A recent High Court case decided in Singapore relates to a dispute concerning passing off and well-known trade marks between Motherhood Pte. Ltd. and Lau Elaine & others.
Motherhood Pte. Ltd. (hereinafter referred to as “the Plaintiff”) owns a magazine, namely, “Motherhood Magazine,” which deals with issues such as motherhood, parenting, pregnancy and childcare, or collective known as “parenting issues.” This magazine is published monthly in Singapore since 1983 by Eastern Holdings Ltd. and/or Eastern Publishing Pte. Ltd. (hereinafter referred to “Eastern”). The Plaintiff and Eastern have been holding annual exhibitions in Singapore under the “Motherhood” mark since 1988 promoting goods and services in relation to parenting issues. Other periodical publishing in relation to the Plaintiff’s magazine includes “Motherhood Baby Plus”, “Motherhood Guide to Childcare” and “Motherhood Healthy Pregnancy”.
The Plaintiff then acquired all their rights, title and interest in the intellectual property of the business, including the Motherhood Marks from Eastern by way of an assignment.
Plaintiff filed an application to register “MOTHERHOOD” as a series of three marks in the relevant class groups (including magazines and electronic publications) on 23 May 2012 (hereinafter referred as “the Registered Motherhood Marks”) and was granted by the Intellectual Property Office of Singapore (IPOS) on 4 July 2013 on the basis of acquired distinctiveness through use, with the registration being effective from 23 May 2012.
Lau Elaine and her husband Lim Poh Heng own a limited liability partnership called TNAP Services LLP (hereinafter referred to as “the Defendants”) published an online periodical from June 2009 to November 2011 relating to parenting issues known as hereinafter “Today’s Motherhood” (“the Disputed Mark”) on a website bearing the domain name of www.todaysmotherhood.com. The Defendants also created a Facebook page named “Today’s Motherhood.”
In September 2011, the Defendants participated in a children enrichment and education fair called “Star Kidz 2011.” In conjunction with this event, the Defendants a one-off special commemorative print issue of their magazine and distributed 5,000 copies free of charge at the fair. This prompted the Plaintiffs to write a letter to the Defendants claiming that the Defendants’ use of the Disputed Mark constituted an act of passing off and demanded that the Defendants cease using any names that were confusingly similar to the Motherhood Marks.
However, the Defendants strongly denied any of the allegations claimed by the Plaintiffs.
In the early following year, the Defendants had undergone a realignment process whereby they executed a rebranding exercise changing the name of their magazine and Facebook page to “The New Age Parents”. They completed the migration of their website to the new domain name of www.thenewageparents.com in March 2012. They went on to officially inform the Plaintiffs of the rebranding exercise and made it clear that the rebranding exercise was without admission of liability to any of the Plaintiff’s claims and without prejudice to the Defendants’ right to resist the Plaintiff’s claims at the appropriate forum.
However, the Plaintiff was not satisfied as back issues of the Defendants’ magazine with the cover page bearing the Disputed Mark remained available to the public on the Defendants’ website, despite the fact that those back issues were completely removed from the Defendants’ website by July 2012.
The Plaintiff brought an action against the Defendants in August 2012.
The Plaintiff alleged that the Defendants’ actions were unlawful on the grounds of passing off under
Sections 55(2) and 55(3)(a) of the Singapore Trade Marks Act. Under these sections, a proprietor of a “well known trade mark” may be allowed to restrain any unlawful activities of the use of its trade mark by injunction if any one of the elements in these sections is satisfied. The Plaintiff sought the following relief:
- an injunction to restrain the Defendants, whether by themselves, their officers, servants or agents, or licensees or any of them or otherwise howsoever, from passing off by using the Disputed Mark or any other name which is identical with or similar to the Motherhood Marks in the course of trade on periodicals, whether in print or any other kind of media, that cover parenting issues;
- an injunction to restrain the Defendants, whether by themselves, their officers, servants or agents, or licensees or any of them or otherwise howsoever, from using the Disputed Mark or any trade mark which, or an essential part of which, is identical with or similar to the Motherhood Marks in the course of trade, where such use is likely to cause confusion or is likely to damage the Plaintiff’s interest;
- an inquiry as to the damages suffered by the Plaintiff or at its option an account of the profits made by the Defendants from all the acts of passing off and payment by the Defendants to the Plaintiff of all sums found due upon assessment of the damages or profits at the inquiry;
- an order for erasure, removal or obliteration upon oath of all printed or online matter, materials or articles in the possession, custody or control of the Defendants, the use of which would be a breach of either of the foregoing injunctions; and
- full discovery of all acts of passing off and trade mark infringement by the Defendants.
The Court laid out the rules for establishing passing off. In order to satisfy this, the Plaintiff had to prove that:
- it possessed goodwill in Singapore in its magazine business with which the Motherhood Marks were associated;
- the Defendants had committed a misrepresentation that misled or was likely to mislead a significant section of the relevant public that its goods were actually those of, or were related to or associated with, the Plaintiff; and
- the Defendants’ misrepresentation had caused actual damage or was likely to cause damage to the Plaintiff’s goodwill.
The Court ruled in favour of the Defendants whereby the use of the Disputed Mark was not likely to cause any confusion and dismissed the Plaintiff’s claims. It has been reported that the Plaintiff had filed for an appeal and the matter has yet to be heard in the Court of Appeal.