Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and anotherand another appeal[2013] SGCA 65
Case Number: Civil Appeals Nos 147 and 148 of 2012
Decision Date
: 29 November 2013
Tribunal/Court : Court of Appeal
Coram: Sundaresh Menon CJ; Chao Hick Tin JA; VK Rajah JA
Counsel Name(s) : Davinder Singh SC, Dedar Singh Gill, Gabriel Ong Sheng Li, (Drew & Napier LLC,
Instructed) and Prithipal Singh (Mirandah Law LLP) for the appellant in Civil
Appeal No 147 of 2012 and the respondent in Civil Appeal No 148 of 2012; Tan
Tee Jim SC, Wee Jiawei Darrell, (M/S Lee & Lee) Instructed) and Elaine Tan Ee
Lian and Magdalene Lie (Amica Law LLC) for the respondents in Civil Appeal No
147 of 2012 and the appellants in Civil Appeal No 148 of 2012; and Professor NgLoy Wee Loon, the Amicus Curiae.
Parties: Staywell Hospitality Group Pty Ltd — Starwood Hotels & Resorts Worldwide, Incand anotherTrade Marks – Trade Names
Trade Marks – Passing off

29 November 2013

Judgment reserved.

Sundaresh Menon CJ (delivering the judgment of the court):
Introduction
1
These appeals arise from opposition proceedings commenced by Sheraton International, Inc(“Sheraton”) and Starwood Hotels & Resorts Worldwide, Inc (“Starwood”) (collectively, “theOpponents”). The Opponents opposed the application (“the Application”) made by Staywell Hospitality
Group Pty Ltd (“Staywell”) to register a series of two marks(“the Applicant Mark”) in
Singapore in respect of marketing and hospitality services. Civil Appeal No 148 of 2012 (“CA148/2012”) is the Opponents’ appeal against the finding of the High Court Judge (“the Judge”) that
there was no likelihood of confusion or sufficient indication of a connection damaging to the
Opponents’ interests in order to ground an opposition to registration under ss 8(2)(b) and 8(4)(b)(i) of
the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”); and against the Judge’s finding that there
was no goodwill in the Opponents’ ST. REGIS Singapore hotel for the purpose of an opposition under s8(7)(a) of the Act. Civil Appeal No 147 of 2012 (“CA 147/2012”) is Staywell’s cross-appeal against theJudge’s finding that the Applicant Mark was similar to the Opponents’ ST. REGIS registered trade mark(“the Opponent Mark”).
Background to the appeals
The parties
2
The Opponents are hotel and leisure companies incorporated in the United States. They own
and operate 32 St Regis hotels worldwide (17 at the time of the Application) [note: 1] . In Singapore,

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Sheraton has been the registered proprietor of the word trade mark “ST. REGIS” in Classes 36 and 37
of the International Classification of Goods and Services (“ICGS”) since 2005 (relating to real estateand construction services respectively), and in Classes 41 (relating to entertainment services) and 42(relating to hotel and hospitality services) since 1995 [note: 2] . Class 42 is equivalent to Class 43 of
the latest edition of the ICGS, and will be referred to hereafter as “Class 43”.
3
Staywell is an Australian hotel operator. It currently owns and operates 27 hotels (24 at thetime of the Application) under its two brands, Park Regis and Leisure Inn. These hotels are locatedmainly in Australia and New Zealand. The Application was Staywell’s first application for trade markregistration in Singapore [note: 3] .
Background facts
4

Staywell filed the Application to register its series of two markson 3 March 2008 in

Singapore in Classes 35 and 43 of the ICGS. Class 35 relates to advertising and marketing services.
Class 43 relates to hotel services, hospitality, food and beverage and related services. The
Opponents’ ST. REGIS Singapore hotel opened on 20 April 2008, shortly after the filing of the
Application. On 7 May 2008, the Application was accepted and published for opposition purposes.
Staywell’s hotel, the Park Regis Singapore, only opened for business in November 2010.
5
The Opponents filed their Notice of Opposition [note: 4] to the Application on 8 September 2008.
They relied on absolute grounds of opposition under ss 7(4)(b) and 7(6) of the Act, and relative
grounds of opposition under ss 8(2)(b), 8(4)(b) and 8(7)(a) of the Act. On 19 July 2011, the Principal
Assistant Registrar (“the PAR”) allowed the opposition under ss 8(2)(b) and 8(4)(b)(i) of the Act, but
rejected the opposition under ss 8(4)(b)(ii), 8(7)(a) and 7 of the Act. In relation to the relative
grounds of opposition, she found that the competing marks [note: 5] and the parties’ services weresimilar [note: 6] , and that such similarity resulted in a likelihood that the public would be confused into
thinking that the Park Regis Singapore was economically linked to the ST. REGIS Singapore [note: 7] .
However, she refused the opposition under s 8(4)( b)(ii) of the Act because she found that the ST.
REGIS mark was not “well known to the public at large in Singapore”. The opposition under s 8(7)(a)also failed because the Opponents were unable to show that goodwill attached to the ST. REGISSingapore at the date of the Application [note: 8] .
6
Staywell appealed against the PAR’s decision in relation to ss 8(2)(b) and 8(4)(b)(i) of the Act.
The Opponents filed a cross-appeal against the PAR’s rejection of the opposition under s 8(7)(a) of
the Act. The appeal and cross-appeal were heard by the Judge on 18 April 2012.
The decision below
7
The Judge reversed the PAR’s decision under ss 8(2)(b) and 8(4)(b)(i) of the Act and affirmed
the decision under s 8(7)(a) of the Act.
8
The Judge’s findings in relation to the opposition under s 8(2)(b) of the Act can be summarised
as follows:(a)
The Opponent Mark was inherently distinctive in relation to hotel services [note: 9] . On thewhole, the marks were aurally and conceptually similar [note: 10] .

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(b)The Class 35 and 43 services for which Staywell sought registration were undoubtedly
similar to the Opponents’ services registered in Class 43. Staywell’s registration in Class 35 wasmerely complementary to its registration in Class 43 [note: 11] .
(c)Considering the factors set out in The Polo/Lauren Co, LP v Shop In Department Store Pte
Ltd [2006] 2 SLR(R) 690 (“Polo (CA)”) [note: 12] , including the steps Staywell had taken todifferentiate its services from that of the Opponents’, there was no likelihood of confusion
resulting from the similarity of the competing marks and the similarity of their services [note: 13] .
9

As regards the s 8(4)(b)(i) opposition, the Judge found as follows:(a)
The level of knowledge of the Opponent Mark in Singapore, as evidenced by the extensive
advertising and the number of Singaporean patrons of ST. REGIS hotels worldwide, wassufficiently high to warrant a finding that the Opponent Mark is a well-known mark in Singapore[note: 14] .
(b)
Following the finding that no likelihood of confusion resulted from the similarity of themarks, the use of the Applicant Mark would not indicate a confusing connection between the Park
Regis Singapore and the Opponents [note: 15] .
(c)Even if a confusing connection existed, this would not cause damage to the Opponents.
They had shown no intention of moving into the market segment in which the Park Regis
Singapore operated [note: 16] .

10

As regards the s 8(7)(a) opposition, the Judge found as follows:(a)
The Opponents’ pre-opening activity in Singapore, and the worldwide reputation in the ST.
REGIS brand, was not sufficient to establish that goodwill attached to the ST. REGIS Singapore
at the date of the Application [note: 17] .

11
In the result, the Applicant Mark was allowed to proceed to registration [note: 18] . On 9
November 2012, the Opponents filed their Notice of Appeal in CA 148/2012 [note: 19] against thewhole of the Judge’s decision. Staywell also filed its Notice of Appeal [note: 20] in CA 147/2012
challenging the Judge’s finding of aural and conceptual similarity between the Opponent and Applicant
Marks.
Issues in the appeals
12

The following issues and sub-issues arose for our consideration in the two appeals:(a)Whether the Judge erred in disallowing the opposition under s 8(2)(b) of the Act; inparticular:(i)whether the Judge erred in finding that the competing marks were aurally andconceptually similar (“the marks-similarity inquiry”); and(ii)
whether a likelihood of confusion arose from the similarity between the competingmarks and the parties’ services (“the confusion inquiry”);

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(b)Whether the Judge erred in disallowing the opposition under s 8(4)(b)(i) of the Act; inparticular:(i)whether use of the Applicant Mark in relation to hotel services was likely to damage
the Opponents’ interests; and(c)Whether the Judge erred in disallowing the opposition under s 8(7)(a) of the Act; inparticular:(i)whether there was goodwill in the ST. REGIS Singapore as at the date of the
Application.
Whether the Judge erred in disallowing the opposition under s 8(2)(b) of the Act
Were the marks aurally and conceptually similar?
13
Staywell’s case in CA 147/2012 was that that the Judge came to the wrong conclusion as tothe aural and conceptual similarity of the competing marks. In particular, it was argued that she fell
into error when she dissected the marks and analysed their components discretely in considering their
distinctiveness. The Opponents’ response was that the Judge did consider the marks holistically, but
was entitled to focus on the dominant and distinctive components of each mark. As a preliminary
point, the Opponents also argued that as long as a minimal level of marks-similarity was established,
the court could and should go on to analyse the likelihood of confusion arising from the similarity ofthe marks and the goods or services in question [note: 21] .
Is the threshold of marks similarity a low one?
14
We begin with the preliminary point. The Opponents rely on the decision of Lindsay J in esure
Insurance v Direct Line Insurance plc [2008] RPC 6 (“esure Insurance”) for the proposition that thesimilarity of marks is subject to a “low threshold test”. They contend that the competing marks morethan satisfied this low threshold test. We take this opportunity to restate a number of principles
relevant to the marks-similarity inquiry.
15
To the extent that the Opponents’ argument treated the similarity of competing marks as a
threshold requirement that had to be satisfied before the confusion inquiry is undertaken, we agree. It
is clear from the plain words of ss 8 as well as 27 of the Act that the only relevant type of confusion
for the purpose of grounding an opposition or an infringement action, is that which is brought about
by the similarity between the competing marks and between the goods and services in relation towhich the marks are used. Since this court’s decision in Polo (CA), our courts have given effect to thisstatutory wording by applying what is now known as the “step-by-step” approach, as opposed to thecompeting “global appreciation approach” applied in Europe after Sabel BV v Puma AG, Rudolf Dassler
Sport [1998] RPC 199 (“Sabel v Puma”). Under the step-by-step approach, the three requirements ofsimilarity of marks, similarity of goods or services, and likelihood of confusion arising from the twosimilarities, are assessed systematically. The first two elements are assessed individually before thefinal element which is assessed in the round. Under the global appreciation approach the elements ofsimilarity between marks and goods or services, whilst still necessary ingredients in the confusion
inquiry, are elided with other factors going towards the ultimate question of whether there is alikelihood of confusion (see Sabel v Puma at 223–224, and Canon Kabushiki Kaisha v Metro-GoldwynMayer Inc [1999] RPC 117 (“Canon”) at 132). Whilst there have been suggestions that the two
approaches might be distinct without being different, we maintain this dichotomy and endorse thestep-by-step approach as being conceptually neater and more systematic and, importantly, as being

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more aligned with the requirements imposed under our statute (see Polo (CA)) at [8]).
16
However we do not agree with the Opponents’ approach to the extent that it suggests thatany particularly or notably low threshold of marks-similarity applies. For one thing, such an approachfinds no support in the case law. The English Court of Appeal disapproved of Lindsay J’s “low thresholdtest” when esure Insurance went on appeal in esure Insurance Ltd v Direct Line Insurance PLC[2008] EWCA Civ 842. Arden LJ there stated that “no useful purpose” was served by holding that
there was a minimal level of similarity that had to be shown; and she went on to hold that such an
approach was unsupported by European jurisprudence (at [49]). Nor does our own case law lend any
support to such an approach.
17
More fundamentally, the minimal threshold approach is inconsistent with the reality that thesimilarity of marks is ultimately and inevitably a matter of impression rather than one that can be
resolved as a quantitative or mechanistic exercise (see Polo (CA) at [35] and Wagamama Ltd v City
Centre Restaurants Plc [1995] FSR 713 at 732). The learned Amicus, Prof Ng-Loy Wee Loon submitted
that while the court should consider each of the three established aspects of similarity, viz, visual,aural or conceptual similarity, as long as it found that there was some degree of similarity in any oneof these three aspects, no matter how weak, the marks-similarity requirement should be considered
to have been met and the court would then be obliged to proceed to the next stage of the inquiry
which will generally be the likelihood of confusion. We respectfully disagree. The court must ultimately
conclude whether the marks, when observed in their totality, are similar rather than dissimilar. The
three aspects of similarity are meant to guide the court’s inquiry but it is not helpful to convert this
into a checkbox exercise in which a tick, however faint it might be, in any one box must compel the
court to find that the marks are similar when a sensible appraisal of the marks as a whole would show
otherwise.
18
We observed this in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] SGCA 26 (“HaiTong”) at [40(a)]. Congruously, there is no prescribed requirement that all three aspects of similarity
must be made out before the marks can be found to be similar: MediaCorp News Pte Ltd v Astro All
Asia Networks plc [2009] 4 SLR(R) 496 (“MediaCorp”) at [32] and Sarika Connoisseur Café Pte Ltd v
Ferrero SpA [2013] 1 SLR 531 (“Sarika”) at [16]. In short, the criteria of visual, aural and conceptual
similarities do not invite a formulaic consideration; rather, they are signposts towards answering thequestion of whether the marks are similar. Trade-offs can occur between the three aspects ofsimilarity in the marks-similarity inquiry: Ozone Community Corp v Advance Magazine Publishers Inc[2010] 2 SLR 459 (“Ozone”), see also Bently and Sherman, Intellectual Property Law (Oxford
University Press, 3rd Ed, 2009) ("Bently & Sherman") at p 864.
19
A further problem with adopting an approach in which any modicum of similarity would compel
the court to make a finding of marks-similarity is that this would backload much of the court’s
assessment to the confusion inquiry stage. We are wary of this and, in any event, do not view it as
being faithful to the scheme of our statutory framework. A productive and appropriate application of
the step-by-step approach necessitates that the court reach a meaningful conclusion at each stageof the inquiry.
20
Finally, on this issue, we reiterate that the assessment of marks similarity is mark-for-markwithout consideration of any external matter: see Mediacorp at [33], Sarika at [17] and Hai Tong at[40(b)]. This means that at the marks similarity stage this even extends to not considering therelative weight and importance of each aspect of similarity having regard to the goods. This does notmean that the court ignores the reality that the relative importance of each aspect of similarity mightvary from case to case and will in fact depend on all the circumstances including the nature of thegoods and the types of marks, as we observed at [40(b)] of Hai Tong. Rather, such considerations

