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In the GENERAL DIVISION OF
THE high court of the republic of singapore
[2024] SGHC 102
Originating Claim No 33 of 2022
Between
East Coast Podiatry Centre Pte Ltd
… Claimant
And
Family Podiatry Centre Pte Ltd
… Defendant
judgment
[Intellectual Property — Trade marks and trade names — Infringement — Internet usage]
[Intellectual Property — Trade marks and trade names — Passing off]
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.
East Coast Podiatry Centre Pte Ltd
v
Family Podiatry Centre Pte Ltd
[2024] SGHC 102
General Division of the High Court — Originating Claim No 33 of 2022 Dedar Singh Gill J 2–3 November 2023, 19 January 2024
17 April 2024 Judgment reserved.
Dedar Singh Gill J:
1 The claimant is the registered proprietor of trade marks which contain the words “East Coast Podiatry”. On three separate occasions, the defendant used Google’s advertising service (“Google Ads”) to display advertisements containing the words “east coast podiatry”, “podiatry east coast” and “podiatrist east coast” respectively. The issues before me are whether the defendant’s use is infringing use and whether its conduct gives rise to a claim in passing off. I conclude that it is not infringing use and there is no passing off.
Facts
The parties
2 The claimant is East Coast Podiatry Centre Pte Ltd, a Singapore-registered private company in the business of providing podiatry services.
Foot Note 1
Statement of Claim (Amendment No.1) (dated 22 May 2023) (“SOC”) at para 1; Claimant’s Closing Written Submissions (dated 5 January 2024) (“CCS”) at para 3; Defence & Counterclaim (Amendment No.1) (dated 30 May 2023) (“Defence”) at para 1.
The claimant operates four podiatry centres in Singapore. These are located in the Kembangan, Orchard, Novena and Bukit Timah regions.
Foot Note 2
CCS at para 4; Defence at para 2.
The claimant’s sole director and shareholder is Mr Jevon Tay (“Mr Tay”).
Foot Note 3
CCS at para 6.
3 The defendant is Family Podiatry Centre Pte Ltd, a Singapore-registered private company also in the business of providing podiatry services.
Foot Note 4
SOC at para 2.
The defendant operates two branches in Singapore. These are located in Bukit Timah and Joo Chiat.
Foot Note 5
Defendant’s Closing Submissions (dated 5 January 2024) (“DCS”) at para 3; Mark Brenden Reyneker’s Affidavit of Evidence-in-Chief (dated 16 June 2023) (“Mr Reyneker’s AEIC”) at para 19; CCS at para 5.
The defendant’s sole director and shareholder is Mr Mark Brenden Reyneker (“Mr Reyneker”).
Foot Note 6
CCS at para 6.
Background to the dispute
4 The claimant began its business operations sometime in September 2015, and set up its first centre in the Kembangan area of Singapore, operating under the name “East Coast Podiatry”.
Foot Note 7
Notes of Evidence (“NE”) (2 November 2023) at page 10 line 12 to 14.
Two months thereafter, the claimant bought over a failing practice in Orchard which was named “Orchard Clinic”.
Foot Note 8
NE (2 November 2023) at page 40 line 27 to page 41 line 29.
Sometime in 2016, the claimant opened a third outlet in the Novena area also operating as “East Coast Podiatry”.
Foot Note 9
NE (2 November 2023) at page 42 lines 4 to 10.
Finally, in February 2022, the claimant opened a fourth outlet in the Bukit Timah area.
Foot Note 10
NE (2 November 2023) at page 42 lines 11 to 17.
It was only in or around 2017 that the claimant consolidated the names of all its clinics, including the Novena outlet, as “East Coast Podiatry”.
Foot Note 11
NE (2 November 2023) at page 41 line 30 to page 42 line 3.
5 The claimant is the registered proprietor of the following trade marks (collectively, the “ECPC Marks”):
Foot Note 12
SOC at para 3; Defence at paras 3–4.
(a) Trade mark no. 40201807140R, registered on 17 April 2018 for goods and services in Classes 5, 10, 25 and 44 of the International Classification of Goods and Services (“ICGS”) (the “First Mark”):
Foot Note 13
CCS at para 3(a).
(b) Trade mark no. 40201808612Y, registered on 10 May 2018 for goods and services in Classes 5, 10, 25 and 44 (the “Second Mark”):
Foot Note 14
CCS at para 3(b).
(c) Trade mark no. 40201818910V, registered on 19 September 2018 for goods and services in Classes 10, 25 and 44 (the “Third Mark”):
Foot Note 15
CCS at para 3(c).
6 On 11 January 2022, Mr Reyneker instructed a property agent, Ms Wu Mei Yung (Anne Wu) (“Ms Wu”), to find a commercial space for the defendant’s new branch. Mr Reyneker indicated that he was “looking for a heritage building or something unique and interesting” and that he had “River Valley in mind but [he was] open to other areas”.
