Online Advertisements and Trade Mark Infringement – Singapore Court of Appeal issues a landmark decision

The Singapore Court of Appeal's decision in East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2025] SGCA 28 ("East Coast Podiatry") marks a significant development in Singapore's trade mark jurisprudence, particularly in the context of internet advertising and the initial threshold of "trade mark use" in an action for infringement.

This case clarifies the approach to trade mark infringement under the Singapore Trade Marks Act 1998 ("TMA") and also signals a growing divergence between Singapore and the United Kingdom ("UK")/Europe in the interpretation and application of trade mark law. This article examines the key findings of the Court of Appeal in East Coast Podiatry and explores the practical implications for brand owners and practitioners.

The Dispute and Outcome

The dispute arose when the Respondent, Family Podiatry Centre Pte Ltd, used Google's advertising services ("Google Ads") to display online advertisements containing the words "east coast podiatry", "Podiatry East Coast", and/or "Podiatrist East Coast" (the "Signs"). The Appellant, East Coast Podiatry Centre Pte Ltd, was a business competitor and the owner of the composite mark  (the "Mark"). The Appellant alleged that the Respondent's use of the Signs constituted trade mark infringement under Sections 27(1) and/or 27(2)(b) of the TMA, as well as passing off.

The lower court dismissed the Appellant's claims. Proceeding on the assumption that the threshold of trade mark use had been satisfied (i.e., that the allegedly infringing use denoted the trade origins of the goods/services in question), the lower court made the following key findings:

• The Signs and the Mark were not identical, such that Section 27(1) of the TMA was inapplicable.
• Even if the Signs and the Mark were similar, there was no likelihood of confusion under Section 27(2)(b) of the TMA or actionable misrepresentation under the tort of passing off, because the Respondent's website (which contained no references to the Mark or the words "east coast podiatry" or any of its variants) would have dispelled any confusion that might have initially arisen.

On appeal, the Appellant focused exclusively on overturning the lower court's decision on Section 27(2)(b) of the TMA. The Court of Appeal ultimately dismissed the appeal, finding that the threshold of trade mark use had not even been satisfied. The Court of Appeal's judgment is notable for its detailed analysis of the requirements for trade mark infringement in Singapore, especially in the context of online advertising, and its explicit discussion of the differences between Singaporean and UK/European approaches.

Clarifying the Threshold of Trade Mark Use under Singapore Law

A central issue in the case was whether the Respondent's use of the Signs satisfied the initial threshold of trade mark use—i.e., use which denotes the trade origins of the relevant goods/services, as opposed to use that was merely descriptive or decorative.

The Court of Appeal reaffirmed the principle, established in earlier cases such as City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 and Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR 941, that the requirement of trade mark use applies under Singapore trade mark law, even in the context of internet advertisements. It remains a threshold inquiry, to be considered before issues such as marks-similarity and the likelihood of confusion.

In the context of internet advertising, the following three factors would typically be considered:

1. The objective circumstances surrounding the defendant's use of the signs. The Court will have regard to the resulting advertisement and how it is presented to consumers, the prominence and apparent purpose with which the allegedly infringing signs are used, and what other signs are used in the advertisement. Separately, the defendant's subjective intentions (e.g., where it is admitted that the allegedly infringing sign was meant to be a badge of origin) may be a relevant (but not necessarily decisive) factor in determining that there has been trade mark use.
2. The inherent distinctiveness of the signs used by the defendant. The less distinctive (or more generic) the signs used by the defendant, the less likely this will amount to trade mark use. Greater latitude is afforded to the use of generic signs, even if they bear some similarity to the registered mark. To allow registered proprietors to restrain the use of generic signs as search terms would be to confer on them unnecessary and excessive monopoly rights.
3. The website to which an internet user is redirected upon clicking on the defendant's advertisement. This factor is relevant in assessing the apparent purpose for which the signs were used, particularly where the advertisement itself contains few details. For this purpose, the website is regarded as part of the advertisement as a whole and therefore part of the wider context of the allegedly infringing use (similar the Court considering how an allegedly infringing sign is situated within the packaging of physical products offered for sale).

Applying the above factors, the Court of Appeal found that the Respondent's use of "east coast podiatry" and similar phrases was descriptive, referring to the geographical location of its new clinic and the nature of its services. The Court of Appeal rejected the Appellant's argument that the phrases were used as a badge of origin, noting that the Respondent's website URL and branding made clear the true origin of the services.

