In more detail

East Coast Podiatry Centre Pte Ltd. ("Appellant") brought proceedings against Family Podiatry Centre Pte. Ltd. ("Respondent") for trade mark infringement and passing off. The dispute concerned the Respondent's use of phrases such as "east coast podiatry", "Podiatry East Coast", and "Podiatrist East Coast" in sponsored Google advertisements ("Respondent's Ads") to promote its podiatry services.

Key facts

The Appellant, owner of the composite mark "" that contains the words "East Coast Podiatry" and a device element, operates four clinics across Singapore. The Respondent operates two clinics and had used the relevant phrases in Google Ads targeting users in connection with the launch of a new clinic at Joo Chiat Road.

The Respondent's Ads consisted of brief promotional text and hyperlinks. When clicked, these directed users to the Respondent's website, which made no mention of the Appellant's mark or any similar wording. The Appellant contended that the Respondent's Ads amounted to trade mark infringement and passing off.

Issues before the court

The Appellant's claim for infringement was brought under both Sections 27(1) and 27(2)(b) of the TMA. The key questions on appeal were the following:

• Whether the Respondent had used the phrases in a "trade mark sense", i.e., as a badge of origin
• If so, whether such use was infringing, by virtue of similarity to the Appellant's registered mark and resulting likelihood of confusion

Decision of the Court of Appeal

The Court of Appeal dismissed the appeal and held:

• Threshold test of trade mark use: The Court reaffirmed that, to establish infringement under Section 27 of the TMA,  a claimant must first show that the defendant used the sign as a badge of origin. The Court rejected the broader effect-centric approach found in the CJEU case Google France SARL and another v. Louis Vuitton Malletier SA and other cases [2010] IP & T 992, holding that Singapore law focuses on the nature of the defendant's use, not the effect on the trade mark proprietor. The threshold test continues to apply even in the context of internet keyword advertising.

On the facts, the court found that the Respondent's use of the phrases was descriptive and location-based and not intended to indicate trade origin. The Respondent was advertising a clinic located in Singapore's East Coast region (the words "East Coast" are commonly used in Singapore as a proper noun referring to a district or area that includes Joo Chiat Road) and had selected the phrases based on advice to use location-based keywords.

• Similarity and confusion: Even if the Appellant had succeeded in showing trade mark use, the Court held that the signs used by the Respondent were not sufficiently similar to the Appellant's composite mark to amount to infringement under Section 27(2)(b), as they did not incorporate a crucial element of distinctiveness in the Appellant's Mark — namely, the device/logo element (small white cross over a green square background).

Key takeaways

This decision clarifies that the use of descriptive or geographic terms in online advertising — such as location-based keywords — does not automatically amount to trade mark infringement. The Court's reasoning provides assurance that where such terms are commonly understood and not distinctive of source, their good faith use is unlikely to constitute trade mark use. At the same time, trade mark owners should assess carefully whether any third-party use genuinely functions as a badge of origin before initiating enforcement action.

This appeal decision is also a reminder that the more distinctive a mark, the more likely its unauthorised use will amount to infringement or passing off. Less distinctive marks are less likely to operate as a clear badge of origin, particularly if they contain descriptive terms. The trade mark strategy of a business right from pre-filing searches through to prosecution, maintenance and enforcement must therefore be carefully considered.

For further information and to discuss what this development might mean for you, please get in touch with your usual Baker McKenzie contact.

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