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are properly reserved for the confusion stage of the inquiry, because that is when the court is called
upon to assess the effect of objective similarity between the marks, on the perception of consumers.
We recognise that this reflects a slight departure from the approach taken by the High Court inFestina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 at [55]–[56], and by this court in Sarika at[38]. We think that this is conceptually clearer because it recognises that the issue of resemblance
between the competing marks is distinct from the question of the effect of such resemblance. A
practical application of this approach can be found in European jurisprudence: see Mystery drinks
GmbH v OHIM, T 99/01 [2004] ETMR (18) 217 and Phillips-Van Heusen Corp v OHIM [2004] ETMR 60.
In these cases the court considered, respectively, the particular significance of aural similarity inrelation to beverages normally sold by oral order, and visual similarity in relation to clothing normallysold based on the consumer’s direct perception, both for the specific purpose of determining whether
consumer confusion was likely to arise.
Whether the Judge erred in finding that the marks were aurally and conceptually similar, having
regard to their distinctiveness21
We turn to consider the Judge’s finding that the competing marks in this case were similar.
Staywell’s case was that the Judge wrongly focussed on the “REGIS” element of both marks, insteadof considering the aural and conceptual similarity of the marks as a whole. In particular, Staywell
contended that the Judge erred in treating “REGIS” as distinctive when in fact the Opponents had
never used the word “Regis” on its own, but always as part of the composite word “St Regis”.
22
Before turning to the particular facts before us, we first distinguish between two different
aspects of “distinctiveness” in trade mark law. This was articulated by Lord Walker in BUD And
Budweiser Budbräu Trade Marks [2003] RPC 25 at [39], as follows:
It is not necessary to go far into the authorities on trade mark law to see that the term
“distinctive” is used with two different shades of meaning. Sometimes it has its normal, nontechnical meaning, with a flavour of that which is unusual (or stands out in a crowd) and istherefore easy to recognise and to remember. Sometimes it is used in a more technical sense, incontrast to “descriptive” (reflecting Art.3.1(c) of the Directive and s 3(1)(c) of the Act ). Purely
descriptive or laudatory words, however striking and memorable, cannot normally be distinctive inthis sense. ... But they may in some circumstances acquire distinctiveness…
[emphasis added]
23
Distinctiveness in the ordinary and non-technical sense simply refers to what is outstanding andmemorable about the mark. Such components tend to draw the consumer’s attention, bearing in mind
the imperfect recollection of the average customer. This reflects the reality that the average
consumer “only rarely has the chance to make a direct comparison between the different marks andmust place his trust in the imperfect picture of them that he has in his mind” (Lloyd Schuhfabrik
Meyer v Klijsen Handel BV, Case C-342/97 [1999] 2 CMLR 1343 (“Lloyd”) at 1358 and Ozone
Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459 (“Ozone Community”) at [50]).
The distinctive (in the non-technical sense) and memorable components of the mark are those that
tend to stand out in the consumer’s imperfect recollection. That is why the court is entitled to havespecial regard to the distinctive or dominant components of a mark, even while it assesses thesimilarity of the two marks as composite wholes.
24
Distinctiveness in the technical sense on the other hand, usually stands in contradistinction todescriptiveness. Where the latter connotes words that describe the goods or services in question, orof some quality or aspect thereof, the former refers to the capacity of a mark to function as a badge

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of origin. Distinctiveness can be inherent, usually where the words comprising the mark aremeaningless and can say nothing about the goods or services; or acquired, where words that do havea meaning and might well say something about the good or services, yet come to acquire thecapacity to act as a badge of origin through long-standing or widespread use (seeWindsurfing Chiemsee Produktion und Vertriebs GmbH v Boot und Segelzubehor Walter Huber andFranz Attenberger [1999] ETMR 585 (ECJ), Love & Co Pte Ltd v The Carat Club Pte Ltd [2009] 1
SLR(R) 561 at [98]–[100] and Hai Tong at [32]–[33]).
25
Technical distinctiveness is an integral factor in the marks-similarity inquiry (see Sarika at [20],Ozone Community at [47] and Polo (CA) at [36]); a mark which has greater technical distinctivenessenjoys a high threshold before a competing sign will be considered dissimilar to it (Sarika at [36]).
While the components of a mark may be inherently technically distinctive, ultimately the ability of themark to function as a strong badge of origin must be assessed by looking at the mark as a whole.
Conversely, the components of a mark may not be inherently distinctive, but the sum of its parts may
have sufficient technical distinctiveness. We examined this in Hai Tong in relation to the composite
phrase “Lady Rose”, and there stated (at [35]):…the attempt to contend that this should be the case because of any lack of distinctiveness in
the Composite Mark was unfounded. Of course, the words "Lady" and "Rose", when used
separately, are not inventive words or phrases. However, in our judgment, it would not becorrect to analyse this by reference to each of the words standing alone. It is the juxtapositionof the words that engenders distinctiveness, in that when used together, the words do notconvey a sensible meaning. ...
[emphasis added]
26
When speaking of the assessment of a mark as a whole, it may be noted that the cases haveconsistently stated that the “visual, aural or conceptual similarity of the marks in question, must be
based on the overall impression given by the marks, bearing in mind, in particular, their distinctive anddominant components” (Sabel v Puma at 224, Matratzen Concord GmBH v OHIM, Case T-6/01 [2002]
ECR II-4335 (“Matratzen”), Doctor's Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012]
3 SLR 193 (“Subway Niche”) at [19] and Bently & Sherman at p 864).
27
In Matratzen the European Court of First Instance dismissed the contention that a
consideration of the dominant and distinctive components of a mark would mean a failure to consider
the mark as a whole. After stating that the similarity between two marks must be assessed globally,
but in light of their distinctive and dominant components, the court said (at [34]):
It should be made clear that that approach does not amount to taking into consideration only one
component of a complex trade mark and comparing it with another mark. On the contrary, such a
comparison must be made by examining the marks in question, each considered as a whole.
However, that does not mean that the overall impression created in the mind of the relevantpublic by a complex trade mark may not, in certain circumstances, be dominated by one or moreof its components.
This was endorsed by the European Court of Justice (“ECJ”) on appeal in Matratzen Concord GmBH v
OHIM (C-3/03 P) at [31]–[32]. More recently in 32Red Plc v WHG (International) Ltd [2012] RPC 2012
the English Court of Appeal dismissed the argument that the judge below had erred in de-constructing
the competing composite word marks (viz, “32RED” and “32vegas”) and finding “32” to be thedominant component (at [85] and [89]). Our courts have taken the same approach in cases involving
competing marks with a common denominator, such as in The Polo/Lauren Co, LP v Shop In

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Department Store Pte Ltd [2005] 4 SLR(R) 816 (“Polo (HC)”) at [25] and Richemont International SA
v Goldlion Enterprise (Singapore) Pte Ltd [2006] 1 SLR(R) 401 at [12] (“Richemont”). The question in
those cases was whether the common element of the competing marks was so dominant as to renderthe different elements ineffective to obscure the similarity between the marks.
28
It follows from this that it is not wrong for a court to find that a component of a mark isinherently technically distinctive – for example if it is a non-descriptive word or an elaborate andinventive graphic device. Where a particular element or component has a high degree of technicaldistinctiveness, this can have a bearing on whether as a result of this, that component or element isfound to be the dominant and distinctive element of the mark in the non-technical sense.
29
The finding of distinctiveness of the separate components of the mark must ultimately be
related back to the impression given by the mark as a whole. The distinctiveness of a particularcomponent of a mark is but one factor feeding into the ultimate question of whether the mark, in theform it is registered and/or used, has strength as an indicator of origin to the exclusion of other tradesources. This latter question clearly must be considered by looking at the mark as a whole, because itis the entire mark, and not only a component of it, that must function as the badge of origin.
30
We turn to examine whether the Judge applied these principles correctly in the instant case.
Perhaps for ease of analysis the Judge approached the inquiry in a two-stage process as was done in
Ozone Community (see the Judge’s Grounds of Decision (“GD”) at [14]). We reiterate, as was held inSarika (at [20]) and in Hai Tong (at [26]), that distinctiveness (in both its technical and nontechnical senses) is a factor integrated into the visual, aural and conceptual analysis as to whether
the competing marks are similar. It is not a separate step within the marks-similarity inquiry.
Aural similarity
31
At [21], [24] and [27] of the GD, the Judge considered the word “REGIS” to be the dominantand distinctive component of both marks when each is read out. In our view, she was perfectly
entitled to come to this view. Staywell’s argument that the Judge erred in considering the dominanceof “REGIS” because the Opponents had never used or registered the component “REGIS” alone was
misconceived simply because, as we have pointed above, a component can clearly be dominant even
if it is part of the mark as a whole and is not and has never been used on its own. In fairness to theJudge, it should be noted that she specifically considered that the “ST.” and “Park” portions of thecompeting marks, though not as dominant as the “Regis” portion, were not to be ignored. Staywell’sargument that any distinctiveness of the Opponent’s mark lay in “ST. REGIS” as a whole rather thanin “REGIS” overlooked the permissibility of examining the distinctive components of the competingmarks in both the technical and non-technical senses. At least in relation to hotels and hospitality
services, “REGIS” enjoys a substantial degree of technical distinctiveness. In relation to both thecompeting marks “REGIS” is the element that is distinctive in the non-technical sense because it iswhat will stand out in the imperfect recollection of the consumer. The Judge was therefore entitled tofind this the common dominant element of both marks in assessing the question of whether thecompeting marks as a whole were similar. The Judge found on this basis that the marks were aurally
similar and we agree.
32
An alternative approach which does not involve considering the dominant components of themarks would have been simply to undertake a quantitative assessment as to whether the competingmarks have more syllables in common than not. This was the approach taken in Ozone Community at[55]. Even on this approach it is clear that the two marks, each taken as a unified whole, have moresyllables in common than not.

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33
We therefore see no reason to disturb the Judge’s finding that the marks had aural similarity. Infact we find that there is a high degree of aural similarity between the competing marks because of
the distinctiveness of the common “REGIS” component in both the technical and non-technicalsenses.
Conceptual similarity
34
Turning to the conceptual analysis, there are a few aspects of the Judge’s decision with which
we find ourselves, with respect, in disagreement.
35
First, the Judge gave weight to the Opponents’ argument that the competing marks shared theunderlying connotation of royalty, since the “REGIS” component of the marks was dominant. As wehave already noted, the Judge was entitled to conclude that “REGIS” was the distinctive component
from an aural perspective. However, we do not agree that “REGIS” was a dominant component on aconceptual analysis. Unlike the aural analysis, which involves the utterance of the syllables without
exploring the composite meaning embodied by the words, the conceptual analysis seeks to uncover
the ideas that lie behind and inform the understanding of the mark as a whole (Bently & Sherman at p866). Greater care is therefore needed in considering what the conceptually dominant component of acomposite mark is, because the idea connoted by each component might be very different from thesum of its parts. The case of Vedial SA v OHIM — France Distribution (HUBERT), Case C-106/103
P [2004] ECR I-9573 is illustrative. There, the European Court of Justice upheld the Court of First
Instance’s finding that themark for which registration was sought was visually, aurally andconceptually dissimilar to the earlier word trade mark “SAINT-HUBERT 41”. At [57] the Court of First
Instance in Vedial SA v OHIM — France Distribution (HUBERT), Case T-110/01 [2002] ECR II-5275
stated that:
With regard to conceptual analysis of the marks in question, it must be observed that the ideas
suggested by the terms ‘SAINT-HUBERT’ and ‘HUBERT’ are different. The combination of the terms‘SAINT and “HUBERT’ with a hyphen between them creates a concept and logical unit that is
distinct from those of its components. Thus the words ‘SAINT-HUBERT’ form an inseparable whole
which is likely to evoke in the mind of the targeted public a saint of the Catholic religion or aname of a place. The word ‘HUBERT’, on the other hand, corresponds to a common masculine
French Christian name.
36
In the present case, while the term “REGIS” might, perhaps reasonably, be said to connoteroyalty, in our view this connotation becomes secondary once the prefixes of “Park” and “ST.” areintroduced. As the Judge noted at [26] of the GD, the composite markconnotes ageographical location, while the composite phrase “ST. REGIS” connotes a saintly character. If any
connotation of royalty attaches at all, it is far more significant in the “Park Regis” mark, considering
the inclusion of the fleur-de-lis device. In this connection we note that the Judge erred in treating
the Opponents’device as a reinforcement of the concept of royalty. The device was not part of
the Opponent Mark, and the authorities are clear that marks-similarity must be assessed without
regard to “external added matter or circumstances” (Hai Tong at [40(b)]). In light of these
considerations, we find that the concept of a geographical location perhaps bearing some class andprestige as connoted by the inclusion of the fleur-de-lis device in the Applicant Mark, is quite different
from the concept of a Catholic saint that is connoted by the Opponent Mark.
37

