TMRG Pte Ltd v Caerus Holding Pte Ltd: Trade Mark Infringement, Passing Off & Invalidity of Luke's Lobster Trade Marks
TMRG Pte Ltd and Luke’s Tavern Holdings Pte Ltd, operating "Luke’s Oyster Bar & Chop House" restaurants, sued Caerus Holding Pte Ltd and Lukes Seafood LLC, operating "Luke’s Lobster" shacks, for trade mark infringement and passing off. The plaintiffs also sought a declaration that the Luke’s Lobster trade marks were invalid. The High Court of Singapore, on 13 July 2021, dismissed all of the plaintiffs' claims, finding no likelihood of confusion between the marks and no evidence of passing off.
1. Case Overview
1.1 Court
General Division of the High Court of the Republic of Singapore1.2 Outcome
Plaintiffs' claims for trade mark infringement, passing off, and invalidation of the Luke's Lobster trade marks are dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Singapore High Court judgment on trade mark infringement and passing off claims involving 'Luke's Oyster Bar' and 'Luke's Lobster'. Claims dismissed.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| TMRG Pte Ltd | Plaintiff | Corporation | Claim Dismissed | Lost | Lim Jun Hao Alvin, Alvin Tan Jing Han |
| Luke’s Tavern Holdings Pte Ltd | Plaintiff | Corporation | Claim Dismissed | Lost | Lim Jun Hao Alvin, Alvin Tan Jing Han |
| Caerus Holding Pte Ltd | Defendant | Corporation | Judgment for Defendant | Won | Melvin Pang, Ong Eu Jin |
| Lukes Seafood LLC | Defendant | Corporation | Judgment for Defendant | Won | Melvin Pang, Ong Eu Jin |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Andre Maniam | Judicial Commissioner | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Lim Jun Hao Alvin | Ravindran Associates LLP |
| Alvin Tan Jing Han | Ravindran Associates LLP |
| Melvin Pang | Amica Law LLC |
| Ong Eu Jin | Amica Law LLC |
4. Facts
- The plaintiffs operate "Luke’s Oyster Bar & Chop House" restaurants.
- The first plaintiff is the registered owner of the Luke’s Oyster Bar & Chop House trade mark.
- The second defendant operates "Luke’s Lobster" shacks.
- The second defendant is the registered owner of the Luke’s Lobster trade marks.
- The plaintiffs claim the defendants are liable for trade mark infringement and passing off.
- The defendants contend that their use of "Luke's Lobster" is protected by the "own name" defence.
- The plaintiffs' lobster-related dishes contribute only around 5% of their restaurants’ total revenue.
5. Formal Citations
- TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another, Suit No 723 of 2020, [2021] SGHC 163
6. Timeline
| Date | Event |
|---|---|
| First Luke’s Lobster shack opened in New York City. | |
| First Luke’s Oyster Bar & Chop House restaurant opened at Gemmill Lane. | |
| Second Luke’s Oyster Bar & Chop House restaurant opened at The Heeren. | |
| Luke’s Lobster trade marks registered in Singapore. | |
| Luke’s Oyster Bar & Chop House ran "Lobster Shack" takeaway event for two weekends. | |
| Plaintiffs came to know that the defendants were intending to open a Luke’s Lobster shack in Singapore. | |
| Plaintiffs commenced suit against defendants. | |
| Plaintiffs sought an interlocutory injunction to restrain the defendants from opening a Luke’s Lobster shack. | |
| First Luke’s Lobster shack opened in Singapore at Isetan, Shaw House. | |
| Luke’s Oyster Bar & Chop House restaurant at The Heeren closed. | |
| Defendants opened a second Luke’s Lobster shack in Singapore at Jewel, Changi Airport. | |
| Trial began. | |
| Judgment reserved. | |
| Judgment delivered. |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court held that the Luke’s Lobster trade marks are not similar to the plaintiffs’ Luke’s Oyster Bar & Chop House trade mark, and there is no likelihood of confusion.
- Category: Substantive
- Sub-Issues:
- Similarity of marks
- Similarity of goods or services
- Likelihood of confusion
- Related Cases:
- [2006] 2 SLR(R) 690
- [2014] 1 SLR 911
- Passing Off
- Outcome: The court held that there was no misrepresentation by the defendants’ use of the name “Luke’s Lobster”, and hence no likelihood of confusion or damage.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage
- Related Cases:
- [2009] 3 SLR(R) 216
- Invalidity of Trade Marks
- Outcome: The court held that the Luke’s Lobster trade marks do not offend against s 8(2) or s 8(7) of the Trade Marks Act and dismissed the plaintiffs’ claim that the Luke’s Lobster trade marks are invalid.
