The Singapore Court of Appeal's decision in East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2025] SGCA 28 has marked a pivotal moment in the realm of trademark law, particularly as it pertains to internet advertising and the nuances of trade mark use. This landmark ruling not only clarifies the legal landscape in Singapore but also underscores the broader implications for businesses navigating the digital marketplace.
The Dispute: A Clash Over Online Ads
At the heart of this case was a dispute between two podiatry clinics, East Coast Podiatry Centre Pte Ltd (the "Appellant") and Family Podiatry Centre Pte Ltd (the "Respondent"). The Respondent used Google's advertising services to promote its clinic under variations like "east coast podiatry," "Podiatry East Coast," and "Podiatrist East Coast" (the "Signs"). These ads were designed to attract customers searching for podiatry services.
The Appellant, owning the composite trademark "East Coast Podiatry" (the "Mark"), alleged that the Respondent's use of these Signs constituted trade mark infringement under Sections 27(1) and 27(2)(b) of the Singapore Trade Marks Act 1998 (TMA). The lower court dismissed this claim, leading the Appellant to appeal on the basis of Section 27(2)(b), which deals with actionable misrepresentation through passing off.
Clarifying the Threshold of Trade Mark Use
A critical aspect of the case was determining whether the Respondent's use of the Signs met the threshold for trade mark use under Singapore law. The TMA requires that the use denotes the trade origins of the goods or services, distinguishing it from purely descriptive or generic uses.
The Court of Appeal reaffirmed that this is a threshold inquiry, to be evaluated before delving into comparisons of marks and likelihood of confusion. In online advertising contexts, three main factors are considered:
Objective Circumstances: The prominence and purpose of the Signs in the ad matter. If they are merely decorative or descriptive (like indicating a location), they may not meet the trade mark use threshold.
Inherent Distinctiveness: Generic terms or those less distinctive are more likely to be considered non-infringing uses, allowing competition in the market.
Linked Website Context: The website destination can shed light on whether the Signs function as badges of origin. For instance, if the website clearly identifies the Respondent's clinic, it weakens the case for trade mark use.
The Court found that "east coast podiatry" and similar phrases were descriptive, focusing on location rather than origin, thus failing to meet the trade mark use criteria. This decision emphasizes the need for businesses to weigh their advertising strategies against potential legal implications.
Divergence from UK and European Approaches
Singapore's approach differs significantly from that of the UK and Europe, particularly regarding keyword advertising. In contrast to Singapore, which requires actual denotation of trade origin, UK and European courts have adopted an "effect-centric" approach. This means that even if a use doesn't denote origin, it may still infringe if it impacts the registered mark's functions, such as its advertising or investment roles.
The Singapore Court of Appeal rejected this broader approach, aligning with the TMA's strict requirements. They emphasized that simply affecting a mark's function isn't sufficient for infringement under Section 27(1), which requires identical signs for identical goods/services without the need to prove confusion.
This divergence highlights the importance of understanding regional legal frameworks when operating across borders. Singapore's stricter stance on trade mark use could provide greater latitude for competitors to use descriptive terms in advertising, while UK and European businesses may face more stringent regulations.
Implications for Brands: Navigating Digital Advertisements
The ruling offers several takeaways for brand owners:
Context Matters: Use of Signs must be evaluated within their specific ad context. Descriptive or generic terms may not infringe, but exact matches could still pose risks.
Weed Out Infringing Uses Proactively: Brands should monitor competitors' online ads and assess whether they use identical or confusingly similar marks for identical goods/services.
Leverage Competitor Strategies: Understanding when competitors are using your trademark in their ads can help determine if legal action is warranted.
Adapt to Local Laws: Businesses operating in Singapore must tailor their strategies to local trade mark laws, which may differ from other jurisdictions.
Conclusion: A Foundation for Future Trademark Law
The East Coast Podiatry case sets a crucial precedent for Singapore's trade mark law as it evolves within the digital economy. By clarifying the threshold of trade mark use and distinguishing itself from other jurisdictions, the ruling provides much-needed certainty while charting a unique path forward.
As online advertising becomes more sophisticated, businesses must grapple with these legal principles to navigate the complexities of trademark enforcement. This decision not only resolves the immediate dispute but also lays the groundwork for how Singapore's trade mark laws will adapt to future challenges in the digital age.