The Plaintiff, Doctor’s Associates Inc, owns and operates the franchise for the popular sandwich chain “SUBWAY”. The Plaintiff first registered its “SUBWAY” marks in Singapore on 25 May 1989 and opened its first outlet in Singapore in 1996. The Plaintiff’s primary products are “submarine” sandwiches prepared on the spot consisting of freshly baked bread rolls with a choice of fillings.
The Defendant, Lim Eng Wah, owns and operates a chain of stalls in Singapore selling sandwiches, nonya kueh and other local snacks under the “SUBWAY niche” mark (“SUBWAY niche Mark”). The Defendant has used the “SUBWAY niche” Mark since 1987.
The Plaintiff commenced legal proceedings against the Defendant before the Singapore High Court, alleging inter alia, that the use of the “SUBWAY niche” Mark constituted trade mark infringement under section 27(2)(b) and section 27(3) of the Singapore Trade Marks Act (the “Act”).
The Plaintiff failed to establish its claim of infringement.
Infringement under section 27(2)(b)
In determining whether the Plaintiff’s claim for infringement under section 27(2)(b) of the Act was made out, the Judge endorsed the three-step approach enunciated in British Sugar plc v James Robertson & Sons Ltd  RPC 281, as follows:-
(i) the alleged infringing mark must be similar to the registered mark;
(ii) the goods and/or services must be similar; and
(iii) as a result of (i) and (ii), there exists a likelihood of confusion.
Similarity of the marks
The Subway word mark (“Subway Mark”) and the “Subway niche” Mark were held to be visually, aurally and conceptually similar.
Besides taking into account the visual, aural and conceptual similarities between the marks, the Judge also took into account the distinctiveness of the Subway Mark. It was held that in determining a mark’s distinctiveness, the factors to be considered were the market share held by the mark, the nature of its use (whether it is intensive, widespread and long-standing), the amount invested in promoting the mark, the proportion of the relevant class of individuals who identify the goods sold under the mark as from a particular source, and statements from trade associations. Taking into account these factors, the Judge held that the “Subway niche” Mark and the Subway Mark were similar despite the additional word “niche” because of the distinctiveness of the Subway Mark. In particular, the Judge highlighted the fact that the Plaintiff’s promotion of the Subway Mark had led to a large proportion of the Singapore public being capable of identifying the Plaintiff’s sandwiches as originating from its Subway brand.
Identity or similarity of the goods
The Plaintiff’s mark covered cakes and sandwiches in Class 30 and restaurant services in Class 43. As the Defendant’s goods and services, namely, sandwiches, restaurant services, sandwich shop services and take-out services, fell into the same Classes 30 and 43, the goods and services were held to be similar.
Likelihood of confusion
However, whilst the marks and the goods were held to be similar, the Plaintiff failed to demonstrate that even a de minimis section of the public would be under the mistaken belief that the Defendant's goods were associated with the Plaintiff. The Judge opined that very little evidence of a likelihood of confusion was adduced by the Plaintiff. Further, the evidence of confusion which the Plaintiff relied on was vague and isolated and therefore found to be deficient.
The Judge took into account the pains taken by the Defendant to distinguish his goods from the Plaintiff’s. The sale, display and prices of the sandwiches differed. The Plaintiff had also taken pains to emphasize the Italian nature of its sandwiches and to distinguish them from normal sandwiches by choosing to call them "subs" instead of "Italian sandwiches". Given the lack of any real evidence tendered by the Plaintiff of a likelihood of confusion, the Judge concluded that any likelihood of confusion was hypothetical or speculative.
Well known marks under section 27(3)
The presence of 92 Subway outlets in Singapore and the Plaintiff’s extensive marketing rendered the Subway Mark a well known mark in Singapore.
To make out a claim under section 27(3), the Plaintiff had to show that (i) the use of the “SUBWAY niche” Mark would indicate a connection between the Defendant’s goods and the Plaintiff, (ii) a likelihood of confusion existed, and (iii) the Plaintiff’s interests were likely to be damaged by the use of the “SUBWAY niche” Mark.
However, the Plaintiff failed to establish that the Defendant’s use of the “SUBWAY niche” Mark indicated a connection between the Defendant’s and the Plaintiff’s goods. For the same reasons given above, the Judge found that there was no likelihood of confusion. The Judge rejected the Plaintiff’s argument that the use of the “SUBWAY niche” Mark would restrict the Plaintiff’s planned expansion of its menu to other goods including local cakes and pastries as it failed to adduce evidence of a genuine intention to do so. On the whole, the Judge concluded that there was insufficient evidence of damage to the Plaintiff’s interests and that those identified by the Plaintiff were merely hypothetical.
This case illustrates the importance of tendering real and substantive evidence in a claim of trade mark infringement in Singapore to show that a likelihood of confusion exists. Such evidence may be adduced in the form of surveys, including expert evidence, interviews, newspaper articles and similar material. In this case, the Plaintiff failed to produce such evidence. It is important to note however that the issue of likelihood of confusion may be determined by the Court without the assistance of direct survey evidence. The Judge in this matter also cautioned that whilst survey evidence may be helpful, the accuracy of such evidence would depend on the design of the survey.