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In the GENERAL DIVISION OF
THE high court of the republic of singapore
[2021] SGHC 163
Suit No 723 of 2020
Between
(1)
TMRG Pte Ltd
(2)
Luke’s Tavern Holdings Pte Ltd
Plaintiffs
And
(1)
Caerus Holding Pte Ltd
(2)
Lukes Seafood LLC
Defendants
JUDGMENT
[Intellectual Property] — [Trade marks and trade names] — [Infringement]
[Intellectual Property] — [Trade marks and trade names] — [Invalidity]
[Intellectual Property] — [Trade marks and trade names] — [Defences] — [Own name]
[Intellectual Property] — [Trade marks and trade names] — [Passing off] — [Goodwill]
[Intellectual Property] — [Trade marks and trade names] — [Passing off] — [Misrepresentation]
[Intellectual Property] — [Trade marks and trade names] — [Passing off] — [Likelihood of damage]
[Intellectual Property] — [Trade marks and trade names] — [Defences] — [Prior user]

This judgment is subject to final editorial corrections approved by the court and/or redaction pursuant to the publisher’s duty in compliance with the law, for publication in LawNet and/or the Singapore Law Reports.
TMRG Pte Ltd and another
v
Caerus Holding Pte Ltd and another
[2021] SGHC 163
General Division of the High Court — Suit No 723 of 2020
Andre Maniam JC
9, 10, 11 March, 26 April 2021
13 July 2021 Judgment reserved.
Andre Maniam JC:
Introduction
1 “What’s in a name?” said Juliet, “[t]hat which we call a rose, by any other name would smell as sweet” (William Shakespeare, Romeo and Juliet (Duke Classics, 2012) at p 56). Despite that brave proclamation, Juliet’s name (Capulet) and Romeo’s (Montague) indicated the families they came from, families whose strife would keep them apart.
2 In the intellectual property context, a name may likewise be an indication of origin: it may be a trade mark, or its use may be actionable as passing off.
3 Local cases have considered names like “Taylor” (see Taylor, Fladgate & Yeatman Limited v Taylors Wines Pty Ltd [2014] SGIPOS 11 (“Taylor”)), “Kenzo” (see Kenzo v Tsujimoto Kenzo [2013] SGIPOS 2 (“Kenzo”)), “Valentino” (see Valentino Globe BV v Pacific Rim Industries Inc [2009] 4 SLR(R) 577 (“Valentino (HC)”)), and “Han” (see Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825 (“Han’s”)). The present case involves the name “Luke”, more specifically its possessive form, “Luke’s”.
Background
The parties
4 The plaintiffs are Singapore companies. The first plaintiff operates a restaurant under the name, “Luke’s Oyster Bar & Chop House” at Gemmill Lane, which opened in May 2011. The second plaintiff operated another restaurant by the same name at The Heeren from 2014 until it closed in December 2020 because its landlord Robinsons ceased operations. The second plaintiff intends to reopen its restaurant at a new location. The plaintiffs’ restaurants are fine dining restaurants.
5 The first plaintiff is the registered owner of the following mark in Class 43 of the International Classification of Goods and Services (“ICGS”) (the “Luke’s Oyster Bar & Chop House trade mark”):
Trade mark no
Trade mark
Specifications
T1314356Z
Café, providing food and drink, take away food services, preparation of meals, restaurants, catering services, bar services.
6 The plaintiffs also use an unregistered mark (the “Luke’s Oyster Bar & Chop House logo”):
7 The Luke’s Oyster Bar & Chop House trade mark and Luke’s Oyster Bar & Chop House logo both contain words other than “Luke’s” – specifically, “Oyster Bar”, “Chop House” and “Travis Masiero Restaurant Group” or “Travis Masiero”. Restaurateur Travis Masiero (“Mr Masiero”), a director and shareholder of the plaintiffs, had named the “Luke’s Oyster Bar & Chop House” restaurants after his son, Lucas. The plaintiffs contend that the word “Luke’s” by itself is distinctive of their restaurant business. The defendants dispute this.
8 The second defendant is a United States company. It opened the first “Luke’s Lobster” shack on 1 October 2009 in New York City. Directly or through franchisees, some 37 Luke’s Lobster shacks were opened in the United States, Japan, and Taiwan, before the first Luke’s Lobster shack was opened in Singapore on 23 September 2020, at Isetan, Shaw House. That lobster shack in Isetan was opened through the first defendant, the exclusive Singapore franchisee of Luke’s Lobster. Luke’s Lobster shacks are small, casual, self-service restaurants. Much of their business is “grab-and-go”, with limited seating for those who wish to dine in.
