In detail
Sunrise Plus (Pte) Ltd ("Appellant") applied to register the following marks:
in Class 5 (40201816175S-02)
in Classes 29, 30 and 35 (40201816175S-01)
The Sunrider Corporation dba Sunrider International ("Respondent") opposed these marks based on the following mark ("Respondent's Earlier Mark"):
in Class 5 (T9300374C)
The PAR of the IPOS allowed the Respondent's opposition against both marks.
Main issues of the appeal
The two main issues of the appeal were as follows:
- Whether the Appellant's applications in Class 5 and 35 were similar to the Respondent's Earlier Mark and lead to a likelihood of confusion ("Earlier Registered Mark Ground")
- Whether the Appellant's applications in Class 5 and 35 constituted passing off ("Passing Off Ground")
The Earlier Registered Mark Ground
A trademark must not be registered if it is similar to an earlier trademark and is to be registered for goods or services identical or similar to those for which the earlier trademark is protected, therefore resulting in a likelihood of confusion for the public.
Given mark similarity was established, the judge moved on to assess the similarity of the goods and services. The judge considered the respective uses of the goods/services and the respective users of the goods/services, ultimately finding there to be a similarity of goods between the Respondent's Earlier Mark and the Appellant's application mark in Class 5.
In relation to the Appellant's application in Class 35, the PAR relied on the principle in Guccio Gucci S.p.A v. Guccitech Industries (Private Ltd) [2018] SGIPOS 1 that goods and services can be similar to each other where the earlier mark is registered for retail services of certain goods and the mark applied for is registered for those goods. It also found there to be similarity of goods and services between the Appellant's application marks in Class 35 and the Respondent's Earlier Mark.
The judge ultimately found there to be a high degree of similarity between the marks, as they were visually and conceptually similar to a large extent and aurally identical. Taken together with the high similarity of goods and services and having considered various factors, including the reputation of the marks and the nature of the goods and services, the judge was satisfied that there was a likelihood of confusion for the public.
As such, the appeal on the Earlier Registered Mark Ground was dismissed.
The Passing Off Ground
To succeed in an action for passing off, the requirements of goodwill, misrepresentation and damage must be established.
On goodwill, the Respondent provided approximate global sales and Singapore sales from 2005 to 2021 for the Respondent's products, for products relating to the Respondent's Earlier Mark and for certain unregistered marks belonging to the Respondent. However, the document was self-compiled, and there were no supporting documents, such as invoices, purchase orders or other business documents. As such, the judge ultimately found that the Respondent had not established goodwill due to insufficient accurate evidence.
The judge also found that the Respondent had not established the element of misrepresentation. Importantly, the PAR held that, since she had found a "likelihood of confusion" to exist under the Earlier Registered Mark Ground, there would be a likelihood of misrepresentation. However, the judge disagreed, stating that, in passing off, the "likelihood of misrepresentation" test concerns the proprietor's "goodwill." In contrast, the test for the "connection" in the Earlier Registered Mark Ground concerns the "interests" of the well-known trademark proprietor. Likewise, the test of "likelihood of confusion" concerns confusion as to the origin of the parties' goods, and not their goodwill.
This distinction was important in this case, as the judge found that the Respondent had not established goodwill, such that it could not be said that there was also misrepresentation.
As the Respondent had not established the elements of goodwill and misrepresentation, the Appellant succeeded in its appeal regarding the Passing Off Ground for its applications in Class 5 and 35.
Key takeaways
This decision sheds light on the analysis the courts will take when considering the Earlier Registered Mark Ground and Passing Off Ground. Of particular note in this case are how the judge applied the British Sugar factors to determine the similarity of the goods and services under the Earlier Registered Mark Ground, and the evidence the judge found necessary to be provided before finding that the requirement for "goodwill" had been satisfied under the Passing Off Ground.
Also notable is the judge's application of the distinction made in Sarika, the result being that the failure to establish goodwill necessarily means that there cannot have been misrepresentation, and no passing off. This is important to note in drafting pleadings and submitting evidence to support the causes of action available to an aggrieved party.
* * * * *
© 2025 Baker & McKenzie. Wong & Leow. All rights reserved. Baker & McKenzie. Wong & Leow is incorporated with limited liability and is a member firm of Baker & McKenzie International, a global law firm with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a "principal" means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an "office" means an office of any such law firm. This may qualify as "Attorney Advertising" requiring notice in some jurisdictions. Prior results do not guarantee a similar outcome.
