loss of profits because the infringing material played no part in the selling of the claimant’s services. |
| Ong Seow Pheng and others v Lotus Development Corp and another | Court of Appeal | Yes | [1997] 2 SLR(R) 113 | Singapore | Cited for outlining possible responses to copyright infringements. |
| General Tire and Rubber Co Ltd v Firestone Tyre and Rubber Co Ltd | Unspecified | Yes | [1976] RPC 197 | Unspecified | Cited for observations as to some of the main groups of reported cases which exemplify the approaches of courts to typical situations. |
| Colbeam Palmer v Stock Affiliates | Unspecified | Yes | (1970) 122 CLR 25 | Australia | Cited for the general principle that an account of profit is awarded against a defendant if it would be unconscionable for him to retain the profit made. |
| Golden Editions Pty Ltd v Polygram Pty Ltd | Federal Court | Yes | (1996) 61 FCR 479 | Australia | Cited for guidance on the object of s 119(3) of the Copyright Act. |
| Global Yellow Pages Ltd v Promedia Directories Pte Ltd | High Court | Yes | [2016] 2 SLR 165 | Singapore | Cited to support the finding that the Defendant was not an innocent infringer but knew what it was doing. |
| Futuretronics.com.au Pty ltd v Graphix Labels Pty Ltd (No 2) | Unspecified | Yes | (2008) 76 IPR 763 | Australia | Cited for the interpretation of the Australian equivalent of s 119(4) of the Copyright Act. |
| Prior v Landsdowne Press Pty Ltd | Unspecified | Yes | [1977] VR 65 | Unspecified | Cited for the principle that copyright infringements are flagrant when there is a display of calculated disregard of the plaintiff’s rights. |
| Joseph Bailey v Namol Pty Limited | Federal Court of Australia | Yes | [1994] FCA 1401 | Australia | Cited for the principle that copyright infringements are flagrant when the defendant had taken steps to appropriate without authorisation the plaintiff’s works from the plaintiff’s control. |
| New Line Productions, Inc and another v Aglow Video Pte Ltd and others and other suits | Unspecified | Yes | [2005] 3 SLR(R) 660 | Singapore | Cited for the principle that copyright infringements are flagrant when the infringing scheme involved falsification of documents, misleading advertisement calculated to convey an impression of authenticity, and a network of seemingly independent companies designed to abuse the law relating to companies. |
| Deckers Outdoor Corporation Inc v Farley (No 5) | Unspecified | Yes | (2009) 262 ALR 53 | Australia | Cited for the principle that copyright infringements are flagrant when the defendant disregarded court orders and persisted with its infringing operations. |
| Navitaire Inc v EasyJet Airline Co & Anor | Unspecified | Yes | [2006] RPC 3 | Unspecified | Cited for the principle that substantial similarity in the “look and feel” of a product has been consistently rejected by the English court as a basis for copyright infringement. |
| Li Siu Lun v Looi Kok Poh and another | Unspecified | Yes | [2015] 4 SLR 667 | Singapore | Cited for the observation that Singapore law permits an award of exemplary damages in three narrow categories of cases. |
| Rookes v Barnard | Unspecified | Yes | [1964] AC 1129 | Unspecified | Cited for the three narrow categories of cases where Singapore law permits an award of exemplary damages. |
| AB v South West Water Services Ltd | English Court of Appeal | Yes | [1993] QB 507 | England | Cited as an English Court of Appeal decision that was subsequently overruled by the House of Lords. |
| Kuddus v Chief Constable of Leicestershire Constabulary | House of Lords | Yes | [2002] 2 AC 122 | England | Cited as the House of Lords decision that overruled the English Court of Appeal decision in AB v South West Water Services Ltd. |
| The Mediana | Unspecified | Yes | [1900] AC 113 | Unspecified | Cited for the purpose of awarding nominal damages for the trade mark infringements and passing off is to affirm that there was an “infraction of [the Plaintiff’s] legal right which, though [gives the Plaintiff] no right to any real damages at all, [gives the Plaintiff] a right to the verdict or judgment because [its] legal right has been infringed |
| Ong Seow Pheng | Unspecified | Yes | [1993] 3 SLR(R) 56 | Singapore | Cited for the principle that copyright infringements are flagrant when there is a display of calculated disregard of the plaintiff’s rights. |
| Ong Seow Pheng | Unspecified | Yes | [1996] 2 SLR(R) 514 | Singapore | Cited for the principle that copyright infringements are flagrant when the defendants’ infringing operation was carried out on a large scale and the defendants were fully aware that they were violating intellectual property rights. |
| 32Red Plc v WHG (International) Ltd & Ors | Unspecified | Yes | [2013] EWHC 815 | England and Wales | Cited for the principle that the availability of non-infringing alternatives is a relevant factor in the calculation of a reasonable licence fee. |
| Facton Ltd v Rifai Fashions Pty Ltd | Full Court of the Federal Court of Australia | Yes | [2012] FCAFC 9 | Australia | Cited for the principle that if additional damages is awarded to punish the defendant, further punishment in the form of exemplary damages would be excessive and unjustified. |
| Autodesk Inc, Autodesk Australia Pty Limited, Microsoft Corporation and Microsoft Pty Limited v Michael Yee and Peter Leung | Unspecified | Yes | (1996) 35 IPR 415 | Australia | Cited for the principle that the Australian courts have interpreted the equivalent Australian legislation as conferring on courts the power to award additional damages “upon principles corresponding to those governing awards of aggravated damages and also exemplary damages at common law” |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| s 119(4) of the Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| s 119(3) of the Copyright Act | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 31(5) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Cord blood bank
- Trade mark infringement
- Copyright infringement
- Passing off
- Trial website
- Actual website
- Consent Order
- Additional damages
- Exemplary damages
- Innocent infringer
15.2 Keywords
- Cordlife
- Cryoviva
- Trade mark infringement
- Copyright infringement
- Passing off
- Damages
- Singapore
- Intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Copyrights | 80 |
| Trademarks | 75 |
| Website Infringement | 70 |
| Passing Off | 70 |
| Intellectual Property Rights | 65 |
| Damages | 60 |
| Unfair Competition | 50 |
| Commercial Disputes | 30 |
| Evidence | 20 |
| Civil Procedure | 20 |
| Contract Law | 20 |
16. Subjects
- Intellectual Property
- Trade Marks
- Copyright
- Passing Off
- Damages Assessment