9 In January 2021, the defendants opened a second Luke’s Lobster shack in Singapore at Jewel, Changi Airport. Luke’s Lobster’s frozen seafood products are also available in NTUC FairPrice Finest supermarkets.
10 Luke’s Lobster gets its name from another Lucas: its co-founder and Chief Executive Officer (“CEO”) Lucas Alexander Holden, who is known as “Luke Holden”.
11 The second defendant is the registered owner of the following trade marks in Class 43 of the ICGS (the “Luke’s Lobster word mark” and the “Luke’s Lobster logo” respectively, and collectively, the “Luke’s Lobster trade marks”):
Trade mark no
Trade mark
Specifications
40201812193V
Restaurants featuring lobster.
40201809854R
Restaurant services.
12 The Luke’s Lobster trade marks were registered in Singapore on or about 3 April 2018. The marks have also been registered in other countries.
13 Luke’s Lobster’s best-selling product is its lobster roll, which has chunks of lobster meat served on a buttered roll:
14 The lobster roll is the most popular item sold by Luke’s Lobster in Singapore; followed by lobster bisque and the “Luke’s Trio” (half-rolls of lobster, crab, and shrimp). Lobster features prominently, as one might expect from the name “Luke’s Lobster”.
15 The plaintiffs, however, assert that their Luke’s Oyster Bar & Chop House restaurants also had an established reputation for lobster dishes, although these only accounted for 5% of their restaurants’ revenue, with their lobster rolls only available at lunch, and not listed on their main menu.
16 The plaintiffs contend that by opening Luke’s Lobster in Singapore, the defendants are liable for trade mark infringement and passing off. Would a customer, however, purchase Luke’s Lobster’s lobster rolls thinking that they came from Luke’s Oyster Bar & Chop House, or that the two establishments were associated in some way?
The proceedings
17 In July 2020, the plaintiffs came to know that the defendants were intending to open a Luke’s Lobster shack in Singapore. On 7 August 2020, the plaintiffs commenced the present suit, and on 11 August 2020 they sought an interlocutory injunction to restrain the defendants from doing so. The interlocutory injunction was not granted on the balance of convenience; instead an early trial was directed.
18 The plaintiffs claim against the defendants for:
(a) trade mark infringement under s 27(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”) for using marks that are similar with the plaintiffs’ trade mark in respect of identical services for which that trade mark was registered;
(b) passing off, with the plaintiffs asserting that “Luke’s” is their distinctive name; and
(c) a declaration that the Luke’s Lobster trade marks are invalid pursuant to s 23 of the TMA on the basis that they were registered in breach of ss 8(2)(b) and/or 8(7) of the TMA because there is passing off in respect of “Lukes” [sic].
19 Besides the declaration of invalidity in [18(c)] above, the plaintiffs seek:
(a) an injunction to restrain the defendants from using any sign that incorporates the word “Luke’s” for goods and services identical or similar to those for which the Luke’s Oyster Bar & Chop House trade mark is registered;
(b) an inquiry as to damages or alternatively, at the plaintiffs’ option, an account of profits; and
(c) an order for the delivery up or destruction upon oath of all infringing material in the defendants’ possession, power, custody or control.
20 I will first address the claim for trade mark infringement (see [21] below), then the claim for passing off (see [120] below), and finally whether the Luke’s Lobster trade marks are invalid (see [179] below).
Are the defendants liable for trade mark infringement?
Analytical framework
21 Section 27(2) of the TMA provides as follows:
A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because —
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public.
22 Whether there is infringement under s 27(2) of the TMA is assessed by the step-by-step approach (The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo”) at [8]):
First the alleged offending sign must be shown to be similar to the registered mark. Second, both the sign and the mark must be used in relation to similar goods or services. Third, on account of the presence of the first two conditions, there exists a likelihood of confusion on the part of the public.
23 In Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell (CA)”), the Court of Appeal explained (at [15]):
… the only relevant type of confusion for the purpose of grounding an opposition or an infringement action, is that which is brought about by the similarity between the competing marks and between the goods and services in relation to which the marks are used … Under the step-by-step approach, the three requirements of similarity of marks, similarity of goods or services, and likelihood of confusion arising from the two similarities, are assessed systematically. The first two elements are assessed individually before the final element which is assessed in the round.