However, we find that there is some conceptual similarity between the marks but for a different

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reason. There is some strength in the Opponents’ argument that both the Applicant and Opponent
Marks evoke the idea of a place or location [note: 22] . Although the ST. REGIS mark might conjure theimage of a saintly person, in Singapore by far the most common manifestation of saintly names is inrelation to places ranging from schools (St Joseph’s Institution, St Margaret’s School), roads (StGeorge’s Road, St Martins Lane), hospitals (St Luke’s Hospital) and condominiums (St Nicholas View,
St Patrick’s Court), to an assortment of other public places (St Michael’s flatted factory, St James
Power Station (bar), Le Saint Julien (restaurant)), many of which have no particular association
whatsoever with the saintly character whose name they have adopted. Similarly, the word “Park”, as
noted by the Judge, connotes the idea of a geographical location though not necessarily of any
particular type (see [26] of the GD). Therefore, in the Singapore context, the marks share a tendency
to connote a place or location or building which, as between the competing marks in question, arelinked by the common reference to “Regis”.
Conclusion on similarity of the competing marks
38
Based on the foregoing analysis, we find that the marks have a substantial degree of aural
similarity and a fair degree of conceptual similarity. The PAR’s finding that the marks were visuallydissimilar was not appealed. On the whole, and based on what we have set out above, we have no
difficulty finding that the marks were similar. On this basis, we dismiss CA 147/2013.
Was there similarity between the parties’ services?
39
The parties did not appeal the Judge’s finding that the services in relation to which theirrespective marks were used or for which registration was sought, were similar. However, we take thisopportunity to clarify certain aspects of the Judge’s reasoning.
40
The comparison before us was between the services falling under Staywell’s intended Class 35
and 43 registrations, and the Opponents’ existing Class 43 registration. In relation to the Class 43
registration, we agree with the Judge’s observation that the fact that the parties’ hotel services werebranded for different market segments did not render the services dissimilar. Following the dictum of
Lai Kew Chai J in Polo (HC) at [33], the Judge stated that registration in the same category
establishes a prima facie case for similarity. This invites some clarification. We think that what Lai J
was referring to was registration in the same specification. We would go further to say that
registration in the same specification within a class establishes a prima facie case for identity. This isbecause it is not within the scheme of the classification system to make distinctions within a
specification based on whether the particular product is targeted at one or another market segment.
41
Hotel services are hotel services, whether these concern a luxury hotel or a more modest one.
We adopt the view that while “trade mark registrations should not be allowed such a liberalinterpretation that their limits become fuzzy and imprecise… [w]here words or phrases in their ordinary
and natural meaning are apt to cover the category of goods in question, there is equally nojustification for straining the language unnaturally so as to produce a narrow meaning which does notcover the goods in question.” (per Floyd J in YouView TV Ltd v Total Ltd [2012] EWHC 3158 (Ch)(“YouView”) at [12]; see also Omega Engineering Inc v Omega SA [2013] FSR 25 at [33]). Where agood or service in relation to which registration is sought falls within the ambit of the specification inwhich the incumbent mark is registered, the competing goods or services would be regarded as
identical (see Gerard Meric v OHIM, Case T-133/05 at [29]).
42
In this case there was a precise overlap between Staywell’s Class 43 hotel, food and beverage
services, and the Opponents’ Class 43 hotel, food and beverage services. We do not think that there
was any qualitative difference between the parties’ services that displaced the prima facie case for

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identity where registration was sought in the same specification within Class 43. Therefore therequirement of similarity or identity between services under s 8(2)(b) is satisfied in this case. Given
that the services in question are identical, there is no further need to consider whether they are
similar or the extent of their similarity (see Hai Tong at [22] and Susanna Leong, Intellectual Property
Law of Singapore (Academy Publishing, 2012) (“Susanna Leong”) at paras 28.354 and 28.358).
43
In relation to its Class 35 registration, the Judge accepted the PAR’s finding that Staywell’s
advertising, marketing and business management services were adjunct to and inseparable from its
primary services under Class 43, and therefore similar to the Opponent’s Class 43 services (GD at[32]– [33]). We agree with the Judge’s reasoning to the extent that Staywell’s Class 35 services areclosely related and indeed inseparable from its Class 43 hotel and restaurant services. This is not to
say that Staywell’s application for registration under the two classes was to be considered andc ompared collectively as against the Opponents’ Class 43 services. Rather, the real question iswhether Staywell’s services that were sought to be registered under Class 35 are similar to the
Opponents’ services under Class 43, having regard to all relevant factors relating to the services
themselves. Some of the factors set out in British Sugar Plc v James Robertson & Sons Ltd [1996]
RPC 281 (“British Sugar”) at 296 would be relevant at the goods-similarity stage of the inquiry, inparticular the consideration of the uses and the end-users of the services. The question is how theservices are regarded, as a practical matter, for the purposes of trade. Applying this approach, we
agree with the PAR’s findings at [63] of the PAR’s GD. There is an overlap between the uses and usersof Staywell’s Class 35 business management and administration services, and its Class 43 service ofproviding hotel venues for business conferences and receptions. As for the advertising and marketing
services under Class 35, these relate to the promotion of the hotel and restaurant services underClass 43. Therefore we agree that there is similarity between Staywell’s services in Class 35 and the
Opponents’ services in Class 43.
Was there a likelihood of confusion?
44
We come to one of the key areas of dispute in CA 148/2012. The question was whether, having
found that the competing marks and services were similar or identical as the case may be, the Judgeerred in her assessment of whether this gave rise to a likelihood of confusion for the purpose of s 8(2)(b) of the Act, or a confusing connection under s 8(4)(b)(i) of the Act. In concluding that such alikelihood did not exist, the Judge considered factors external to the marks and services themselves,
taking into account the actual circumstances of the uses to which Staywell had put its mark prior to
the Application. Her considerations extended to the parties’ marketing and website design, the modes
in which hotel bookings are usually made, and the star-ratings of the parties’ hotels. Two issues arose
in relation to the Judge’s approach. First, whether there is a difference between the approach to theconfusion inquiry in opposition as opposed to infringement proceedings. Second, whether factors
which are extraneous to the competing marks themselves and to the products in relation to which themarks are used (“extraneous factors”), are relevant to the confusion inquiry, and if so whether there
are any applicable limits to this.
45

We will address each of these issues in turn.

Difference in approach to the confusion inquiry as between opposition and infringement proceedings
46
The starting point must be the Act itself. The language used in each of ss 8(2) and s 27(2) ofthe Act is similar. There is no indication within the Act itself that these sections should be interpreted
differently, and we have previously observed in passing that the approach to determining confusion
for the purpose of opposition to registration is no different than that in an infringement action (seeHai Tong at [84(b)] and [85(a)], Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203

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(“Valentino”) at [16] and Polo (CA) at [29]). However, the present appeal presents the opportunity to
examine the question in greater detail.
47
In Europe and the UK, the courts have drawn a distinction between the conduct of theconfusion inquiry in opposition and in infringement proceedings. In the latter, the court assesses thelikelihood of confusion in relation to the defendant’s actual and allegedly infringing use of his sign. On
the other hand, in the former context, ie, in opposition proceedings, the assessment is conducted byconsidering the notional fair use of the applicant mark across the scope of the specification of goods
and services in respect of which registration is sought. Such a test is obviously more stringent andoffers a greater degree of protection to the incumbent than one that examines only the actual andallegedly infringing use of the later mark.
48
The leading European case is O2 Holdings Ltd v Hutchison 3G UK Ltd, Case C-533/06 [2008]
ECR I-4231 (“O2 (ECJ)”). A question concerning the interpretation of Art 5(1) of the European First
Council Directive 89/104 of 21 December 1988 (“the Directive”) was referred to the ECJ pursuant toinfringement proceedings commenced under ss 10(2) and (3) of the Trade Marks Act 1994 (c 26) (UK)(“the UK Act”). The dispute involved the defendant’s use of a sign similar to the claimant’s UK trade
mark in its comparative advertisement campaign. Of relevance to the present case is the ECJ’s
statement at [63]–[67] where it clearly articulates the point:
It is true that the notion of likelihood of confusion is the same in Art.4(1)(b) of Directive 89/104[which deals with the prevention of registration of similar marks likely to cause confusion].
Art.4(1)(b) of Directive 89/104, however, concerns the application for registration of a mark.
Once a mark has been registered its proprietor has the right to use it as he sees fit so that, forthe purposes of assessing whether the application for registration falls within the ground forrefusal laid down in that provision, it is necessary to ascertain whether there is a likelihood ofconfusion with the opponent's earlier mark in all the circumstances in which the mark applied formight be used if it were to be registered.
By contrast, in the case provided for in Art.5(1)(b) of Directive 89/104, [which deals with theprevention of use of similar marks likely to cause confusion] the third-party user of a signidentical with, or similar to, a registered mark does not assert any trade mark rights over thatsign but is using it on an ad hoc basis. In those circumstances, in order to assess whether the
proprietor of the registered mark is entitled to oppose that specific use, the assessment must be
limited to the circumstances characterising that use, without there being any need to investigate
whether another use of the same sign in different circumstances would also be likely to give rise
to a likelihood of confusion.
[emphasis added]
49
The English High Court followed this approach in Och-Ziff Management Europe Ltd v Och Capital
LLP [2008] RPC 33 (“Och-Ziff”). Arnold J there stated at [76] that:
It is common ground that it is now clear that there is an important difference between thecomparison of marks in the registration context and the comparison of mark and sign in theinfringement context, namely that the former requires consideration of notional fair use of themark applied for, while the latter requires consideration of the use that has actually been made of
the sign in context. This was established by the judgment of the Court of Justice in [02].
5 0

O2 (ECJ) and Och-Ziff both concerned infringement proceedings, and the distinction drawn

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there has been endorsed in other infringement decisions (see Red Bull GMBH v Sun Mark Ltd [2012]
EWHC 1929 (Ch) (“Red Bull”) at [75] and Datacard Corp v Eagle Technologies Ltd [2011] RPC 17 at[275]). In addition, the English court considers the notional fair use of the incumbent mark whenassessing for confusion in infringement proceedings, thereby illustrating the breadth of the proprietary
rights which the court protects once a mark is on the register. In Compass Publishing BV v Compass
Logistics Ltd [2004] RPC 41 (“Compass Publishing”) the High Court stated as follows (at [22] and[26]):
It must be borne in mind that the provisions in the legislation relating to infringement are notsimply reflective of what is happening in the market. It is possible to register a mark which is not
being used. Infringement in such a case must involve considering notional use of the registeredmark. In such a case there can be no confusion in practice, yet it is possible for there to be afinding of infringement. Similarly, even when the proprietor of a registered mark uses it, he may
well not use it throughout the whole width of the registration or he may use it on a scale which
is very small compared with the sector of trade in which the mark is registered and the alleged
infringer's use may be very limited also. In the former situation, the court must consider
notional use extended to the full width of the classification of goods or services. In the latter it
must consider notional use on a scale where direct competition between the proprietor and thealleged infringer could take place.
…
The reason why the rule of thumb referred to above [that absence of actual confusion in themarket means no infringement of a registered trade mark] does not give a safe indication ofwhether there is infringement in this case is because of the nature of the parties' respective
presences in the market. They are not in competition with each other. The business consultancy
field is enormous. Indeed, on the basis of the evidence before me, the logistics section of thebusiness consultancy field is enormous. The claimant's core activities are not in the logistics field,
the defendant's are. Furthermore, even within that field, the defendant is a very small player, as
will be explained below. In those circumstances it is not surprising that there has been no
confusion in the market-place. To date the claimant and the defendant trade in different parts ofthe market. This does not come close to imitating the notional world used for determining
likelihood of confusion under Art.9.1(b).
[emphasis added]
51
There are also other English cases in which the notional fair use approach has been applied
when assessing the likelihood of confusion in the opposition context. Some of these cases were
decided under s 11 of the now-repealed Trade Marks Act 1938 (c 22) (UK). While the wording of that
section differed from s 8 of the Act, it did require the court to refuse registration upon finding thatthe use of the later mark is “likely to deceive or cause confusion”. In that context it has been heldthat the question is whether the mark, “if used in a normal and fair manner in connection with any of
the goods covered by the registration proposed, will not be reasonably likely to cause deception andconfusion amongst a substantial number of persons” (see re Smith Hayden & Co's Application (1945)
63 RPC 97, Berlei (UK) Ltd v Bali Brassiere Co Inc (No.1) [1969] 1 WLR 1306 (“Bali Trade Mark”),
Gymboree Corp's Trade Mark Application (No.1577166) (1999) 22(6) IPD 2205, OPEN COUNTRY Trade
Mark [2000] RPC 477 (“Open Country”)). In Bali Trade Mark, where there had been actual use of theapplicant mark, Lord Morris noted as follows (at 1314):
There is no reason to suppose that the learned judge did not remain mindful of such evidence as
pointed to certain differences (such as those of method of manufacture and of style and of price)

