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A supermarket store in Little India will get to keep and use its brand name after the High Court threw out a rival shop's lawsuit for trade mark infringement and "passing off".
The court also rejected the claims of All India Supermart (AISPL) that Indian Supermarket (ISPL) had breached AISPL's trade mark and dismissed its bid to invalidate the registered trade mark of ISPL which also displayed a pictorial logo of the number 23.
In legal terms, "passing off" takes place where a competitor tries to hitch on to the success of an existing business by using imagery or colour or words in its brand to make it look similar which may confuse consumers with the brand of the existing business.
"I have found that AISPL has not made out its case in either passing off or trade mark infringement against ISPL," said Justice Valerie Thean in judgement grounds issued late last month.
AISPL and ISPL are local companies operating Indian supermarkets less than 300 metres from each other in Little India.
Both shops evoke the idea that their products are from India, products related to Indian cuisine or culture and/or products which are targeted at Indian consumers.
AISPL's supermarket in a four-storey building at Norris Road sells various Indian provision goods, vegetables, fruits and personal use and household items.
AISPL chalked up sales revenue of $54.8 million from November 2015 to June 2020 (before the lawsuit started), averaging about $30,000 a day and $1 million a month.
ISPL opened an Indian supermarket under the name "Indian Supermarket" at Upper Weld Road in July 2020. Unhappy with this, AISPL's lawyers sent a letter demanding ISPL cease using the mark and name "Indian Supermarket".
ISPL refused and AISPL sued ISPL and its sole director D. Baskaran for trade mark infringement and passing off.
It also sought to invalidate ISPL's registered trade mark in the stand-off.
High Court hearings were held over five days late last year when lawyers G. Radakrishnan and Suriya Prakash Uthayasurian argued for AISPL and lawyer K. Rajendran defended ISPL.
Justice Thean found that ISPL's use of the trade mark and trade name "Indian Supermarket", as well as the surrounding circumstances, did not show there was misrepresentation to support the claim passing off.
AISPL had also argued that the goods sold such as vegetables and fruits were similar in relation to both companies. The display racks had the same colour and their names also sounded similar. There was a likelihood of confusion or deception amounting to a misrepresentation.
Justice Thean ruled: "This does not automatically follow. AISPL has not shown how ISPL's mark misrepresents to the relevant sector of the public that its business is the same as or connected with AISPL's business, thereby giving rise to confusion."
The judge held that as AISPL has not succeeded in establishing the two marks were similar, the requisite likelihood of confusion is not made out.
"Considered holistically, I find AISPL's mark and "Indian Supermarket" to be more dissimilar than similar. Apart from the visual and aural dissimilarities, I also take into account the degree of distinctiveness of AISPL's mark," she added.
The judge accepted AISPL has acquired distinctiveness through use, "but the level of distinctiveness is not high".
"I take into consideration the many actions taken by Indian Supermarket to differentiate its products from All India Supermart," she added, noting "the signage and facade of the two supermarkets are plainly different," among other things.
In dismissing the case, the judge held AISPL pay costs to IPL which will be assessed at a separate hearing.
vijayan@sph.com.sg