[emphasis in original]
24 In comparing the marks, the court will consider visual, phonetic (or aural), and conceptual similarity (Han’s ([3] above) at [105]). This is done mark-for-mark without consideration of any external matter (Han’s at [105]; Staywell (CA) at [20]).
25 Distinctiveness is a factor integrated into the visual, aural and conceptual analysis of the marks (Staywell (CA) at [30]). Distinctiveness in the ordinary and non-technical sense refers to what is outstanding and memorable about the mark; distinctiveness in the technical sense is contrasted with descriptiveness (Staywell (CA) at [23]?[24]). In Staywell (CA), the court found that, at least in relation to hotels and hospitality services, “Regis” enjoys a substantial degree of technical distinctiveness, and there was a high degree of aural similarity between the competing “St Regis” and “Park Regis” marks because of the distinctiveness of the common “Regis” component in both the technical and non-technical senses (at [31]).
26 The plaintiffs similarly contend that “Luke’s” in the plaintiffs’ trade mark was, by itself, distinctive of their restaurants. Thus, they argue that the Luke’s Lobster trade marks (both of which have the word “Luke’s”) are similar to the plaintiffs’ trade mark, indeed confusingly so. I address this below.
Similarity of marks
Visual similarity of marks
27 The plaintiffs contend that here, the dominant and distinctive component of the marks is the word “Luke’s” – that is the most visually noticeable and memorable part of the marks:
(a) in the Luke’s Oyster Bar & Chop House trade mark, the word “Luke’s” is at the top, in a font that is twice the size of the words “Oyster Bar” and “Chop House”, and about three times the size of the words “Travis Masiero Restaurant Group”; and
(b) in the Luke’s Lobster trade marks, “Luke’s” is coupled with “Lobster” (either as a word or as a lobster device).
28 “Luke’s” is, however, not the only word in the plaintiffs’ mark. The plaintiff did not register “Luke’s” as a trade mark and then use that for restaurants named “Luke’s Oyster Bar & Chop House”. Instead, the plaintiffs registered a trade mark with nine words: Luke’s / Oyster Bar / Chop House / Travis Masiero Restaurant Group.
29 In Ozone Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459 (“Ozone”), the High Court held that the “GLAMOUR” and “HYSTERIC GLAMOUR” marks were visually dissimilar (and also aurally dissimilar) (at [53] and [56]). In determining the visual similarity of the marks, the court considered the length of the marks, the structure of the marks (ie, whether there are the same number of words), and whether the same letters are used in the marks (at [49]).
30 Similarly, in Taylor ([3] above), the Assistant Registrar of Trade Marks found that the “Taylor’s” and “Taylors Wakefield” marks were not visually similar (at [73]).
31 So, too, the Court of Appeal found in Polo ([22] above) that the mark was not similar to the “POLO” word mark. The court said (at [24]):
Bearing in mind that ‘polo’ is a common English word, we are unable to see how it could be said that the sign ‘POLO PACIFIC’ with its special font and design is similar to the mark ‘POLO’ except in the broadest of sense that one word is common.
32 Here, the plaintiffs’ trade mark consists of – Luke’s / Oyster Bar / Chop House / Travis Masiero Restaurant Group: nine words, 51 letters (see [5] above). On the other hand, the Luke’s Lobster word mark has two words, 12 letters; the Luke’s Lobster logo has one word, five letters, and a lobster device (see [11] above).
33 There are also differences in font, and design. The fonts and typefaces of the Luke’s Oyster Bar & Chop House trade mark and Luke’s Lobster trade marks are noticeably different (see [61] below). In terms of design, the Luke’s Oyster Bar & Chop House trade mark is made up almost exclusively of words (save for a separator between “Oyster Bar” and “Chop House”), while the Luke’s Lobster logo is represented by both a word (“Luke’s”) and a lobster device. Unlike the Luke’s Lobster word mark, which is a simple word mark representing “Luke’s Lobster” in a single file, the Luke’s Oyster Bar & Chop House trade mark is a composite mark comprising “Luke’s”, “Oyster Bar”, “Chop House” and “Travis Masiero Restaurant Group” occupying their respective positions within the mark. The comparison is:
as compared to
and
.