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which existed between the articles respectively manufactured. Thus, there was evidence thatthe Bali brassieres are at present tailor-made and might be regarded as of different quality fromthose which are mass produced by Berlei. There is a difference in the colours of the packages inwhich the respective goods are marketed. But methods of manufacture and style of product may
change from time to time and prices may vary and be adjusted. What has to be had in mind is theuse that could reasonably and properly be made of a mark if fairly and normally used.
52
Lord Morris’ observations demonstrate that the court had its eye on both the evidence ofactual use of the marks on current products and also the potential uses to which the marks could
fairly be put in the future in relation to the class of goods in question. In Open Country, the Court ofAppeal stated that the approach in Bali Trade Mark was applicable whether the applicant had used hismark or not. However where there was actual use, such use would be considered as one instance ofthe normal and fair uses of the mark unless the opponent submitted otherwise. In this regard Aldous
LJ stated (at 482) that:
It does not follow that the way that the applicant has used his trade mark is the only normal andfair manner. However in many cases actual use by an applicant can be used to make thecomparison.
53
The notional fair use approach is also applied to opposition cases under the current UK Act. The
cases show that the notional fair use of the mark is the basis for the analysis not only at theconfusion stage (see Advanced Perimeter Systems Ltd v Keycorp Ltd [2012] RPC 14 at [36] and[65]–[66]) but also when assessing whether the mark has distinctive character in relation to the
products for which it is sought to be used (see Bongrain SA's Trade Mark Application (No 2134604)[2003] EWHC 531 (Ch) at [14]). In YouView the court stated in relation to opposition proceedingsthat (at [7]):… [the application] must be considered for the purposes of the opposition on the basis of notionaland fair use across the breadth of the goods and services for which it is registered. Actual use is
not required, and so an enquiry into the goods for which the mark has been used is of not morethan background interest, if that.
54
The English approach to the confusion inquiry in opposition proceedings is therefore to consider
the notional fair use to which each mark can be put, though regard will also be had to the applicant’s
actual use of the mark if there has been any. We set out this comparative position by way ofbackground only because it is necessary, ultimately, to interpret and apply our Act in our own
context.
55
Under our law, the two threshold requirements for successfully opposing a proposed
registration, or establishing liability for infringement, are similarity or identity of the marks andsimilarity and identity of the services. Once these threshold criteria have been met, the issue of thelikelihood of confusion arises and this in our view directs the court to look at (a) how similar the marks
are (b) how similar the services are and (c) given this, how likely the relevant segment of the public
will be confused. In Hai Tong we said (at [85(c)]):Having regard to the express terms of s 27(2), there are three specific elements that plainly must
be considered. These are: (i) the similarity between the registered mark and the allegedly
infringing mark; (ii) the similarity or identity between the goods or services in relation to which
the marks are used; and (iii) the relevant segment of the public in relation to whom the court
must consider the likelihood of confusion. Each of these elements can vary. The marks may be
identical or similar, and if the latter, they can vary in their degree of similarity. In the same way,

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the goods or services in relation to which the marks are used may be identical or similar, andagain, if the latter, they may vary in the degree or extent to which they are similar. … And as to
the relevant segment of the public, there may be characteristics that are particular to the groupin question. Each of these factors will have a bearing on the likelihood of confusion. As an
illustrative proposition, the likelihood of confusion must be greater where, say, the contestingmarks are similar to a high degree, the goods are identical in nature and the segment of the
public in question is undistinguished in its attention than would be the case if the marks and thegoods are somewhat similar but not exceedingly so, and the relevant segment of the public
happens to be highly knowledgeable and very fastidious. …
56
Against that background we turn to the question posed in this section of our analysis. On
reflection we are satisfied there is a difference between the approach to the confusion inquiry in
opposition and infringement proceedings, although there are considerable overlaps as well. If it seems
surprising that different outcomes may ensue from the interpretation of essentially the same text, it isbecause of the context in which each provision is to be applied.
57
In opposition proceedings, the contest is between the holder of an existing registered trade
mark who opposes the proposed application, and the applicant who is seeking to register a new mark.
The opponent enjoys certain monopoly rights associated with the use of its mark and it opposes theregistration of the applicant’s mark on the grounds that such registration would entail an unwarranted
interference with those monopoly rights, whether or not these are already being exercised. The
applicant on the other hand, wishes not just to use the mark in a particular way but to have theassociated monopoly rights that would enable it to prevent others from using their own marks which
would then threaten to dilute or affect the applicant’s desired monopoly.
58
It is useful to note that under s 26 of the Act, registration confers the exclusive right on the
proprietor to use the mark “in relation to the goods or services for which the mark is registered”. The
proprietor also acquires immunity from infringement liability in his use of the mark in respect of all
goods and services falling under the registered specification, by virtue of s 28(3) of the Act. Thismeans that once the applicant has registered his trade mark, he acquires the exclusive right to use
the mark not only for the goods and services which he might have actually contemplated at the timeregistration was granted, but for the whole spectrum of goods and services within the specification
for which the mark is registered. The proprietor is entitled to sue for infringement if anyone uses anidentical or similar sign on goods which are identical or similar to goods or services falling within thespecification for which his mark is registered, even if he does not actually supply that good or service
at the material time (see Sarika at [46]–[47], see also Compass Publishing at [22] extracted at [50]supra). The principle is well put in George Wei, Some Thoughts on Intellectual Property Rights in
Singapore: A Monograph for Gerald Dworkin (2009) at para 3.204:
Modern registered trade mark protection is also about rights to protect indicia of origin in related
fields of use: areas of business where the registered proprietor may want to diversify into. Thus amanufacturer of “soda pop” who markets the product under a particular TM might want to expand
his business into “fruit juices” or “mineral water” or “tonic drinks”. Diversification is the key tosurvival for many companies just as specialisation and focus is the key for some others. Thus, it
is important that registered trade mark protection provide rights that reach use of the same orsimilar registered marks on or in respect of similar goods or services: even if the registeredproprietor has not yet actually ventured into that related area.
59
It follows from the foregoing that a party that applies for registration of a mark is seeking toestablish a monopoly over the right to use that mark for the immediately intended purpose as well as
for a penumbra of notional fair uses.

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60
Accordingly in opposition proceedings the inquiry must take into account the full range of thecompeting monopoly rights that are already enjoyed on the one hand, namely the actual and notional
fair uses to which the incumbent proprietor has or might fairly put his registered trade mark, andcompare this against the full range of such rights sought by the applicant by reference to any actual
use by the applicant (assuming there has been prior use) as well as notional fair uses to which theapplicant may put his mark should registration be granted. This is the setting in which the question ofwhether there is a likelihood of confusion is assessed. In this regard we agree with the views of Prof
Ng-Loy and those of Professor David Llewelyn in his article Is There Confusion in the Law of Trade
Marks in Singapore? (2013) 25 SAcLJ 339 at paras 11–12:
When deciding that there was no likelihood of confusion, the judge considered it important thatthe applicant used its mark on four-star hotels whereas the opponent used its registered mark in
relation to six-star luxury hotels: “What is relevant in this enquiry [as to source confusion] is how
both the hotels are marketed.” However, this seems to ignore the fact that a trade markproprietor is entitled to use its mark on or in relation to all the goods and/or services for which itis registered, that is, those set out in the specification of goods or services, and no registered
mark may be infringed by use of another registered mark on or in relation to the goods or services
for which it is registered. Thus, the owner of the PARK REGIS registered mark is free to use its
now-registered mark on or in relation to luxury hotels notwithstanding the fact that it has notdone so to date. If it were to do so, the only remedy available to the owners of the ST REGIS
trade mark would be to sue for passing off, a cause of action far more uncertain (and expensive,
as it requires proof of goodwill and actual deception) than that of trade mark infringement.
It is for this reason that, in the EU regime, the relevant test to be applied under Art 4(1) of theTrade Marks Directive (implemented in the UK in s 5(2) of the Trade Marks Act 1994, which is interms identical to s 8(2) of the Trade Marks Act for the purposes of an application to register is
to compare the earlier mark as used with the mark being applied for, taking into account notionaland fair use of that later mark in relation to all the goods or services in the specification, anddecide whether there is a likelihood of confusion. Conversely, although the wording of theinfringement provision (s 8(2) of the Trade Marks Act in Singapore) is the same as theregistration provision (s 27(2) of the Trade Marks Act in Singapore), for the purposes ofinfringement the court should take into account the actual use (if any) by the defendant of its
sign, as that is relevant to whether there is a likelihood of confusion.
61
In infringement proceedings on the other hand, there is no question of the alleged infringer
seeking to establish any monopoly rights. The only question is whether the actual use of a similar or
identical sign by the infringer encroaches on the registered proprietor’s monopoly rights under s 26 of
the Act, to use the mark in relation to goods and services for which he is already using it as well as
the penumbra of fair uses for which he might want to use it. There is therefore no need to examine
any notional fair use by the alleged infringer because he is not seeking to acquire or assert any rights
in respect of such penumbral uses.
62
How is the foregoing analysis affected where the applicant in opposition proceedings has beenusing his mark prior to the filing of his registration application? To the extent that the applicant isalready using the mark the allegation by the opponent must be that this actual use is to be treatedas a putative infringement, so it can be assessed from that perspective. But we do not think theinquiry ends there. If we hold in such a case that there is no putative infringement based on theactual use, it does not mean that the opposition fails and the application for registration must
succeed. It would still be necessary to consider the wider question of whether the notional fair usesthat the applicant might put the mark to could conflict with the notional fair uses to which the
proprietor of the registered mark could put his mark to. As we have noted, this latter inquiry sets a

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higher threshold for the applicant than an inquiry that focuses only on whether the actual use isinfringing, and it follows that as a practical matter, in opposition proceedings, the applicant will haveto meet that higher threshold regardless of whether there has already been actual use. In essence, insuch proceedings, he will be required to establish that the notional fair use of his mark would not
infringe the notional fair use rights of the registered proprietor; whereas in infringement proceedings
the only question is whether the actual use by the alleged infringer infringes the notional fair use
rights of the registered proprietor of the mark. As a result, in certain cases it may be that opposition
and infringement proceedings yield different outcomes. As noted in Kerly’s Law of Trade Marks andTrade Names (Sweet & Maxwell, 15th Ed, 2011) (“Kerly”) at para 9-030:
The global appreciation assessments in relation to the relative ground in s 5 [of the UK Act] must
be made on the basis of fair and notional use of the earlier and later marks, rather than by taking
into account the actual use in the marketplace as required in the equivalent assessments inrelation to infringement (under s 10). This may have the consequence that, for example, atribunal finds that on the basis of notional and fair use there was a likelihood of confusion
between the earlier and the later mark under s 5(2) and therefore the later mark was refused
registration; but another tribunal later finds no infringement of the later mark under s 10(2) byreason of the circumstances of actual use of the registered mark and the defendant’s mark thatthe original tribunal refused to register.
Whether extraneous factors are relevant to the confusion inquiry
63
A related issue which arose in the course of submissions is whether the court should, in
assessing the likelihood of confusion, consider factors which are external to the similarity between thecompeting marks and the similarity between the competing goods or services. We have previously
referred to such factors as “extraneous factors” (see Polo (CA) at [32] and Sarika at [60]) because
they are extraneous or, perhaps, more accurately external to the marks and the services in question.
Such factors have traditionally included steps taken by the parties to differentiate their goods andservices (“differentiating steps”) so as to reduce the likelihood of confusion. The question arose inthis case because the Judge, at [36]–[48] of the GD, applied this court’s approach to extraneous
factors as laid down in Polo (CA) at [28] and on this basis placed weight on extraneous factors suchas the distinct branding of the hotels as 4-star and 6-star respectively, and how the perceptions ofcustomers making purchases would be affected by the trade channels used by the parties to market
their hotel services.
64
We approach this question again from the starting point of the Act. Once similarity between thecompeting marks and goods or services has been established, the impact of these similarities on therelevant consumers’ ability to understand where those goods and services originate from falls to beconsidered. The only relevant confusion is that which results from the similarity between marks andgoods or services. Our courts have consistently recognised this since Lai Kew Chai J articulated it in
Polo (HC) at [15]. Equally however, the plain words of ss 8(2) and 27(2) do not have the effect ofmaking a finding of confusion automatic upon the establishment of similarity of marks and goods orservices. If that was what was intended, as observed in Polo (CA) at [25] and in Sarika at [60],Parliament would have provided that once such similarity is found the matter ends there without any
need to examine whether there is a likelihood of confusion as a result. However, we reiterate that thestatute requires that any likelihood of confusion must arise from the similarity of marks and goods orservices.
65
If the marks or the goods or services in question are not similar, and confusion stems from otherfactors, an action might lie in the tort of passing-off but not in trade mark infringement. The similarityof marks and that of the goods or services are threshold questions but they are not determinative

