A company in Singapore that imports and distributes healthcare and lifestyle-related products, OTO Bodycare Pte. Ltd. ("OTO"), recently won its trade mark infringement and passing off suit against a businessman, Hiew Keat Foong, in a case concerning electrical foot massage machines.
In this case, OTO alleged that Hiew, trading as Blackgold Asia Pacific, had infringed its OTO and OTO Bodycare trade names as well as passed off a foot reflexology machine as that of his own.
At issue was one of the products from OTO's "Relaxation" range that is manufactured in South Korea and has been marketed in Singapore under the name "OTO Electro-Reflexologist" since mid-2002.
Around the end of 2003 or early last year, it came to OTO's attention that Hiew was selling a very similar product in the atrium of a local shopping mall. The product was manufactured in China and sold in Singapore under the name "HL Electro-Relaxologist". In February last year, a court order was obtained by OTO to stop Hiew from distributing flyers and other product literature featuring the name "OTC Bodycare Japan". Following this injunction, Mr Hiew transferred his business to a friend who continued with the trade. Subsequently, in September that same year, OTO took up contempt proceedings against both of them but the matter was resolved out of court.
In the latest court case against Hiew, OTO claimed that Hiew had infringed its rights in the following manner:
- The colour scheme employed in Hiew's product literature was essentially the same as that used in the OTO Bodycare trade name, except that the colours were inverted.
- Hiew's "OTC" identifier was similar to OTO’s primary trade mark and thus was a deliberate attempt to confuse and deceive.
In his defence, Hiew cited the different features between his product and OTO's product, namely that his foot reflexology machine had a liquid crystal display (LCD) panel as well as infrared footpads, whereas OTO’s product did not.
At the close of the five-day hearing which had commenced on 7 March this year, Justice Tay Yong Kwang ruled in favour of OTO and Hiew was ordered to pay damages and 50 per cent legal costs to OTO.
It is notable in this case that OTO had promptly engaged a private investigator early last year to trace Hiew and thereby obtain trap purchases and covert recordings in support of its claims. OTO's success in this case is illustrative of how thorough evidence-gathering investigations prior to commencement of a trade mark suit can go a long way towards securing an affirmative result for the plaintiff.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