- Category: Substantive
- Sub-Issues:
- Breach of s 8(2)(b) of the Trade Marks Act
- Breach of s 8(7) of the Trade Marks Act
- Related Cases:
- [2014] 1 SLR 911
8. Remedies Sought
- Injunction to restrain the defendants from using any sign that incorporates the word “Luke’s”.
- Inquiry as to damages or alternatively, at the plaintiffs’ option, an account of profits.
- Order for the delivery up or destruction upon oath of all infringing material.
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
- Declaration of Invalidity of Trade Marks
10. Practice Areas
- Intellectual Property Litigation
- Trade Mark Infringement
- Trade Mark Registration
- Passing Off
11. Industries
- Food and Beverage
- Restaurant
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Taylor, Fladgate & Yeatman Limited v Taylors Wines Pty Ltd | Intellectual Property Office of Singapore | Yes | [2014] SGIPOS 11 | Singapore | Cited to show that a commonly used personal name is considered of low distinctiveness. |
| Kenzo v Tsujimoto Kenzo | Intellectual Property Office of Singapore | Yes | [2013] SGIPOS 2 | Singapore | Cited to show that a commonly used personal name is considered of low distinctiveness. |
| Valentino Globe BV v Pacific Rim Industries Inc | High Court | Yes | [2009] 4 SLR(R) 577 | Singapore | Cited to show that a commonly used personal name is considered of low distinctiveness. |
| Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd | High Court | Yes | [2015] 2 SLR 825 | Singapore | Cited as a local case that considered names in the intellectual property context. |
| 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 step-by-step approach to assess trade mark infringement under s 27(2) of the Trade Marks Act. |
| Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal | Court of Appeal | Yes | [2014] 1 SLR 911 | Singapore | Cited for explaining the relevant type of confusion for grounding an infringement action and the systematic assessment of similarity of marks, goods/services, and likelihood of confusion. |
| Ozone Community Corp v Advance Magazine Publishers Inc | High Court | Yes | [2010] 2 SLR 459 | Singapore | Cited for determining the visual similarity of marks based on length, structure, and shared letters. |
| Valentino Globe BV v Pacific Rim Industries Inc | Court of Appeal | Yes | [2010] 2 SLR 1203 | Singapore | Cited for examples of cases where marks were found to be dissimilar. |
| Discovery Communications, LLC v A-Star-Education Discovery Camps Pte Ltd | Intellectual Property Office of Singapore | Yes | [2020] SGIPOS 4 | Singapore | Cited for examples of cases where marks were found to be dissimilar. |
| Luciano Sandrone v European Union Intellectual Property Office | European General Court | Yes | (Case T-268/18) | European Union | Cited for the comparison of marks and the conclusion that a common first name results in weak similarity and no likelihood of confusion. |
| Reed Executive plc and another v Reed Business Information Ltd and others | English Court of Appeal | Yes | [2004] ETMR 56 | England | Cited for the principle that additional words in a sign can differentiate it from a common surname mark. |
| Office Cleaning Services v Westminster Window and General Cleaning | House of Lords | Yes | (1946) 63 RPC 30 | England | Cited for the principle that small differences may suffice to avoid confusion when a mark is largely descriptive. |
| Valentino SpA v Matsuda & Co | Intellectual Property Office of Singapore | Yes | [2020] SGIPOS 8 | Singapore | Cited for the risk inherent in using a name in a trade mark. |
| Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd | High Court | Yes | [2013] 2 SLR 941 | Singapore | Cited for the principle that likelihood of confusion extends to mistaken assumptions of an economic link between the parties. |
| Wagamama Ltd v City Centre Restaurants plc and another | Unknown | Yes | [1995] FSR 713 | Unknown | Cited as a case where the plaintiff succeeded in both trade mark infringement and passing off claims. |
| Sarika Connoisseur Café Pte ltd v Ferrero SpA | Court of Appeal | Yes | [2013] 1 SLR 531 | Singapore | Cited for the principle that survey evidence is relevant but not conclusive in assessing likelihood of confusion. |