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questions; in short these are necessary but not sufficient conditions. In our judgment, the plain words
and the scheme of s 8(2) of the Act (as well as s 27(2) of the Act), as we have set it out above do
not preclude the court’s discretion to consider extraneous factors to the extent that these inform theassessment of the effect of the required similarity on consumer perception, but as we explain below,
there are significant limits, more than we may previously have acknowledged as to the extraneous
factors that may be considered.
66
We have hitherto considered extraneous factors in the confusion inquiry in the context of bothinfringement and opposition proceedings (see City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier[2010] 1 SLR 382, Sarika and Valentino). In the course of the arguments in this case, we werereferred to a line of English and European cases which ostensibly endorsed the exclusion of
extraneous factors from the confusion inquiry. The first of these cases is Perfumery Ld v June Perfect
Ld and F W Woolworth & Co Ld (1941) 58 RPC 147 (“June Perfect”), where Sir Wilfred Greene MR
observed that “once a mark is shown to offend, the user of it cannot escape by showing that bysomething outside the actual mark itself he has distinguished his goods from those of the registeredproprietor” (at 161). We explained in Hai Tong (at [89]–[91]) that this statement was made in thecontext of the marks-similarity stage of the inquiry and, in this regard, we have reiterated above thatthe inquiry is to be conducted mark-for-mark without added material. In Julius Sämaan Ltd v Tetrosyl
Ltd [2006] FSR 42 (“Julius Sämaan”) however, the English High Court expressly excluded extraneous
factors from the confusion inquiry, stating that the court must consider the likelihood of confusion
arising from the defendant’s use of the offending sign, discounting added matter or circumstances (at872).
67
As against this, the European and more recent English cases appear less restrictive. The ECJ’s
approach is set out in Sabel, in terms which are now replicated to some degree throughout European
and English jurisprudence (at 223–224, [22]–[23] of the court’s Judgment) :Article 4(1)(b) of the Directive does not apply where there is no likelihood of confusion on thepart of the public. In that respect, it is clear from the tenth recital in the preamble to the
Directive that the appreciation of the likelihood of confusion 'depends on numerous elements and,in particular, on the recognition of the trade mark on the market, of the association which can bemade with the used or registered sign, of the degree of similarity between the trade mark and thesign and between the goods or services identified'. The likelihood of confusion must therefore beappreciated globally, taking into account all factors relevant to the circumstances of the case.
That global appreciation of the visual, aural or conceptual similarity of the marks in question,must be based on the overall impression given by the marks, bearing in mind, in particular, their
distinctive and dominant components. The wording of Article 4(l)(b) of the Directive — '... there
exists a likelihood of confusion on the part of the public ...' — shows that the perception ofmarks in the mind of the average consumer of the type of goods or services in question plays adecisive role in the global appreciation of the likelihood of confusion.
[emphasis added]
68
We pause to note that the ECJ’s definition of “all factors relevant to the circumstances of thecase” is not without limitation. The factors listed at [22] show that emphasis remains on the elements
associated with the marks themselves, although other factors are not excluded from consideration.
There is also express focus on the perception of the average consumer, in accordance with thewording of Art 4(1)(b) of the Directive (at [23]). A particular outworking of the focus on consumer
perception is in the weighting of each element of mark-similarity in the course of the confusion
inquiry. As explained in Lloyd (at 1352 and 1358):

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… the national court must consider whether there is a genuine and properly substantiatedlikelihood of confusion for an average consumer of the particular type of goods in the Member
State concerned. In making that assessment it must make a global assessment of all relevant
factors, in particular the degree of aural, visual or conceptual similarity between the mark andthe sign and the distinctiveness which the mark has either per se or by virtue of the degree ofrecognition of the mark.
… In order to assess the degree of similarity between the marks concerned [for the purpose of
the global assessment], the national court must determine the degree of visual, aural orconceptual similarity between them and, where appropriate, evaluate the importance to be
attached to those different elements, taking account of the category of goods or services inquestion and the circumstances in which they are marketed.
[emphasis added]
69
We agree that it is permissible at the confusion-stage of the inquiry to have regard to theimportance to be attached to the different elements of similarity taking into account the type of thegoods and services in question and how purchases of such goods and services are typically made. We
reiterate here the observation made above at [20].
70It may be that the more recent English cases have taken their cue from the ECJ and moved
away from the strictly restrictive stance taken in Julius Sämaan. In O2 (ECJ), the ECJ endorsed theEnglish High Court’s approach of analysing the likelihood of confusion within the “context in which thesign similar to the [plaintiff’s] bubbles trade mark was used by [the defendant]” (O2 (ECJ) at [64]).
Both the English High Court (in O2 Holdings Ltd (formerly 02 Ltd) v Hutchinson 3G [2006] EWHC 534(Ch) (“O2 (UKHC)) and the ECJ concluded that the advertisement in which the defendant applied its
impugned sign “as a whole, was not misleading, and in particular, did not suggest that there was any
form of commercial link between [the plaintiff and the defendant]” (O2 (ECJ) at [63], emphasis
added). It is evident that the courts considered the use of the sign within the context of theadvertisement “as a whole” in arriving in at its conclusion on confusion. O2 (ECJ) has been seen as
reflecting a more “holistic” approach on the part of the ECJ towards assessing confusion by focussing
on the element of use, at least in the infringement context (see Ilanah Simon Fhima, “Trade markinfringement in comparative advertising situations” 2008 EIPR 30(10) 420 at p 425).
71
Later cases have followed O2 (ECJ) and take into account the “actual context andcircumstances of use of the sign itself” (Och-Ziff at [76]–[78]) and Red Bull at [78]). While “actual
context” in those cases was stated as a “limitation” on the court’s range of considerations (see OchZiff at [77] and Red Bull at [78]), the court quite clearly said this to draw out the distinction between
the context and the use-specific inquiry in infringement proceedings, and the broader inquiry in
opposition proceedings where notional uses and acontextual applications of the mark are considered.
I n Och-Ziff, the court’s “contextual assessment” also included factors extraneous to the marks
themselves but existing within the context of the parties’ use of the marks (see [76]). The claimants
there claimed inter alia that the defendant’s use of a number of signs (OCH, OCH CAPITAL,
ochcapital, Och Capital and OCH Capital) in respect of his financial advisory and fund managementbusiness, infringed their trade marks “OCH-ZIFF” and “OCH” which were registered in Class 36(financial services). In elaborating on what the “contextual assessment” of likelihood of confusion
entailed, Arnold J first cited [63]–[67] of O2 (ECJ) (see above at [48]) on the distinction between
infringement and opposition proceedings. He then went on to ask (at [77]–[78]):
The question which arises is this: how far do the “context” referred to by the Court at [64] andthe “circumstances characterising that use” referred to by the Court at [67] extend? Counsel for

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Och-Ziff submitted that the context and circumstances were limited to the actual context andcircumstances of the use of the sign itself. Thus, in the O2 case itself, where the sign was used
in a comparative advertisement, the context was the whole of the comparative advertisement,
but no more. By contrast, counsel for the defendants submitted that the context andcircumstances included all circumstances relevant to the effect of the use of the sign, including
circumstances prior to, simultaneous with and subsequent to the use of the sign.
In my judgment the context and circumstances are limited to the actual context andcircumstances of the use of the sign itself. The Court of Justice explicitly said at [64] that thereferring court was right to “limit its analysis” to the context in which the sign was used.
Furthermore, it referred at [67] to the circumstances “characterising the use”, not to thecircumstances more generally. Thus circumstances prior to, simultaneous with and subsequent tothe use of the sign may be relevant to a claim for passing off (or, under other legal systems,
unfair competition), but they are not generally relevant to a claim for trademark infringement
under art. 9(1)(b).
[emphasis added]
72
What emerges from this reasoning is that at least in infringement proceedings, the whole of theactual context of use will be relevant to the confusion inquiry. Neither party in Och-Ziff evenattempted arguing that the inquiry could entail jettisoning factors other than the marks and goods
themselves. The court then went on to apply principle to fact. One of the defendant’s arguments wasthat its use of the impugned signs was not confusing because “OCH”, “Och” and “och” were all meant
to be read as an acronym, ie, “Oh-See-Aitch”, while the registered mark was meant to be pronounced
as “Ock-Ziff”. The court rejected the argument based on the following considerations (at [119] and[121]):… even on the basis of a contextual assessment of those uses, there is nothing to alert theconsumer who is familiar with OCH-ZIFF to the fact that the OCH element of the sign is intended
to be read as O-C-H rather than as Och. By contrast, I accept that some consumers will read
OCH in “OCH Capital” as O-C-H. I do not accept, however, that all consumers would read it thatway. This is for three reasons. First, the human eye has a tendency to see what the brain
expects it to see. Thus I consider that some customers will tend to read “OCH Capital” as “OchCapital” because of their knowledge of Och-Ziff and Mr Och.
Secondly, there is nothing in the context of OCH Capital’s use to make consumers think that OCH
is an acronym. If, for example, the sign “OCH Capital” were used in conjunction with, say, thesign “Ocean Clearing House”, then consumers would understand that OCH should be read as O-CH because it was an acronym. OCH Capital does not do this, because OCH is not an acronym. I
consider that even consumers who noticed that OCH Capital’s Chief Executive was called Ochocki
would be unlikely to appreciate the derivation of the name OCH Capital without it being explained
to them unless they were personally acquainted with Mr Ochocki.
73
In its application of the contextual assessment the court therefore considered external factors(or in that case, the lack thereof) which would have informed the consumer as to how the sign andmark were to be read. It is noted that these factors, though undoubtedly external to the marks, wereclosely related to and considered for the specific purpose of assessing how the marks would beperceived or read by the average customer.
74
The latest instalment in the EU/UK caselaw is Specsavers International Healthcare Ltd v Asda
Stores Ltd [2012] FSR 19 (“Specsavers (UKCA)”) and Specsavers International Healthcare v Asda

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Stores Ltd, Case C-252/12 (“Specsavers (ECJ)”). The plaintiff there registered Community trade
marks with the word “SPECSAVERS”. The defendant ran an advertising campaign for its in-store
opticians that made use of a logo similar to that of the plaintiff’s graphic mark and of posters bearing
the straplines “Be a real spec saver at Asda” and “Spec savings at Asda”. The plaintiff claimed thatamong other things, the defendant’s advertising campaign was likely to cause confusion under Art
9(1)(b) of Community Regulation 207/2009 (“the Regulation”), which corresponds to s 27(2) of ourAct. The claim was dismissed in both the English High Court ([2010] EWHC 2035 (Ch) (“Specsavers(UKHC)”) and the Court of Appeal. In particular, it was found that the defendant’s use of the term
“spec saver” in its straplines, although similar to the plaintiff’s “SPECSAVERS”, was not likely to create
origin-based-confusion. Mann J in the High Court stated that “context is all important” and thatconsidering the reference to “Asda” and the play on the word “spec saver”, the public would knowthat the advertisement was for the defendant and not the plaintiff (Specsavers (UKHC) at [145]).
The plaintiff’s contention that Mann J erred in considering the context of the advertisement and theextraneous word “Asda”, was rejected by the Court of Appeal.
75
Delivering the judgment of the Court of Appeal, Kitchin LJ traced the English court’s restrictive
approach toward extraneous factors taken in cases such as June Perfect (though as we haveobserved, we consider this related to the mark-similarity stage of the inquiry) and Julius Samann, butthen went on to note that “the [ECJ] was not constrained in the same way” and had “in a number ofcases…indicated that the court must take account of the specific circumstances of the use of theoffending sign” (at [78]). He then turned his focus to the ECJ’s restatement of the “contextual”
approach in O2 (ECJ), and what he saw to be the importation of this approach to England in Och-Ziff.
His conclusion on the question of how the confusion inquiry ought to be conducted at least in an
infringement setting, was as follows (at [87]):
In my judgment the general position is now clear. In assessing the likelihood of confusion arisingfrom the use of a sign the court must consider the matter from the perspective of the average
consumer of the goods or services in question and must take into account all the circumstancesof that use that are likely to operate in that average consumer's mind in considering the sign andthe impression it is likely to make on him. The sign is not to be considered stripped of its context.
76
The English Court of Appeal’s decision confirmed that “in assessing infringement of a trade markthe full context of use must be considered, including the advertising campaign as a whole, not just acomparison of the mark to sign” (see casenote in EIPR 2012, 34(5), 354–357).
77
Therefore, the latest European and English cases suggest an emphasis on the “context” andthis includes the milieu in which the mark is used. While we do not, with respect, think the position in
England or Europe is quite as “clear” as Kitchin LJ suggested in Specsavers (UKCA), we also think it
far from correct to say that the English and European cases now eschew the consideration of
extraneous factors in the confusion inquiry altogether. In the final analysis, having taken note ofdevelopments elsewhere, we must of course come to a conclusion by reference to our statute andthe way in which it has been understood by our courts. Our statutory regime after all has been
applied over a number of years. In this regard, we are satisfied that there must be, and is, some room
for the consideration of external factors. We begin with what we said in Hai Tong at [85(c)]:… We earlier observed at [40(b)] above that in comparing the similarity between two contestingmarks … this is done without regard to "external added matter or circumstances" … But, this is
not the case when assessing the extent to which the goods bearing the contesting marks are
similar and the likelihood of confusion among the relevant segment of the public… To prevent theassessment of these elements from becoming an exercise consisting largely of guesswork, it
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the weight to be accorded to each of these elements and how they interplay with one another.
[emphasis added]78
It cannot be gainsaid that the court’s consideration of such factors in the confusion inquiry
must be conducted in accordance with the structure of the Act and consistent with the legislative
purpose of the trade mark registration regime. To this end the inclusion of extraneous factors must be
managed so as to strike a balance between the competing goals of the trade mark registration
regime. In Sarika we recognised (at [61]) that the competing policy concerns were those of
preventing confusion on the one hand and promoting business certainty on the other. We concluded
that the primary concern was to prevent confusion. Indeed, the plain words of ss 8(2) and 27(2)direct the court to ultimately assess the likelihood of inaccurate consumer perception as to thesource of goods, ie, confusion. At the same time, we are concerned that the registration regime
remains robust and effective to protect the value of the trade mark itself as a badge of origin and tovindicate the exclusive and proprietary rights of the owner.
79

