EAST COAST PODIATRY CENTRE PTE. LTD. v FAMILY PODIATRY CENTRE PTE. LTD.

Facts

East Coast Podiatry Centre Pte Ltd, which runs four podiatry centres, is the registered proprietor of a composite mark combining a small white cross on a green square with the words East Coast Podiatry. Family Podiatry Centre Pte Ltd, a competing podiatry business, ran Google Ads sponsored links between 14 April 2022 and 28 July 2022 with headlines using the words "east coast podiatry", "Podiatry East Coast" and "Podiatrist East Coast". Clicking an ad led to its own website, which did not mention those words. Its director said he used the words to promote a new branch at 170 Joo Chiat Road, which opened in or about August 2022, after a Google consultant advised using location-based keywords.

East Coast Podiatry sued for trade mark infringement and passing off. The High Court judge dismissed both claims in East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102, finding that the website would have dispelled any initial confusion. On appeal in Civil Appeal No 57 of 2024, the appellant pursued only infringement under s 27(2)(b) of the Trade Marks Act 1998. The Court of Appeal appointed an independent counsel to assist on the novel issues of internet advertising.

Issues

1. Whether the threshold requirement of trade mark use applies to internet advertising, or whether the effect-centric test from European case law should be adopted.
2. Whether the respondent used the words in its ads as a badge of origin.
3. Whether the mark and the words used in the ads were similar.
4. Whether the advertiser's website can be considered when assessing likelihood of confusion.

Holding

The Court of Appeal dismissed the appeal, holding that the claim failed at the threshold because the words were not used as a trade mark and, in any event, the mark and signs were dissimilar. Costs were fixed at $45,000 payable by the appellant to the respondent.

Reasoning

The court reaffirmed that infringement in Singapore first requires use as a badge of origin, following City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382. It declined to adopt the European Google France test, which looks at the effect of an ad on the mark's functions, because it would import something like a likelihood of confusion into cases of identical marks and could catch purely descriptive or decorative use. It respectfully disagreed with the judge's reliance on that line of authority, though this did not change the result.

For internet ads, the court should look at the objective circumstances and the defendant's intention, give greater latitude to generic words, and may consider the linked website to understand the purpose of the use. Here the words were plainly descriptive of podiatry services in the East Coast area, which includes Joo Chiat Road. Headline prominence simply reflected how sponsored links appear, and the website showed the respondent trading under its own name. Sarcastic messages between the directors did not prove an intention to confuse.

The mark drew its distinctiveness only from the combination of descriptive words and a common healthcare cross, so the signs, lacking the device, were clearly dissimilar. The court left open whether the website could be considered in the confusion inquiry, noting force in the argument, based on Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911, that it should not.

From the judgment