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29th May, 2012

In the case of Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another, the Singapore High Court found that the defendants had infringed the plaintiff’s “Lady Rose” word mark and granted plaintiff the injunctions to restrain the defendants from infringing the plaintiff’s mark.

Hai Tong Co Pte Ltd (hereinafter referred to as “the plaintiff”) is a company incorporated in Singapore and is registered proprietor of the “Lady Rose” with trademark no. T7048436B. It was registered by the plaintiff’s predecessor (Hai Tong Company) in 1970. In particular, the plaintiff sells two cosmetic products under the “Lady Rose” mark, viz a two way cake and a foundation with sunscreen to various retailers, department stores, and to walk-in customers at its shop.

Ventree Singapore Pte Ltd (hereinafter referred to as “the 1st defendant”) is a company and SKY (hereinafter referred to as “the 2nd defendant”) is a partnership incorporated in Singapore. The 1st  defendant imported  three  “Rose  Lady”  products  into  Singapore:  “VOV”  Rose  Lady Cover Foundation, “VOV” Rose Lady Skin Cover, and “VOV” Rose Lady Two Way Cake (hereinafter referred to as “the infringing products”). The 2nd defendant sold “VOV” Rose Lady Skin Cover since January 2010. The 1st defendant is the distributor of “Rose Lady” cosmetic products pursuant to a Sole Agent Agreement with the manufacturer of these products, VOV Cosmetics Co Ltd (“VOV Cosmetics”). 2nd defendant previously sold products from  the  plaintiff’s  “Lady  Rose”  brand,  but  has  not  sold  the  plaintiff’s products since around 2005.

In July 2010, the plaintiff received complaints from customers regarding the quality of certain “Lady Rose” products packaged in a peach colored case while; the plaintiff used blue for the “Lady Rose”.  It became concerned and investigated the possibility of counterfeit “Lady Rose” products. On 1 August 2010, the plaintiff filed action against the 1st and 2nd defendants claiming that they had infringed the plaintiff’s “Lady Rose” mark and for passing off.

The defendants submitted that the words “Rose Lady” were descriptive of cosmetic products made with essence of the rosa canina plant that were intended for ladies’ use. Further submitted that the dominant mark on the packaging of the Infringing Products was the “VOV” mark, and the Infringing Products were marketed as “VOV Rose Lady”. They argued that “Rose Lady” was not being used as a secondary mark to identify a range of products in the “VOV” line.

However, the Court found that the combination of “Rose” and “Lady” was distinctive rather than descriptive. “Rose Lady” was a fancy mark. The “VOV” mark appeared in a much smaller font at the bottom corner of the front cover and on two sides of the packaging for the products. While, the words “Rose Lady Skin Cover” and “Rose Lady Two Way Cake” appeared prominently on the front covers.  Thus, the Court found that “Rose Lady” was a secondary product identifier that was being used as a secondary mark. Thus, the “Rose Lady” sign was used by the defendants in the course of trade.

The defendants tried to argue that the two marks were visually dissimilar as the “Lady Rose” mark included a drawing of a rose and was in a cursive font, whereas the “Rose Lady” mark did not include the drawing of a rose and was in a plain letter font. The Court held that the marks with identical words in an inverted sequence could be deceptively similar and while comparing two marks visually; the ‘imperfect recollection’ of the consumer is relevant. Thus, the Court found that the two marks here were visually similar.

In cross-examination, the defendants’ witness Mr. Goh Soo Ching conceded that the two marks were similar. The Court held that for assessing aural similarity, allowance must be made for “imperfect recollection” and “careless pronunciation and speech”. It was evidenced in the course of the trial, where parties sometimes said “Rose Lady” when they actually intended to refer to the “Lady Rose” mark, and vice versa. The Court also found a very strong conceptual similarity between the two marks as the composite words of both marks were identical, and both marks evoked the idea of something floral and feminine. Therefore, the Court found that the two marks were similar as they shared strong visual, aural and conceptual similarities.

While determining if the “Rose Lady” sign was used in relation to goods or services identical or similar to plaintiff’s “Lady Rose” trade mark, the Court looked at the specification of goods for which the registered trade mark is registered and the primary purpose for which they are used, and compared that with the goods having offending mark. The Court found that the “Rose Lady” mark was being used on similar cosmetic products, viz ladies’ skin cover and foundation products so, this element was clearly satisfied.

The Court further held that a greater similarity in the marks and the goods makes easier to find a likelihood of confusion. The goods were marketed in similar retail locations and targeted the same group of customers. It followed a risk that the public might believe that the “Rose Lady” goods came from the same source as the “Lady Rose” goods. Moreover, Mr Park In Pil, director of the 1st defendant, had conceded in cross-examination that it was possible that consumers could be confused by the similarity of the two marks.

For passing off claim the Court held that the  plaintiff  had  not  conducted  any  market  surveys  which indicated the market share of its products in the cosmetics industry and the annual sales figures were not impressive. The fact that the plaintiff had not advertised its products since 1979 suggested that there had been negligible exposure of the “Lady Rose” name in the media. The Court held that the plaintiff failed to discharge its burden of proving that there was damage or a likelihood of damage to its goodwill, and found that the passing off claim had not been made out.

Therefore, a standard is set in this case that to prove infringement of a registered trade mark one has to prove the use of sign in the course of trade, a sign must be similar to the trade mark, the sign must be used in relation to goods or services identical or similar to those for which the trade mark is registered and also a likelihood of confusion on the part of the public.