| Ferrero SpA v Sarika Connoisseur Cafe Pte Ltd | High Court | Yes | [2011] SGHC 176 | Singapore | Cited for adopting guidelines from Whitford J’s decision in Imperial Group Ltd v Philip Morris & Co regarding survey evidence. |
| Imperial Group Ltd v Philip Morris & Co | Unknown | Yes | [1984] RPC 293 | Unknown | Cited for the Whitford Guidelines on determining the weight to be accorded to survey evidence. |
| Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) | High Court | Yes | [2012] 3 SLR 193 | Singapore | Cited for the principle that isolated instances of actual confusion are insufficient to establish likelihood of confusion. |
| The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd | Court of Appeal | Yes | [2016] 3 SLR 617 | Singapore | Cited for the relevant principles to be applied when considering the applicability of the “own name” defence. |
| Premier Luggage and Bags Ltd v Premier Co (UK) Ltd | Unknown | Yes | [2003] FSR 5 | Unknown | Cited for the submission that the “own name” defence is not available in relation to trading names. |
| Asprey & Garrard Ltd v WRA (Guns) Ltd | Unknown | Yes | [2002] FSR 31 | Unknown | Cited for the submission that the “own name” defence is not available in relation to trading names. |
| Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd | English Court of Appeal | Yes | [2010] RPC 16 | England | Cited for the principle that the “own name” defence is available in relation to trading names. |
| Novelty Pte Ltd v Amanresorts Ltd and another | Court of Appeal | Yes | [2009] 3 SLR(R) 216 | Singapore | Cited for the requirements of the tort of passing off: goodwill, misrepresentation, and damage. |
| The Commissioners of Inland Revenue v Muller & Co’s Margarine Limited | House of Lords | Yes | [1901] AC 217 | England | Cited for the definition of goodwill as the attractive force that brings in custom. |
| Moroccanoil Israel Ltd v Aldi Stores Ltd | Unknown | Yes | [2015] ECC 6 | Unknown | Cited for the principle that the doctrine of initial interest confusion does not apply in a passing off claim. |
| Knight v Beyond Properties Pty Ltd and others | High Court of Justice | Yes | [2007] EWHC 1251 (Ch) | England and Wales | Cited for the argument that initial interest confusion can suffice in the passing off context. |
| CDL Hotels International Ltd v Pontiac Marina Pte Ltd | High Court | Yes | [1998] 1 SLR (R) 975 | Singapore | Cited for the contention that confusion would result in blurring and tarnishment. |
| Alfred Dunhill Limited v Sunoptic SA | English Court of Appeal | Yes | [1979] FSR 337 | England | Cited for the argument that the plaintiffs have been restricted from expanding into the takeaway/grab and go/lobster shack market. |
| Taco Company of Australia Inc and another v Taco Bell Pty Ltd and others | Unknown | Yes | (1982) 42 ALR 177 | Australia | Cited for the obiter view that the “own name” defence is not a defence to a claim in passing off. |
| Taylor Bros Ltd v Taylors Group Ltd | Wellington Court of Appeal | Yes | [1988] 2 NZLR 1 | New Zealand | Cited for the argument that confusion in terms of its customers perceiving an economic association between themselves and the defendants is damage. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 27(2) of the Trade Marks Act | Singapore |
| s 28(1) of the Trade Marks Act | Singapore |
| s 28(3) of the Trade Marks Act | Singapore |
| s 23(3) of the Trade Marks Act | Singapore |
| s 8(2)(b) of the Trade Marks Act | Singapore |
| s 8(7) of the Trade Marks Act | Singapore |
| Section 45(1) of the Trade Marks Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark infringement
- Passing off
- Invalidity
- Luke’s Oyster Bar & Chop House
- Luke’s Lobster
- Likelihood of confusion
- Goodwill
- Misrepresentation
- Own name defence
- Registered mark defence
15.2 Keywords
- Trade mark
- Infringement
- Passing off
- Luke's Oyster Bar
- Luke's Lobster
- Singapore
- Intellectual property
- Restaurant
- Confusion
- Invalidity
16. Subjects
- Trade Mark Law
- Intellectual Property
- Passing Off
- Restaurant Industry
17. Areas of Law
- Intellectual Property Law
- Trade Mark Law
- Passing Off