Foot Note 16
NE (2 November 2023) at page 119 lines 2 to 8; Wu Mei Yung (Anne Wu)’s Affidavit of Evidence-in-Chief (dated 15 June 2023) (“Ms Wu’s AEIC”) at paras 1, 7–11.
On 27 January 2022, Ms Wu informed Mr Reyneker that it did not seem promising to find a shophouse in the River Valley area due to a “shortage of supply”.
Foot Note 17
Agreed Bundle of Documents (“ABOD”) 17.
7 On 2 February 2022, Mr Reyneker informed Ms Wu that he could consider the East Coast region as another potential location.
Foot Note 18
NE (2 November 2023) at page 118 lines 2 to 28; page 119 lines 9 to 11.
In response, Ms Wu told Mr Reyneker that there were two conservation units in Joo Chiat.
Foot Note 19
ABOD 18.
On or around 7 April 2022, Mr Reyneker signed the Letter of Intent to rent the unit at 170 Joo Chiat Road.
Foot Note 20
NE (2 November 2023), at page 118 lines 28 to page 119 line 1.
Mr Reyneker subsequently signed the tenancy agreement for the unit on 22 April 2022.
Foot Note 21
NE (2 November 2023), at page 118 lines 28 to page 119 line 1.
8 On 14 April 2022, Mr Tay discovered four of the defendant’s advertisements on Google. The advertisements displayed the following headlines (collectively, the “First Incident Advertisements”):
Foot Note 22
CCS at para 8.
(a) “east coast podiatry – Up to 30% off for 1st Consult”;
(b) “east coast podiatry – 20 Years of Experience”;
(c) “east coast podiatry – Podiatrist Bukit Timah”; and
(d) “east coast podiatry – Family Podiatrist”.
9 On the same day, Mr Tay contacted Mr Reyneker over WhatsApp to inform him that the defendant’s advertisements had infringed the claimant’s trade marks.
Foot Note 23
CCS at para 9; Agreed Bundle of Documents (“ABOD”) 43.
Mr Tay included pictures of the alleged First Incident Advertisements, stating that: “[t]here’s this trade mark infringement matter now that you may be unaware of. So I just want to check back with you if you know about this”. In response, Mr Reyneker replied:
Foot Note 24
ABOD 40.
[14/4/22, 9:10:45 PM] Mark: Hi Jevon
[14/4/22, 9:10:50 PM] Mark: This is from today?
[14/4/22, 9:11:16 PM] Mark: Or have you seen this multiple times?
[14/4/22, 9:16:57 PM] Mark: I can look into it but just an interesting thought – outside of this problem – can’t other podiatrists in East Coast say East Coast podiatry? Don’t think you can trademark and area and a profession. But you can trademark your logo and the way you write/draw East Coast Podiatry.
10 Although Mr Tay and Mr Reyneker exchanged messages thereafter, Mr Reyneker did not take down the defendant’s First Incident Advertisements.
Foot Note 25
CCS at para 9.
11 The claimant therefore lodged a trade mark violation complaint with Google on 16 April 2022, and also wrote to Google on 10 May 2022, stating that the defendant’s First Incident Advertisements “had infringed [the claimant’s] ECPC Marks and or [the defendant had] passed itself off as the claimant”.
Foot Note 26
CCS at para 10; SOC at para 1.
12 On 20 April 2022, the claimant’s solicitors delivered a letter to the defendant demanding for the immediate removal of the term “East Coast Podiatry” from the First Incident Advertisements.
Foot Note 27
CCS at para 11.
13 On 17 and 20 May 2022, Google’s Legal Support Team informed the claimant that, after its investigations, it had restricted the First Incident Advertisements in accordance with the Google Ads Trademarks policy.
Foot Note 28
CCS at para 12; ABOD 54–55.
14 On 6 May 2022, the claimant proceeded to file this claim against the defendant for infringement of the claimant’s ECPC Marks under s 27 of the Trade Marks Act 1998 (2020 Rev Ed) (the “TMA”) and for passing off.
Foot Note 29
SOC at paras 9–28.
15 On 27 May 2022, the defendant filed its Defence and Counterclaim. In its Defence, the defendant alleged that its usage of the signs in the First Incident Advertisements was purely descriptive and there was no likelihood of confusion.
Foot Note 30
Defence at paras 22–23.
The defendant also brought a counterclaim that the claimant had made groundless threats of infringement pursuant to s 35(1)(a)–(c) of the TMA.
Foot Note 31
Counterclaim at paras 1–2.
16 On 3 July 2022, the claimant discovered two more of the defendant’s Google advertisements. These advertisements had the following headlines (the “Second Incident Advertisements”):
Foot Note 32
CCS at para 13.
(a) “Podiatry East Coast – Podiatrist Singapore price”; and
(b) “Podiatry East Coast – Podiatrist Bukit Timah”.