Chai Chyau Ling (doing business as Racetech Auto) v. Racing Technology Pte Ltd [2009] SGHC 105

In the recent decision of Chai Chyau Ling (doing business as Racetech Auto) v. Racing Technology Pte Ltd [2009] SGHC 105, the High Court took the opportunity to discuss the concept of identical marks in the context of trade mark infringement under Section 27 of the Singapore Trade Marks Act (Cap. 332, 2005 Rev Ed).

The legal tussle arose out of the use of the Respondent’s Trade Mark ‘RACETECH’ (the “Trade Mark”) and the Appellant’s trade name/Logo ‘RACE TECH’ (the “Logo”), both in relation to vehicle-related services.

The court noted that, as between the Trade Mark and Logo, there were differences, arising from the spacing in between ‘RACE’ and ‘TECH’ in ‘RACE TECH’, the colour and the typography. The court candidly observed that it would be “violence to the English language” to conclude that they were identical.

The court also acknowledged that the European courts adopted a strict test to identity, that is, “identity implie[d] that the two elements compared should be the same in all respects” (see SA Société LTJ Diffusion v Sadas Vertbaudet SA [2003] FSR 34).

Nevertheless, the court opined that for the purposes of trade mark infringement, minor differences which are insignificant can still give rise to ‘identity’ between the infringing and infringed trade marks.
The court was guided by Kerly’s Law of Trade Marks and Trade Names (14th edition, 2005) which observed that “a sign will be identical with the registered mark where it reproduces, without any modification or addition, all the elements constituting the mark or where (sic), viewed as a whole, it contains differences so insignificant they may go unnoticed by the average consumer”.

In fact, this approach was earlier adopted by the High Court in Louis Vuitton Malletier v City Chain Stores (S) and Another Matter [2009] SGHC 24. In that case, it was found that while there were differences between the designs of the plaintiff and defendant, those differences were “not of any real significance” and certain features, while marginally different, “were hardly noticeable” when one took a holistic observation of the designs. 

In the present case, the court found that the differences between ‘RACE TECH’ and ‘RACETECH’ were so inconsequential and held that they were identical to each other for the purposes of trade mark infringement.

Terri Koh
Associate
ATMD Bird & Bird LLP
IP & Technology Group
DID 6428 9883
Fax 6223 8762
Email Terri.Koh@twobirds.com