When a commonly used trade name is at issue, it matters whether it is an oyster or a lobster

Kat friends Chia Ling Koh and Zhen Kai Giam report on TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2021] SGHC 163. Here, the Singapore High Court gave guidance on how trademark infringement claims by businesses using common trade names would be decided, and evaluated the use of survey evidence in such claims.

The plaintiffs, TMRG Pte Ltd and Luke's Tavern Holdings Pte Ltd, run a chain of fine-dining restaurants known as "Luke's Oyster Bar & Chop House". The defendants, Caerus Holding Pte Ltd and Lukes Seafood LLC, are the respective franchisee and franchisor of a casual takeaway restaurant chain specialising in lobster rolls known as "Luke's Lobster". Both TMRG Pte Ltd and Lukes Seafood LLC are the registered owners of the trade mark pertaining to their respective restaurants (the "Luke's Oyster Bar mark" and "Luke's Lobster mark" respectively) in Class 43. The plaintiffs also use an unregistered mark containing the Luke's Oyster Bar logo (the "Unregistered Mark"). The defendants also registered the Luke's Lobster mark overseas.

After learning that the defendants intended to open a Luke's Lobster shack in Singapore sometime in July 2020, the plaintiffs commenced a lawsuit against the defendants, alleging trade mark infringement under section 27(2)(b) of the Trade Marks Act (Cap. 332) ("TMA"), passing off, and the invalidity of the Luke's Lobster mark under the TMA on the basis that they were registered in breach of the sections of the TMA for trade mark infringement and passing off.

The Singapore High Court dismissed all of the plaintiffs' claims. Of note is the Court's reasoning in relation to the plaintiffs' trade mark infringement claim.

To establish a case for trade mark infringement under the TMA, three elements must be satisfied. First, the offending sign must be similar to the registered mark ("Similar Mark Element"). Similarity is evaluated visually, aurally and conceptually. Second, both the offending sign and registered mark must be used in relation to similar goods and services ("Similar Product Element"). Third, on account of the prior two elements, there must exist a likelihood of confusion on the part of the public ("Confusion Element").

The plaintiffs argued that the Similar Mark Element was satisfied because "Luke's" was the most distinctive component of the Luke's Oyster Bar mark and repeated in the Luke's Lobster mark. The court rejected this argument, noting that a commonly used name like "Luke's" has low distinctiveness, especially since it was used by various entities in their registered trading names. Further, the plaintiffs' attempt to focus on "Luke's" and downplay the remaining elements of the Luke's Oyster Bar mark (containing the words "Oyster Bar", "Chop House" and "Travis Masiero Restaurant Group") was found to be disingenuous given their choice to differentiate themselves in the Luke's Oyster Bar mark. The Luke's Oyster Bar mark had to be evaluated as a whole.

The marks were also conceptually dissimilar. The Luke's Oyster Bar mark brought to mind a place and gave the impression of formality and sophistication, whereas the Luke's Lobster mark was associated with an animal and came across as casual or even playful.

As regards the Similar Product Element, the Court found that this was satisfied as both the plaintiffs' and defendants' marks were registered in Class 43 pertaining to food and beverage establishments. While there were significant differences in style, price, range and type of food and services offered by the plaintiffs' and defendants' restaurants, this was more appropriately considered under the Confusion Element analysis.

To satisfy the Confusion Element, there must be a likelihood of confusion as to the origin of the goods or services in question at the point of purchase. Where restaurants are concerned, the visual and conceptual similarity of the marks in question are significant factors as restaurants are brick-and-mortar establishments. Some degree of fastidiousness and attention is also to be expected of prospective patrons. The plaintiffs failed to establish the Confusion Element due to the non-similarity of the marks and the sparse use of the Luke's Oyster Bar mark (as opposed to the Unregistered Mark).

While survey evidence is relevant in the Confusion Element analysis, the Court placed no weight on the survey evidence tendered by the plaintiffs ("Survey"). Some of the reasons canvassed by the Court follow.

First, the interviewees did not represent the relevant-cross section of the public. Only the plaintiffs' customers were surveyed though the plaintiffs ought to have surveyed potential customers as well.

Second, the Survey referred to the Unregistered Mark, as opposed to the Luke's Oyster Bar mark, when ascertaining confusion.

Third, the Survey did not ascertain the cause of any confusion. This is important as only confusion stemming from the similarity of marks and goods or services is relevant.

Fourth, the Survey questions were unfairly framed. The Survey referred to the plaintiffs' restaurants as "Luke's" instead of "Luke's Oyster Bar & Chop House", and used wording that encouraged the interviewees to associate the plaintiffs' restaurants with the name "Luke's". The Survey also tried to draw a link between the lobster dishes offered by both restaurants with the use of multiple-choice questions, even though lobster only accounted for five percent of the revenues of the plaintiffs' restaurant.

Fifth, the Survey did not conduct a like-for-like comparison of the get-up of both the plaintiffs' and defendants' restaurants as no photo of the defendants' restaurants was shown to interviewees, whereas the interviewees, being the plaintiffs' customers, would already be familiar with the plaintiffs' restaurants.

Sixth, the reliance by the plaintiffs on out-of-court statements from interviewees as evidence of actual confusion in the Survey was improper and breached the rule against hearsay evidence.

This case provides a useful roadmap for businesses planning to operate restaurants with commonly-used names. Care should be taken to ensure that the marks used by these restaurants are both visually and conceptually different from existing establishments. When conducting a survey to ascertain the likelihood of confusion, businesses would also do well to ensure that the questions asked are fair and not tend to elicit a certain response from interviewees.

Picture on top right is by Guido and is licensed under the Creative Commons Attribution-Share Alike 2.0 Generic license.

Picture on bottom left is by The Pancake of Heaven! and is licensed under the Creative Commons Attribution-Share Alike 4.0 International license.

When a commonly used trade name is at issue, it matters whether it is an oyster or a lobster When a commonly used trade name is at issue, it matters whether it is an oyster or a lobster Reviewed by Neil Wilkof on Tuesday, November 02, 2021 Rating: 5

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