The General Division of the High Court recently elucidated the Singapore courts’ position on trademark infringement and passing off concerning internet advertising.

Both the claimant, East Coast Podiatry Centre, and the defendant, Family Podiatry Centre, operate podiatry clinics. The claimant owns several trademarks containing the words, “East Coast Podiatry” as follows:  

1. Trade Mark No. 40201807140R, , (the first mark) 

2. Trade Mark No. 40201808612Y,, (the second mark) 

3. Trade Mark No. 40201818910V, , (the third mark) 

(collectively, the ECPC marks). 

The defendant purchased Google advertisements which used keywords such as “east coast podiatry”, “Podiatry East Coast” and “Podiatrist East Coast” in the headlines to advertise the opening of its new branch. Clicking on the advertisements directs a user to the defendant’s website.  

The claimant commenced an action against the defendant for infringement of its ECPC marks by using an identical or similar sign and for identical or similar goods and services, as well as for passing off.  

The issues before the court were (i) whether the advertisements infringe the second mark and (ii) whether the claimant established passing off. The court restricted its analysis on infringement to the second mark which contained the least additional elements to the words “East Coast Podiatry” and therefore had the greatest likelihood of similarity to the advertisements. Accordingly, if infringement with respect to the second mark was not established, the claimant would fail in relation to the first and third marks. 

Observations on Google Ads 
The court held that expert evidence was not necessary to determine how an average consumer might perceive Google Ads given the general public’s strong internet literacy and the widespread use of search engines like Google. 

The court also briefly explained the operations of Google’s search engine, where entering words into the engine presents users with search results, each of which includes:  

1. a “headline” that functions as a hyperlink to a corresponding website (i.e. the Uniform Resource Locator (URL) and a short commercial message); and 

2. “sponsored links”, advertisements created under Google Ads, comprising a ”headline”, short commercial message, and the URL. 

Infringement  
For infringement to be made out, the claimant must prove that there was: (a) use by the defendant within Singapore; (b) in the course of trade; (c) in a trademark sense; and (d) without the consent of the claimant(s). In considering whether there was infringement of an identical mark, the court stressed that the test of whether a sign is “identical” with a registered trademark “entails a strict interpretation”, and “[m]inor differences would take the case outside the definition of identical”. In the present case, the court was of the view that the test was not met.  

In the alternative, in considering whether there was infringement of a similar mark, the court assumed, without deciding, that the defendant’s signs are similar to the second mark and concluded that the parties’ services are identical. Regarding the enquiry into the likelihood of confusion, the relevant public would be the “general public in Singapore who uses Google’s search engine”, and target consumers “include actual or potential consumers of podiatry services”.  

Since likelihood of confusion must be assessed based on how the “advertisement was presented as a whole”, the court took into account the defendant’s URL and held that the URL is part of the sponsored link. The court also considered the defendant’s website since it formed an integral part of the advertisements and the function of Google Ads was for consumers to click on the sponsored links and be automatically redirected to the advertiser’s website. 

The court held that there was no likelihood of confusion since clicking on the defendant’s Advertisements automatically redirected the relevant public to the defendant’s website which contained nothing to suggest that the defendant’s podiatry services originate from the claimant. Accordingly, there was no infringement. 

Passing off 
The court reaffirmed the elements of passing off: goodwill, misrepresentation and damage. In finding that the claimant had goodwill, the court highlighted the following: the claimant’s operation in Singapore since 2015, the claimant’s various advertising and marketing efforts and the claimant’s significant revenue figures between 2019 and 2022. Additionally, the claimant’s business presence in Singapore was well established, given its four podiatry centres. 

However, for the same reason that there was no likelihood of confusion in relation to trademark infringement, the court held that there was no misrepresentation resulting in a likelihood of confusion. Accordingly, there was no passing off by the defendant either. 

It is worth noting that while the court found no infringement based on the present set of facts, it is possible that a different conclusion may be arrived at, particularly if the origin of the goods or services cannot be clearly discerned.