In light of these considerations, in Hai Tong at [87] we said:… while it is permissible to have regard to "extraneous factors", this should not be taken as areference to such factors "at large" and still less to those that are inconsistent with thelegislative framework because they impermissibly curtail the rights granted to the registeredproprietor of a trade mark. Rather, s 27(2) of the Act contemplates the interplay among:(a)the degree of similarity between the contesting marks;(b) the degree of similarity between the goods or services in relation to which these are to be
used; and(c)the effect of the foregoing on the relevant segment of the public,in order to assess the likelihood of confusion. Therefore, those factors that bear upon theseelements in combination or upon the similarity of the goods or services in question and thecharacteristics, nature and likely responses of the relevant segment of the public can and should
be considered. …
80
In this regard we were following the approach initially applied in Polo (HC). We reiterate theseprinciples but with some significant refinements and previous case law on the admissibility of
extraneous factors should be understood in the light of what we set out below. In our judgment, thefollowing principles apply to the three stages of the inquiry under both ss 8(2)(b) and 27(2) of the
Act but subject to the qualifications noted below.
81
On similarity of marks – the marks are to be considered without regard to any added or
extraneous matter, as is well-established in case law (see [20] above).
82
On similarity of goods or services – extraneous factors may be relevant to establish the degreeof similarity as between goods and services that are not identical in infringement cases and in
opposition proceedings where the applicant’s and proprietor’s goods and services are registered or tobe registered in different classes or specifications. Such extraneous factors are some of those
identified in British Sugar, in particular the uses and the users of the goods and services in question,
their inherent nature and the extent to which they are competitive. Extraneous factors are not to beconsidered if the goods and services are identical, because there will be no need to determine how

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similar they are (see [42] above). Goods and services will be regarded as identical where they are
registered or to be registered in the same class and specification in opposition proceedings, while in
the infringement context it will be permissible to have regard to the classification in which theallegedly infringing item or service would have been inserted had the alleged infringer sought
registration of his mark.
83
On the effect of the foregoing on the relevant segment of the public – extraneous factors may
be considered to the extent that they inform the court as to how the similarity of marks and goods
will likely affect the consumer’s perception as to the source of the goods. This however, is subject tosome important qualifications which we will now elaborate upon.
84
First, in opposition proceedings, it will generally not be relevant to consider extraneous factorsthat relate to the actual and particular circumstances and ways in which the mark was used on the
goods in question. While it will be necessary to consider the notional or fair uses to which each of themarks could be put, for instance in terms of what types of goods or services are within thecontemplated uses for which the mark has been registered, it will not be relevant to have regard to
the particular way in which the goods or services have been affixed with the mark and are then being
marketed. This would thus exclude consideration of such factors as differences in the intended market
segments, trading strategies employed, websites used or the trader’s chosen limitations as to his useof the mark. In opposition proceedings, it is the overlap between the notional fair uses of theregistered mark on the one hand, and of the applicant mark on the other, that is in issue. It would
denude of significance the critical distinction that we have drawn between infringement andopposition proceedings if the confusion inquiry were diverted into a consideration rooted in the detailsof the actual circumstances in which the goods or services affixed with the mark are being marketed.
85
Second, even in infringement proceedings, there is a need to be vigilant to the very purpose forwhich the step-by-step approach was devised and has been applied. To the extent extraneous
factors are advanced in the attempt to negate a finding of likely confusion on the grounds that themarks are being deployed in such a way as to target different types of consumers or to notionallydifferentiate the goods in question, this must be avoided. Once the goods are found to be similar or
identical at the second stage of this inquiry, it becomes irrelevant to consider such factors again at
the confusion-inquiry stage.
86
To put it another way, if the competing marks and goods are found to be sufficiently similarsuch that, having regard to the characteristics of the likely consumer, the court concludes there
would be a likelihood of confusion, then it would not be permissible to have regard to yet further
extraneous considerations that might have the effect of diminishing the likelihood of confusion. In thesame way that confusion stemming from sources other than the similarity of marks and goods is
outside the reach of trade mark protection (see [64] above) so too must such factors be irrelevant todisplace a finding of likely confusion if the property rights represented in the trade mark are to bemeaningfully upheld.
87

Extraneous factors have been adduced in general in order to show:(a)that even if on a mark-for-mark comparison the marks are similar, then having regard to
extraneous material they are not confusingly so; or(b)in relation to the goods, even if they are similar or for that matter identical, then having
regard to extraneous material they are not confusingly so.

88

In our judgment, this seems to be wrong in principle. In relation to the analysis of the marks, itVersion No 0: 29 Nov 2013 (00:00 hrs)

denudes of any force the principle that the marks-similarity inquiry is to be conducted without
recourse to external material, if such material were then permitted at the confusion stage of theinquiry.
89
For the same reason, while external factors of the sort we have identified at [82] above may beconsidered at the goods-similarity stage of the inquiry where the goods are not identical (that is to
say they do not or would not fall within the same specification on the register), once thedetermination is made that they are similar, then it would be wrong in principle at the confusion stageof the inquiry to examine whether the trader by means of his superficial trading choices has
differentiated his goods in some way from those of the owner of the incumbent mark even though insubstance the goods are similar or even identical for the purposes of trade mark law.
90
This seems to us to be sound in principle if adequate regard is to be had to the proprietary
rights of the owner of a trade mark. Otherwise a subsequent trader would be able to enter the market
using a trade mark that was very similar to the senior mark, applied to similar if not identical goods
and yet avoid liability by means either of an express disclaimer, or by using cheaper materials andselling his goods at a much lower price and saying that because of these steps, there is no likelihoodof confusion notwithstanding the high degree of similarity or even of identity having been found at theantecedent stages of the inquiry.
91
Such a notion was rejected in Rolex Internet Auction [2005] ETMR 25 where the defendant
hosted a website on which imitation or replica watches were auctioned. The court observed that:
Risk of confusion ... is not excluded by the fact that the goods offered are designated “replicas”
or “imitations”. This is because … the basic consideration does not concern a specific selling
situation in which a risk of confusion in itself existing can be cleared up by means of explanatory
notes or in some other way, for example low price, but relates to the abstract risk of confusing
the two identifying marks.
[emphasis added]
92
In our judgment, this is sensible for the reason put forward by Prof Ng-Loy in her chapter“Developments in Singapore Trade Mark Law 2005-2011: Confusion-based Protection and Beyond” inDevelopments in Singapore Law between 2005 and 2011: Trends and Perspectives (Academy
Publishing pp 349–373) at p 357, where she wrote that the admission of extraneous factors:… renders the protection promised to trade mark proprietors by the registration system an illusory
one … permits a trader whose mark is similar to the senior mark to avoid a finding of confusion bypricing his products or services very differently, packaging them very differently, and even byusing disclaimer notices (“My goods are not XYZ brand”). This [admission of extraneous factorsrule] places a weapon in the hands of the junior mark owner to circumvent infringement. In thisway, the rule can be unfair to the owner of the senior mark. They would also argue that theLegislature could not have intended to allow reference to matters outside of the parties’ marks
and their goods or services. The language used in the Trade Marks Act is this: because similarmarks are used in relation to identical or similar goods or services, there exists a likelihood ofconfusion on the part of the public.
93
What does this leave in terms of factors that affect how the consumer would perceive themarks and how this would bear on the likelihood of confusion? In Thomas R Lee, Eric DeRosia andGlenn L Christensen “Trademarks, Consumer Psychology and the Sophisticated Customer” 57 Emory LJ
575, the authors propose a framework for understanding how consumers are likely to behave in

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devoting attention to the prospective purchase so as to shed light on the central question in trade
mark protection, namely the likelihood of confusion. Perhaps at the risk of oversimplifying their
hypothesis, the authors suggest that the key considerations that inform the analysis should be:(a)
Factors that motivate the consumer to exercise care in the purchase in question directed
at, among other things, the forming of a judgment over the source of the product (see at pp
589–594); and(b)

Factors that enable the consumer to exercise such care (see at pp 595–601).

94
Examples of factors that implicate either or both of these considerations include such things as
the price of the item (ie, whether it is expensive or inexpensive); whether the item is of the sort thatis usually purchased on impulse with fleeting attention or something that is very personal and sotends to attract greater interest and attention on the part of the consumer; the nature of the typicalpurchasing process for such items and whether it is generally attended with sales personnel,
discussion or negotiation; whether the transactions are routine or infrequent, and so on. In our
judgment, this provides a meaningful and potentially useful framework for analysing the question byfocusing on the inherent characteristics and nature of the goods, the marks and how the purchaser islikely to approach the purchasing decision.
95
Although the risk of origin-based confusion is the primary interest sought to be protected bytrade mark law, there must be a limit to the range of external factors that may be taken into accountto determine whether a sufficient likelihood of such confusion exists. The permissible factors are thosewhich (1) are intrinsic to the very nature of the goods and/or (2) affect the impact that the similarityof marks and goods has on the consumer. The impermissible factors are those differences between
the competing marks and goods which are created by a trader’s differentiating steps. In other words,
factors which are not inherent in the goods, but are susceptible to changes that can be made by atrader from time to time, should not be permissible considerations. In particular, we are satisfied that
it is unnecessary, unworkable and impermissible for the court to have regard to such issues as pricing
differentials, packaging and other superficial marketing choices which could possibly be made by thetrader. In contrast, extraneous factors that relate to the purchasing practices and degree of carepaid by the consumer when acquiring goods of the sort in question, can be considered and assessed
without descending into the details of particular differentiating steps which the trader might choose
to take in relation to the goods and services falling within the specification.
96
Based on these considerations, the following represents a non-exhaustive list of factors which
we regard as admissible in the confusion inquiry:(a)Factors relating to the impact of marks-similarity on consumer perception: the degree ofsimilarity of the marks themselves (see Hai Tong at [85(c)(iii)], the reputation of the marks (seePolo (CA) at [34]), the impression given by the marks (see Polo (CA) at [28]), and the possibilityof imperfect recollection of the marks would all be relevant. Clearly, the greater the similarity
between the marks, the greater the likelihood of confusion. As to the reputation of the mark,Mobil Petroleum Co, Inc v Hyundai Mobis [2010] 1 SLR 512 (“Mobil”) at [74] makes it clear that astrong reputation does not necessarily equate to a higher likelihood of confusion, and could infact have the contrary effect as in McDonald’s Corp v Future Enterprises Pte Ltd [2005] 1 SLR(R)177 (see at [64]).
(b)
Factors relating to the impact of goods-similarity on consumer perception: it would belegitimate to take into account factors concerning the very nature of the goods without
implicating any steps that are taken by the trader to differentiate the goods. This includes the

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normal way in or the circumstances under which consumers would purchase goods of that type(see [20] above, Mystery Drinks at [48], Lloyd Schuhfabric Meyer v Klijsen Handel BV, Case C342/97 [1999] 2 CMLR 1343 at 1352; and Philips-Van Heusen Corp v OHIM [2004] ETMR 60 at[55]). This factor is not directly dependent on the marketing choices that the trader makes. As
alluded to at [94] above, it would also be relevant to have regard to whether the products are
expensive or inexpensive items, the nature of the goods and whether they would tend tocommand a greater or lesser degree of fastidiousness and attention on the part of prospective
purchasers (see generally Hai Tong at [85(c)(i)]), and the likely characteristics of the relevant
consumers and whether they would or would not tend to apply care or have specialist knowledge
in making the purchase. We refer here to In the matter of an Application by the Pianotist
Company for the Registration of a Trade Mark (1906) 23 RPC 774 (“Pianotist”) where it wasobserved that, having regard to the nature of the article in question (musical instruments), the(high) price at which it was likely to be sold, and the nature of the consumers who are likely topurchase such products (“generally persons of some education”), a man of ordinary intelligence
was unlikely to be confused (at 778). The price of the type of product being sold is distinct fromthe issue of price disparity between the parties’ products. The former consideration directly
impinges on the degree of care the consumer is likely to pay to his purchase and therefore hisability to detect subtle differences. As observed in Reed Executive Plc v Reed BusinessInformation Ltd [2003] RPC 12 at [103], “a 50 pence purchase in the station kiosk will involve
different considerations from a once-in-a-lifetime expenditure of 50,000 pounds”. On the other
hand, superficial price disparity between the competing goods, which speak more about thetrader’s marketing choices rather than differences in the nature of the goods themselves, is not a
factor we find relevant to the inquiry.
97

We turn to consider the facts in the light of these principles.