The Court of Appeal made two further points in obiter:

1. Even if the threshold of trade mark use had been crossed, the Court of Appeal found that the Mark and the Signs were dissimilar. The Mark was a composite mark—it was the combination of the words "East Coast Podiatry" and the simple green cross device which allowed it to function as a badge of origin; the words and the device each lacked inherent distinctiveness and neither could function as a badge of origin without the other.
2. The Court of Appeal expressed preliminary views on whether, in determining if there was a likelihood of confusion under Section 27(2)(b) of the TMA, it was permissible to consider the defendant's website. Under the Staywell test (established in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell”)), the Court can only consider certain extraneous factors that inform it as to how the similarity of the marks and goods will likely affect the consumer's perception of the source or origin of the goods (e.g., consumers' purchasing practices and the degree of care they exercise); all other extraneous factors (e.g., a trader's differentiating steps) are not to be considered.

The Court of Appeal observed that there was force in submissions to the effect that, once marks-similarity and goods-similarity have been established under the Staywell test, it would not be permissible to have regard to further extraneous considerations that might have the effect of diminishing the likelihood of confusion. Otherwise, "an advertiser would be able to use signs in internet advertisements that are very similar to a registered mark, for the purposes of advertising similar if not identical goods, and yet avoid liability by means either of an express disclaimer, or by using cheaper materials and selling his goods at a much lower price."

However, the Court of Appeal left the issue open, observing that the facts of Staywell concerned opposition proceedings (which required the Court to consider all the actual and notional fair uses by the parties of the respective marks), as opposed to infringement proceedings (which require the Court to focus on the actual and particular circumstances and the specific way the allegedly infringing sign was used). Accordingly, there remains room to argue that the defendant's website is not an extraneous factor, taking into account the interactive nature of internet advertisements and the fact that they are generally meant to entice users to click into the relevant website.

Divergence from UK and European Law

Another significant aspect of East Coast Podiatry is the Singapore Court of Appeal's explicit rejection of the broader "effect-centric" approach that has developed in UK and European jurisprudence in the context of keyword advertising.

In the UK and Europe, the focus has shifted towards whether the use complained of is "liable to affect the functions of the registered trade mark," especially its essential function of guaranteeing origin. This approach, as seen in cases such as Google France SARL v Louis Vuitton Malletier SA (C-236/08 to C-238/08) and Interflora Inc v Marks and Spencer plc [2015] IP & T 109, does not require the use to be trade mark use in the sense of denoting origin from the perspective of the alleged infringer. Instead, it is sufficient if the use has an effect on the registered mark's functions, including its advertising or investment functions.

The Singapore Court of Appeal expressly declined to follow this effect-centric approach, holding that it was inconsistent with the statutory framework under the TMA. Notably, Section 27(1) of the TMA provides that using a sign that is identical to a registered mark in respect of identical goods/services amounts to trade mark infringement, without the need for the claimant to further prove that a likelihood of confusion exists. To adopt the effect-centric approach would be to introduce a "diluted" version of the likelihood of confusion requirement into Section 27(1) of the TMA.

Further, the effect-centric approach could unintentionally widen the scope of infringing uses. The Court of Appeal considered that, as a matter of policy, it was not appropriate to proscribe conduct falling within the realm of fair competition, such as purely decorative use of a sign or the use of generic words for descriptive purposes – both of which could nevertheless potentially affect the origin function of a mark.

Conclusion

The Singapore Court of Appeal's decision in East Coast Podiatry is a landmark in the development of Singapore trade mark law. It clarifies the threshold requirement of trade mark use, affirms the importance of context and distinctiveness, and draws a clear line between Singaporean and UK/European approaches to trade mark infringement. The decision provides much-needed certainty for brand owners and businesses operating in Singapore, particularly in the digital marketplace.

In practical terms, brand owners in Singapore may face a higher hurdle in enforcing their marks against competitors who use descriptive or generic terms in online advertising, so long as those terms are not used as badges of origin. Conversely, businesses have greater latitude to use such terms in Singapore than they might in the UK or Europe. In all cases, context matters, including the content of linked websites.

As the digital economy continues to evolve, and as online advertising becomes ever more sophisticated, the principles set out in East Coast Podiatry will provide a stable foundation for the continued development of Singapore's trade mark law, even as it charts its own course distinct from that of the UK and Europe.