Fortis Law’s lawyers’ article on “Protecting a Business’ Marks” has been published and featured in the Asian Legal Business.
Authors: Patrick Tan & Kaden Goh
A well-designed mark provides recognition for the business by providing a distinctive badge connecting consumers’ minds to the business. This article focuses on the tort of passing off (“Passing Off”), a legal recourse that a business owner (the “Original Business”) can consider when others sell their goods or services while misrepresenting that the goods or services or even the company itself is connected to the Original Business. In particular, this article discusses Passing Off using similar visual marks.
Elements of Passing Off
Goodwill is required as Passing Off is concerned with protecting the goodwill of businesses. The goodwill of a business must be founded upon a distinctive badge that identifies the Original Business as the source of a product or service. In this regard, a mark of a business can be a distinctive badge upon which goodwill can be founded on.
In Passing Off, an actionable misrepresentation is one that has the effect of confusing or deceiving the public (i.e. those likely to acquire goods or services of the Original Business). With regard to marks, the similarity of the marks will be assessed to determine whether there is an actionable misrepresentation.
In assessing the similarity, the court will generally avoid a close and minute comparison of the marks, given that the public would usually have a general and imprecise recollection of the Original Business’ mark.
However, one ought to note the analogous case of Louis Vuitton Malletier v City Chain Stores (S) Pte Ltd  2 SLR(R) 684, where the learned judge appears to have compared the shape and details of each mark before considering whether the differences are significant when the marks are looked at holistically. Accordingly, it appears that a relatively high degree of visual similarity between the marks is nevertheless required for the court to find a likelihood of confusion.
That said, a smaller degree of similarity between marks may be offset by a larger degree of similarity between the trades of the Original Business and the tortfeasor.
The final element of Passing Off is the fact of damage or likelihood of damage.
Where the Original Business and the tortfeasor are engaged in a common trade, the loss is usually the loss of trade and profits arising from the wrongful diversion of the Original Business’ custom. Alternatively, where the Original Business and the tortfeasor are in dissimilar trades, the Original Business can attempt to claim damages based on, amongst other things, injury to the Original Business’ reputation.
In conclusion, Passing Off allows business owners to protect the goodwill they have built over time by maintaining the quality of its products or services and employing sound marketing strategies.
Written by: Patrick Tan and Kaden Goh