Application to the facts
98
The Judge found that there was no likelihood of confusion arising from the similarity between
the marks and the parties’ services. The Judge’s analysis depended to a significant degree on the
differentiation between Staywell’s hotel as a 4-star hotel and the Opponents’ as a 6-star one (at [42]and [47] of the GD). At the outset, we reiterate that because these are not infringement but
opposition proceedings (see [62] above) a focus on the actual and particular circumstances and theway in which the mark was used on the services in question would be misplaced for the purpose ofdetermining whether the registration should be permitted to proceed. Even if, as the Judge found,
there is no likelihood of confusion based on Staywell’s actual use of the Applicant Mark in relation to a
4-star hotel, we must go further to assess whether the answer would be different having regard to
the range of notional fair uses of each of the marks. What, for instance, if one party should exploit its
right to use its mark in a segment in which the other operates (for instance, if Staywell applied theApplicant Mark in the luxury hotel market, or if the Opponents applied the ST. REGIS mark in thebusiness hotel market)?
99
But there is a further point. Confusion in trade mark law extends to consumers believing thatthe users of the competing marks are economically linked (Subway Niche at [26] and Sarika at [63]).
Given this, we do not agree that it was correct in the circumstances to place such a high degree ofsignificance on the differentiated marketing of the hotels as 4-star and 6-star respectively.
100
In our judgment, in respect of the services, the Park Regis and ST. REGIS Singapore are notqualitatively different products. Indeed, if the notional fair uses of the marks are considered, hotel
services are hotel services and there is little, if any, room for differentiation between them.

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101
As to the similarity of the marks, we have already observed that there is no visual similarity,some degree of conceptual similarity, and a significant degree of aural similarity. On the whole, wehave found that the marks were similar. We also agree that “Regis” is the dominant component of themark on an aural analysis.
102
Turning to the likelihood of confusion, the Judge considered a number of factors which might
affect the ability of the customer to accurately discern the economic relationship (or lack thereof)
between the parties’ hotels. These in the main revolved around differences in their marketing methods
and channels, but for the reasons we have set out above, we do not think these were legitimate
considerations. Moreover, as we have also noted, the range of notional fair uses would easily extend
across the spectrum of 4- to 6-star hotel segments. But even confining our analysis to only thepresent, actual use of the marks on these particular types of hotels, we find it not unlikely that the
public would be induced by the similarity of the marks and the common industry in which they areused into believing that there is at least some economic link between the ST. REGIS Singapore and
the Park Regis Singapore. This is especially so given that it is common for large hotel chains tooperate differently branded hotels carrying different logos, united only by use of a common
denominator in their names. This signals to the public that the various hotels, though pitched at
different segments of the market, are economically linked. The High Court noted this in CDL Hotels at[109] in relation to the use of the common denominator “Millennium” in respect of the defendant’s
chain of hotels. The common denominator serves as an assurance of source and therefore quality.
Examples areor.

103 In our view, therefore, the similarity arising from the use of the common denominator “Regis” inboth marks takes on particular significance and there is ample ground for finding that there is asufficient likelihood of confusion as to the existence of an economic link between the two hotels inquestion.
104

Before we conclude this part of our judgment, we touch on one remaining issue.

Initial interest confusion
105
The Opponents also argued that confusion which arises initially but which would have beendispelled by the time of the purchase can constitute confusion for the purpose of s 8(2) of the Act.
This is an application of the doctrine known as “initial interest confusion”, derived from American trade
mark law. The Opponents relied on a number of cases from the UK and EU, as well as Sarika (at [58])and Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR(R) 216 (“Amanresorts”) (at [60]),
arguing that initial interest confusion is already part of our law. We wish to state at the outset thatthe doctrine of initial interest confusion is not currently part of our law. The question before us iswhether it should be.
106
We have noted the origins and the evolution of initial interest confusion (see Michael J Allen,“Who Must Be Confused and When? The Scope of Confusion Actionable Under Federal Trademark Law”
(Vol 81 TMR 209)). The concept can be traced to a 1962 amendment to the American Federal trade
mark legislation, the Lanham (Trademark) Act (15 USC) (“the Lanham Act”) (see Dinwoodie and Janis,
Trademarks and Unfair Competition: Law and Policy (Wolters Kluwer 2010, 3rd Ed) at p 563). Prior to
the amendment, protection was granted (in the context of similar marks) only where use was “likely
to cause confusion or mistake to deceive purchasers as to the source or origin of such goods orservices” (emphasis added). This was construed as requiring proof of the likelihood of confusion of thepurchaser at the point of purchase. Following the amendment, the reference to “purchasers” wasdeleted. The legislative history of the 1962 Amendment indicates that the purpose of the deletion was

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to “clarify” the provision “since the provision actually relates to potential purchasers as well as actual
purchasers” (emphasis added) (S Rep No 2107, HR Rep No 1108). This led some courts to expand theapplication of the Lanham Act beyond actual purchasers to recognise pre-sale (initial interest) andpost-sale confusion.
107 The concept of initial interest confusion has since been applied both broadly and restrictively.
Under the broad interpretation, the concern is not with the risk that the consumer will eventuallypurchase the defendant’s goods; it is sufficient to show that the consumer was drawn to thedefendant’s goods based on its ostensible association with the plaintiff’s mark. The broadinterpretation was applied by the Second Circuit Court of Appeal in Grotrian, Helfferich, Schulz, Th.
Steinweg Nachf v Steinway & Sons 365 F Supp 707 (1973) (“Grotrian”) concerning pianos sold under
the names “Grotrian-Steinweg” and “Steinway & Sons”. This was one of the first cases in which theconcept of initial interest confusion was applied. There the court stated (at 1342):
We decline to hold… that actual or potential confusion at the time of purchase necessarily must
be demonstrated to establish trademark infringement under the circumstances of this case.
The issue here is not the possibility that a purchaser would buy a Grotrian-Steinweg thinking it
was actually a Steinway or that Grotrian had some connection with Steinway and Sons. The harmto Steinway, rather, is the likelihood that a consumer, hearing the "Grotrian-Steinweg" name andthinking it had some connection with "Steinway," would consider it on that basis. The "GrotrianSteinweg" name therefore would attract potential customers based on the reputation built up by
Steinway in this country for many years.
108
On the narrower interpretation, initial interest confusion is applicable only if it gives rise to areal risk that the potential consumer will actually purchase the defendant’s goods even upon knowingthat they are not the plaintiff’s goods. This is illustrated in Brookfields Communications Inc v West
Coast Entertainment Corporation 174 F 3 rd 1036 (9th Cir, 1999) (“ Brookfields”), which applied thenarrower interpretation. The case concerned the defendant’s use of the plaintiff’s registered trademark, “Moviebuff” as a metatag for its own website. The effect was that when an internet user
searched for the term “Moviebuff”, the search results would include the defendant’s website. The
defendant was held liable for trade mark infringement. The Ninth Circuit Court of Appeals gave its
reasons, stating (at [1064]) that:
Using another's trademark in one's metatags is much like posting a sign with another's trademark
in front of one's store. Suppose West Coast‘s competitor (let's call it “Blockbuster”) puts up a
billboard on a highway reading – “West Coast Video: 2 miles ahead at Exit 7” - where West Coastis really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast’s
store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing
the Blockbuster store right by the highway entrance, they may simply rent there. Even
consumers who prefer West Coast may find it not worth the trouble to continue searching forWest Coast since there is a Blockbuster right there. Customers are not confused in the narrow
sense: they are fully aware that they are purchasing from Blockbuster and they have no reason
to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless,the fact that there is only initial consumer confusion does not alter the fact that Blockbuster
would be misappropriating West Coast acquired goodwill.
[emphasis added]
109
The Opponents cited this passage in support of their argument seeking a finding of initialinterest confusion in the present case. It is noted that Brookfields, and the advent of the internet,

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were what gave prominence to the doctrine of initial interest in the US.
110 Under both the broad and narrow interpretations, the focus of the doctrine is on protecting the
reputation and the goodwill of the prior, registered mark. The mischief in both instances lies inmisappropriating or freeloading off the goodwill or attractive force of others. In both Grotrian and
Brookfields the concern was not the risk of confusion as to the trade source of the defendant’s good,
but rather the fact that the defendant in the two cases respectively “attract[ted] potential
customers based on the reputation built up by [the plaintiff]”, and “misappropriate[ed] [the plaintiff’s]
acquired goodwill...”. This is language that reflects a concern with preventing the usurpation anddilution of reputation and goodwill. Later cases have echoed this theme. In Checkpoint Systems Inc v
Check Point Software Technologies Inc 269 F 3d 270 (3d Cir 2001) (at 295), it was said that initialinterest confusion was to prevent the defendant from “receiving a ‘free ride on the goodwill’ of theestablished mark”. In Dorr-Oliver Inc v Fluid-Quip Inc 94 F 3d 376 (7th Cir 1996) (at 382) it was used
to prevent the defendant from using a “bait and switch” tactic to “get its foot in the door by
confusing consumers”.
111
The Opponents also pointed us to the adoption of the initial interest doctrine in the UK andEurope. The leading case is Och-Ziff. Arnold J there cited Grotrian and Brookfields, before going on tocite two English cases and three ECJ cases in support of the proposition that initial interest confusion
was actionable under Art 9(1)(b) of the European Union Trade Marks Directive (Council Regulation
207/2009) (“EU Directive”) (equivalent to s 27(2)(b) of the Act). The English cases are BP Amoco plc
v John Kelly Ltd [2002] FSR 5 (“BP”) at [44] and Whirlpool Corp v Kenwood Ltd [2008] EWHC
1940(Ch) (“Whirlpool”) at [75]. The dicta in these cases suggest that the court was concerned thata buyer could be misled by the similarity of the marks to initially believe that the defendant’s goods
were the plaintiff’s, and then by the time he had come to realise his misconception, he would alreadyhave progressed so far down the route leading to purchase that he would not turn back to purchasethe claimant’s goods. The claimant would therefore stand to lose his custom owing to the initialconfusion (see BP at [44] and Whirlpool at [75]).
112
In the ECJ cases, namely O2 (ECJ), Die BergSpechte Outdoor Reisen under Alpinschule Edi
Koblmuller GmbH v Guni, Case C-278/08 [2010] ETMR 33 and Portakabin Ltd v Primakabin BV, Case C558/08 [2010] ETMR 52 (“Portakabin”), the court’s concerns were somewhat different, being thatpre-purchase factors like advertising could confuse the public into thinking that the plaintiff anddefendant were economically-linked undertakings, and that this would have an “adverse effect on thefunction [of a trade mark] of indicating origin” (Portakabin at [51]). Indeed, the European cases do
not specifically touch on the issue of pre-sale confusion that is dispelled by the time of purchase.
Arnold J’s conclusion from the European cases was that it was sufficient to find a likelihood ofconfusion as to trade source at the point when a customer viewed an advertisement, regardless ofwhether or not the advertisement led to a sale or, if it did, whether or not the consumer remained
confused at the time of such sale (see Och-Ziff at [97] and [101]). Ultimately, his concern, as in theAmerican cases, was with protecting the trade mark proprietor against damage to his goodwill by
dilution, even if no diversion of sales resulted. These concerns are evident in his conclusion on theissue of initial interest confusion (at [101]):… confusion arising from an advertisement is capable of causing damage to the trade markproprietor even if such confusion would be dispelled prior to any purchase. Although there will be
no diversion of sales in such circumstances, there are at least two other ways in which the trade
mark proprietor may be damaged. The first is that a confusing advertisement may affect the
reputation of the trade marked goods or services. It is irrelevant for this purpose whether the
defendant’s goods or services are objectively inferior to those of the trade mark proprietor. The
second is that such confusion may erode the distinctiveness of the trade mark.

