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THE high court of the republic of singapore
[2024] SGHC 102
Originating Claim No 33 of 2022
East Coast Podiatry Centre Pte Ltd
Family Podiatry Centre Pte Ltd
[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


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.
The parties
2 The claimant is East Coast Podiatry Centre Pte Ltd, a Singapore-registered private company in the business of providing podiatry services. The claimant operates four podiatry centres in Singapore. These are located in the Kembangan, Orchard, Novena and Bukit Timah regions. The claimant’s sole director and shareholder is Mr Jevon Tay (“Mr Tay”).
3 The defendant is Family Podiatry Centre Pte Ltd, a Singapore-registered private company also in the business of providing podiatry services. The defendant operates two branches in Singapore. These are located in Bukit Timah and Joo Chiat. The defendant’s sole director and shareholder is Mr Mark Brenden Reyneker (“Mr Reyneker”).
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”. Two months thereafter, the claimant bought over a failing practice in Orchard which was named “Orchard Clinic”. Sometime in 2016, the claimant opened a third outlet in the Novena area also operating as “East Coast Podiatry”. Finally, in February 2022, the claimant opened a fourth outlet in the Bukit Timah area. 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”.
5 The claimant is the registered proprietor of the following trade marks (collectively, the “ECPC Marks”):
(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”):
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(b) Trade mark no. 40201808612Y, registered on 10 May 2018 for goods and services in Classes 5, 10, 25 and 44 (the “Second Mark”):
(c) Trade mark no. 40201818910V, registered on 19 September 2018 for goods and services in Classes 10, 25 and 44 (the “Third Mark”):
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”. 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”.
7 On 2 February 2022, Mr Reyneker informed Ms Wu that he could consider the East Coast region as another potential location. In response, Ms Wu told Mr Reyneker that there were two conservation units in Joo Chiat. On or around 7 April 2022, Mr Reyneker signed the Letter of Intent to rent the unit at 170 Joo Chiat Road. Mr Reyneker subsequently signed the tenancy agreement for the unit on 22 April 2022.
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”):
(a) “east coast podiatry – Up to 30% off for 1st Consult”;
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(b) “east coast podiatry – 20 Years of Experience”;
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(c) “east coast podiatry – Podiatrist Bukit Timah”; and
(d) “east coast podiatry – Family Podiatrist”.
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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. 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:
[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.
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”.
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.
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.
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.
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. 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.
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”):
(a) “Podiatry East Coast – Podiatrist Singapore price”; and
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(b) “Podiatry East Coast – Podiatrist Bukit Timah”.