In Han’s (F&B) v. Gusttimo World [2-15] SGHC 39, Han’s filed an action against Gusttimo for infringement and passing off. Gusttimo simultaneously counterclaimed against Han’s for groundless threats of infringement proceedings and also sought to invalidate Han’s registered trademarks. Both ran businesses in the food and beverage industry in Singapore. The marks in question of both parties are categorized below.

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Gusttimo argued, based on Section 23 of the Trade Marks Act, that Han’s marks are incapable of distinguishing their goods and services from that of others and that their marks are not distinctive because they make use of a common surname and should be invalidated. The judge, however, found that even a common surname is capable of distinguishing goods and services. Further, the fact that Han is a surname does not render it being devoid of a distinctive character, as it needs to be evaluated in light of the goods and services in question. Here, it was found that Han’s marks were not descriptive of the goods and services provided. Additionally, the judge held that the stylization of Han’s composite marks was sufficient to give the marks a distinctive character. It was further found that Han’s marks had acquired distinctiveness through use and thus Gusttimo’s counterclaim for this failed.

For Han’s infringement under Section 27 of the act to be successful, it had to show that Gusttimo’s mark is similar to Han’s marks, that they are used in relation to similar or identical goods or services and that there must exist a likelihood of confusion on the part of the public.

The judge found that there was high phonetic similarity between the marks. However, while there was visual similarity between Han’s word marks and Gusttimo’s mark, the level of similarity dropped when the comparison was made with Han’s composite marks, where the stylization of the composite marks emphasized the presence of the other elements in Gusttimo’s mark. The judge also held that the presence of an ’s in Han’s marks caused a marked conceptual dissimilarity with Gusttimo’s mark. Thus, it was held that while Han’s word marks were similar to Gusttimo’s mark, Han’s composite marks were dissimilar to Gusttimo’s mark.

Taking into consideration the goods and services provided by both parties, the judge found that the goods and services here are identical.

The judge went on to find that there was no likelihood of confusion in this instance. Taking a holistic approach, the more important aspects of similarity between the marks are that of visual and conceptual, which had earlier been found to be lacking. The survey results that had been produced by Han’s to evidence confusion were disregarded due to deficiencies in the conduct of the survey. It was also held that the reputation of a mark does not necessarily mean that there is higher likelihood of confusion as it may well work in the opposite direction. Here, the judge held that the success of Han’s chain was bound with the prominence of Han’s marks and this militated against any confusion occurring especially when the similarity between the marks were marginal. Accordingly, Han’s claim for trademark infringement was dismissed.

Han’s claim for passing off was similarly dismissed by the judge. Given the evidence before the judge, it was found that Han’s had established goodwill in Singapore, the first requirement for a claim in passing off. Han’s then failed to establish that there was misrepresentation caused by Gusttimo that created a likelihood of confusion. Gusttimo had given evidence showing that there was no deliberate deception in coming up with the name Han. It was also held that there was a marked difference between the sections of public targeted by both parties and this greatly reduced any likelihood of confusion. This point was bolstered by the difference in the fare and dining experience provided at the restaurants of the respective parties. As such, it was found that there was no misrepresentation that gave rise to any confusion and thus, Han’s action for passing off failed as well. Gusttimo’s counterclaim that Han’s made a groundless threat of infringement proceedings under Section 35 of the act failed simply because the letter from Han’s that was relied on by Gusttimo had been in relation to infringement arising from the application of the mark to the goods and the supply of services under the mark and thus was not groundless.

This case reasserts the fact that surnames are capable of being registered as a trademark. Further, the outcome of this case goes to show how even subtle differences in the appearance of a trademark can go a long way in distinguishing it from another mark, that at first glance may be deemed to be identical or similar to it.

This article was first published in Asia IP on April 30, 2015. For further information, please visit http://www.asiaiplaw.com/ .