34 Such differences were also noted in several other cases where the marks were found to be dissimilar:
(a) in Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203 (“Valentino (CA)”), between the opponent’s marks and , and the applicant’s mark ;
(b) in Discovery Communications, LLC v A-Star-Education Discovery Camps Pte Ltd [2020] SGIPOS 4, between the opponent’s mark and the applicant’s mark ; and
(c) in Han’s ([3] above), where the court held that the HAN Cuisine of Naniwa sign (“HAN sign”) was similar to the Han’s word marks but dissimilar to the Han’s composite marks . The court found that the HAN sign had visual similarity with the Han’s word marks but not with the Han’s composite marks, phonetic similarity with all four of the Han’s marks, but was conceptually dissimilar to all of the Han’s marks (particularly with the Han’s composite marks) (at [122]–[143]). In the event, the court found that although the HAN sign was similar to the Han’s word marks, it was not confusingly so (at [183]).
35 These cases may be contrasted with Staywell (CA) ([23] above), where the Court of Appeal found that Staywell’s mark was similar to Starwood’s “ST. REGIS” word mark (at [38]).
36 In all the above cases, there was some common element between the marks: “Glamour”, “Taylor”, “Polo”, “Valentino”, “Discovery”, “Han”, “Regis”, but the competing marks were only found to be similar overall in Han’s (in respect of the word marks) and Staywell (CA) (comparing “Park Regis” to “St Regis”).
37 As for the plaintiffs’ contention that “Luke’s” per se is distinctive of their restaurants, case law indicates that a commonly used personal name (like “Luke”) is considered of low distinctiveness:
(a) in Taylor ([3] above), there was evidence that it was used as the trading name of a number of live businesses in Singapore (at [52]);
(b) in Kenzo ([3] above), that was likewise noted in relation to “Kenzo” and the Principal Assistant Registrar of Trade Marks moreover stated that the average member of the public is equally likely to construe the word “KENZO” as a personal name of Japanese origin, as much as a sign that may serve as a badge of origin (at [40]).
(c) in Luciano Sandrone v European Union Intellectual Property Office (Case T-268/18), the European General Court compared the “DON LUCIANO” and “Luciano Sandrone” marks, and concluded that as the first name “Luciano” was a common first name in Spain, Italy, Portugal and France (at [74]), there was only a weak degree of visual and phonetic similarity between the competing marks (at [78] and [80]), and no likelihood of confusion (at [92]?[103]).
38 In Singapore, the words “Luke”, “Luke’s” and “Lukes” are found in the registered trading names of various entities:
Name of business entity
Description of business
(a)
Leia&Luke Express
Renting and leasing of private cars without operator
(b)
Luke & Bean
Retail sale via vending machines (with income mainly from vending machine sales)
(c)
Luke Edward Communication and Consultancy
Commercial printing (eg printing of brochures, cards, envelopes, labels and stationery)
(d)
Luke Lee & Co
Legal activities
(e)
Luke N Leia
Retail sale of handicrafts, collectibles, and gifts
(f)
Luke Partners
Management consultancy services (general)
(g)
Luke Services
Management consultancy services N.E.C.
(h)
Luke’s Consortium
Information technology consultancy (except
cybersecurity)
(i)
Luke’s Technologies
Information technology consultancy (except
cybersecurity)
(j)
Luke Alexander Pte Ltd
Manufacture of metal precision components
(k)
Luke Capital Management Pte Ltd
Corporate finance advisory services
(l)
Luke Investments Pte Ltd
Other holding companies
(m)
Luke Medical Pte Ltd
Insurance agencies and agents (including financial planning services)
(n)
Luke Philips International Pte Ltd
Retail sale of clothing for adults
(o)
Luke Systems Technology Pte Ltd
Information technology consultancy (except cybersecurity)
(p)
Luke Tan ENT Surgery Pte Ltd
Specialised medical services (including day surgical centres)
(q)
Lukes Marine Engineering and Consulting Services Pte Ltd
Wholesale of marine equipment and accessories (including marine navigational equipment and radar)
(r)
St Luke’s Eldercare Ltd
Other personal service activities N.E.C.
(s)
St Luke’s Hospital
Acute hospitals
39 “Luke” and “Luke’s” also feature in the trade marks of other parties registered in the following classes of the ICGS:
Class
Trade mark
(a)
Classes 20 and 42
(b)
Class 28
(c)
Class 3
(d)
Classes 29, 30 and 35
40 Food products are also sold under the names “Luke’s Organic” and “Tom & Luke” (see: (accessed 17 February 2021); (accessed 17 February 2021)):