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[emphasis added]
113 Having considered the relevant American, English and European authorities on the matter, ourview is that the doctrine of initial interest confusion is directed at a different purpose than that ofs 8(2) (and s 27(2)) of our Act. The rationale underlying the doctrine is very much the protection of
the reputation of a well-known mark from dilution or the prevention of misappropriation of the owner’s
goodwill. But this court in Mobil (at [94]) and Amanresorts (at [229]) made clear that protection
against dilution is the sole province of s 8(4)(b)(ii) of the Act, which was added to our Act for thatspecific purpose. The courts have repeatedly stated that the confusion element in s 8(2) isconcerned with the origin and source of goods, and not simply their reputation or associative
properties (see Hai Tong at [72], City Chain at [58] and Richemont International SA v GoldlionEnterprise (Singapore) Pte Ltd [2006] 1 SLR(R) 401 at [12] (“Richemont”) at [20]). If a consumer is
initially confused but this is unlikely to persist to the point of purchase because of a lack of sufficientsimilarity in the marks or the goods then the purpose of the trade mark as a “badge of origin” has notbeen undermined. Moreover, the doctrine will often or even generally be incompatible with thethreshold requirements of marks- and goods-similarity. Any dilution of the trade mark due to initialconfusion is not actionable under s 8(2) of our Act, which is directed at protecting trade markproprietors from origin-based confusion.
114
Besides inconsistency with our statutory scheme and objectives, there are policy concerns
over extending the protection of these provisions in the way suggested by the Opponents. First
among these is that it can stifle competition without corresponding benefit to consumer choice oraccess to information. The fact that an incumbent suffers business losses because of an increase inmarket competition, when there is no marks-similarity and hence no deception and consumers are notultimately confused, is not the kind of loss which the law seeks to prevent (see Jennifer Rothman,“Initial Interest Confusion: Standing At the Crossroads of Trademark Law” 27 (2005) Cardozo Law
Review 105 (“Rothman’s article”) at pp 108 and 163). A finding of liability when consumers are, infact, accurately informed as to what they are purchasing, is at odds with the goal of trade mark law
which is to protect the source-identifying function of a trade mark and the resulting benefits to
consumer welfare (see Rothman’s article at pp 129-130).
115
Furthermore, it also appears that the doctrine is not easily workable in practice and canintroduce uncertainty. In a report issued by the International Trademark Association (“INTA”), it was
concluded that “a review of initial interest confusion cases in the US reveals that in application thedoctrine is hopelessly confused, inconsistent and sometimes incoherent” (INTA Report on the Online
Use Subcommittee Concerning the Proposed Resolution on Initial Interest Confusion at p 3). In
particular, even the US courts, where the doctrine originated, have yet to develop a consistent
approach as to what factors or consumer behaviour would be sufficient to constitute initial interest
confusion. Considering these objections, we are not convinced that the benefits of adopting thisconcept will outweigh the costs.
116 We therefore conclude that the doctrine of initial interest confusion should not be introduced
into our law because it is inconsistent with the purpose of s 8(2) of the Act which is only to protect
the trade mark as an indication of origin.
Conclusion on opposition under s 8(2)117
Notwithstanding our rejection of the doctrine of initial interest confusion, we reverse theJudge’s dismissal of the opposition under s 8(2)(b) of the Act. We affirm her finding that the marks
were, on the whole, similar, and that the services were in essence identical; but we disagree that thissimilarity did not give rise to a likelihood of confusion at the point of sale of the parties’ respective

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services. On the contrary, we are satisfied in the circumstances that there was a sufficient likelihoodof confusion by reason of the similarity in the competing marks and the services. In our judgment,
because of this similarity, the average customer would have likely been confused as to whether theowners of the competing marks were economically linked and it was therefore an impermissible
infraction of the Opponents’ rights to permit the registration to proceed.
118
Although it is sufficient for us to dispose of the appeal on this ground alone, we go on toconsider the grounds of opposition brought under s 8(4)(b)(i) and s 8(7)(a) of the Act.
Whether the Judge erred in disallowing the opposition under s 8(4)(b)(i) of the Act
Would the use of the Applicant Mark in relation to Class 35 and 42 services be likely todamage the Opponents’ interests?
119 The four elements which need to be shown for an opposition under s 8(4)(b)(i) of the Act are(1) the marks are identical or similar; (2) the earlier mark is well known in Singapore; (3) the use of
the applicant mark would indicate a connection between the applicant’s goods/services and theincumbent proprietor; and (4) the connection is likely to damage the interests of the proprietor.
120
We have already found the marks-similarity requirement to be satisfied (see [38] above). On
the second element, Staywell has not challenged the PAR’s and the Judge’s findings that the ST.
REGIS mark was well-known in Singapore at the date of the Application. As for the third element, thedetailed analysis in Amanresorts has put it beyond doubt that the connection requirement of s 8(4)(b)(i) and s 55(3)(a) of the Act will be satisfied where there is a likelihood of confusion (seeAmanresorts at [226] and [233]). In Mobil this court elaborated that a “connection” under s 8(3) ofthe Act refers to a connection as to origin, a connection as to quality, and business connection. In
our view, these types of connections are relevant to 8(4)(b)(i) of the Act as well. Connection as tosource and quality (insofar as the public expects goods or services which it thinks emanate from thesame source to be of comparable quality (see Mobil at [48]–[49])) imports classic origin-based
confusion, while the business connection imports the misapprehension of an economic relationshipbetween the applicant’s products and the incumbent proprietor (see Mobil at [51]–[52]). In thepresent case, we have no difficulty in finding that the use of the Applicant Mark in Classes 35 and 43,
would give rise to a confusing connection between Staywell’s services and the Opponents’. This flows
from our earlier finding that the use of the Applicant Mark is likely to give rise to confusion unders 8(2) of the Act, in particular, confusion that the parties’ hotels are part of the same chain or areotherwise economically linked.
121 The real controversy then is the last element of s 8(4)(b)(i), namely, whether the use of the
Applicant Mark is likely to damage the interests of the Opponents. The Judge found that even if the
public thought that the parties’ hotels were economically linked, there was no likelihood of damage to
the Opponents’ interests because the consumer would understand that the two hotels were pitchedat different market segments. Therefore the fact that the Park Regis did not offer luxury services“would not cause damage to the ST. REGIS brand” (at [59] of the GD). The Opponents argued that
the Judge had erred in so finding. They pointed to two heads of likely damage: first, there might bedamage by “dilution” and “tarnishment” due to the public believing that the Opponents did not supply
only top-of-the-range hotels but hotels of varying qualities; second, there would be a restriction on
the Opponents’ ability to exploit their mark in a lower market segment.
122 The Opponents rely on CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR(R)975 (“CDL Hotels”) for their first head of damage. CDL Hotels was a passing off case, not one
concerning trade marks. The damage recognised there was the “dilution of the respondents’ goodwill

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in their business” because “[t]he public would not perceive the plaintiff as supplying solely top-ofthe-range goods or services but of varying qualities... [and the] prestigious image of the plaintiff
would in these circumstances be likely to be undermined” (at [84]). This court in Amanresorts
clarified that the damage referred to in CDL Hotels was in fact nothing more than the conventional
head of damage of erosion or tarnishment to goodwill caused by the public erroneously associating
the plaintiff’s 5-star hotel with the defendant’s 4-star hotel (Amanresorts at [130]). Framed in thisway, it is in fact just a species of traditional origin-based confusion. But it is evident from thearchitecture of s 8(4)(b)(i) that the relevant damage to the interests of the proprietor of theincumbent mark (see the fourth element at [119] above) must be something other than theperception of a confusing connection between the parties since this would already be subsumed
within the third element (see [120] above). There was no submission of any other damage beyond theperception of a confusing connection in this regard.
123 Moreover, on the facts before us, we do not think that such a perceived connection could in
itself be damaging to the Opponents’ interest in this case. As noted above (at [102]) the principal
source of confusion in this case was the likelihood of the relevant segment of the public thinking thatthe owners of the two marks were economically related or linked. We have referred to examples ofhotel groups that are linked through the use of one or more common features of their individual marks.
The primary point of such a marketing strategy is usually to enable a group to operate in different
market segments. If this is the sort of confusion that might be engendered in this case, then we donot see how such a connection would have damaged the Opponents’ interests since their primaryargument is that it was within the ambit of the notional fair use of their mark to use it for a lower
market segment.
124
Indeed this leads us directly to the second head of damage. The Opponents contended that
there was likelihood of damage to their interests as it would limit or preclude their ability to expand
into the 4-star hotel market in Singapore. This was a recognised head of damage in Amanresorts inrelation to the passing-off claim. Staywell’s response was that the Opponents displayed no suchintention to expand, and that Amanresorts was distinguishable on the basis that the respondent
there had already commenced expansion of its business into the field where the appellant operated.
The Judge agreed with Staywell, stating that there was no basis for finding that the Opponents’ as
yet non-existent expansion plans were likely to be prejudiced (at [60]).
125 We are unable to agree with the learned Judge on this. Where the field in which the defendantor applicant operates is in close proximity to, or is a natural extension of, the incumbent’s businessdamage in the form of a restriction of business expansion opportunities will more readily be inferred.
Christopher Wadlow in The Law of Passing-off (Sweet & Maxwell, 2011) (“The Law of Passing-off”) at
para 4-043 states that:
If the defendant’s chosen field of business is a natural extension of that in which the claimant
trades then, as a practical matter, damage is likely to be inferred even if the claimant has nopresent intention of expanding into that field.
126 This court held as much in Amanresorts, where it found that the respondent’s field of business(viz, high end resorts and hotels) was “closely connected” to the appellant’s residential
accommodation business. The fact that the respondents had in fact already expanded into theresidential accommodation business overseas only “buttress[ed]” the finding of the closeness of thetwo fields of business (at [121]). This was followed in Mobil, where we stated in relation to an action
under s 8(3) of the Act that this head of damage was “premised on the close proximity between thepresent field of business and the prospective field to be expanded into” (at [99]). Only if there wasno such proximity (as was the case in Mobil) would the incumbent have to display a genuine intention

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to expand into the prospective market. This makes sense because of the need to prevent
unwarranted extension of the incumbent’s protection based on the wholly speculative possibility of its
future expansion into a market unrelated to its present business.
127 In the case before us, it can hardly be said that the markets for hotels of different star-ratings
are not in close proximity to one another. It is perfectly plausible that an operator in the 6-starmarket might wish to set up a 4-star hotel within the same chain, or conversely that a 4-star hotel
operator might eventually move into the 6-star market by setting up a separate hotel, or simply by
improving the standards of its existing operations. Because of the close proximity of the businesses, if
they can even be considered separate at all, we do not think there is a need for the Opponents to
evince actual expansion plans. We are satisfied that the proximity of the markets in which the
Opponents and Staywell operate give rise to a likelihood that the Opponents’ business expansion
opportunities will be prejudiced. Therefore, we find that damage under this head is made out.
Conclusion on opposition under s 8(4)(b)(i) of the Act
128 For the above reasons, we reverse the Judge’s dismissal of the opposition under s 8(4)(b)(i) of
the Act. Based on our finding as to the likelihood of confusion under s 8(2)(b) of the Act, we find thatthe use of the Applicant Mark in Class 35 and 43 would indicate a confusing connection between
Staywell’s services and the Opponents’. Moreover, we find that the Opponents’ interest in thepossibility of expansion into other market segments is likely to be damaged as a result. The opposition
under s 8(4)(b)(i) therefore succeeds.
Whether the Judge erred in disallowing the opposition under s 8(7)(b) of the Act
129 Under s 8(7)(a) of the Act, a mark may be refused registration because its use would result in
liability for the tort of passing-off. The Opponents argue that the use of the Applicant Mark would
have this effect.
130
It is not disputed that to succeed in an action for passing-off, the classic trinity of goodwill,
misrepresentation and damage must be proven. The dispute in this case centres upon the firstelement of goodwill. It is well-established that such goodwill must exist in Singapore at the date of
the application for the registration of the junior mark. The Judge found that no such goodwill existed
in the ST. REGIS Singapore on 3 March 2008, when the Application was filed (“the relevant date”).
The Opponents’ primary obstacle was the fact that at the date of the Application the ST. REGISSingapore was not yet open for business. The Opponents submit that goodwill nonetheless subsisted
in the ST. REGIS Singapore at the date of the Application owing to (1) the conduct of extensive pretrading activities prior to the relevant date and (2) the presence of Singapore customers of overseas
ST. REGIS hotels, coupled with the reputation which the ST. REGIS brand already enjoyed in
Singapore at the relevant date. With respect to the second argument, the Opponents were
essentially inviting this court to depart from the so-called ‘hard-line’ approach to goodwill currently
adopted in Singapore, and to move toward a more ‘soft-line approach’. We analyse these arguments
in turn.
The ‘hard-line’ and ‘soft-line’ approaches to goodwill
131 Goodwill was famously described by Lord MacNaughten in IRC v Muller & Co’s Margarine [1901]
AC 217 at 223–224 as:… the benefit and advantage of the good name, reputation, and connection of a business. It is
the attractive force which brings in custom…. The goodwill of a business must emanate from a

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particular centre or source. However widely extended or diffused its influence may be, goodwill is
worth nothing unless it has power of attraction sufficient to bring customers home to the sourcefrom which it emanates… I think that if there is one attribute common to all cases of good will itis the attribute of locality. For goodwill has no independent existence. It cannot subsist by itself.
It must be attached to a business. Destroy the business, and the goodwill perishes with it,
though elements remain which may perhaps be gathered up and be revived again.
132 The understanding that goodwill cannot exist apart from an associated business, has given riseto two opposing schools of thought. The traditional position is that for goodwill to exist, it is essential
for the trader to have carried on his trade within the jurisdiction (see Anheuser-Busch Inc v
Budejovicky Budvar NP [1984] FSR 413 (“Anheuser-Busch”) at 468, and Alain Bernadin et Compagnie v
Pavilion Properties Limited [1967] FSR 341 (“Crazy Horse”) at 345). This has become known as the‘hard-line’ school of thought. Crazy Horse is the locus classicus of this line of cases. It stands for the
proposition that a foreign trader which conducts no business activity in the jurisdiction can have no
goodwill in the jurisdiction, notwithstanding that (1) it has advertised in the jurisdiction and/or (2) it
has acquired a reputation in the jurisdiction and has customers in the jurisdiction who travel abroad topurchase the trader’s goods or services.
133
More recently, a line of cases have taken a ‘softer’ approach to the territorial aspect of
goodwill. The ‘soft-line’ approach states that goodwill can be established by something less thantrade conducted in the jurisdiction, particularly if the trader has an international reputation and is able
to draw customers to the source of its attractive force. Cases from the courts in Canada, New
Zealand and Australia have taken this approach (see Orkin Exterminating Co Inc v Pestco Co of
Canada Ltd et al 50 OR (2d) 726 (“Orkin”), Dominion Rent A Car Ltd v Budget Rent A Car Systems[1987] 2 NZLR 395 (“Dominion”) and Conagra v McCain Foods (1992) 23 IPR 193 (“Conagra”)).
134 In Singapore, the Privy Council adopted the ‘hard line’ approach in Star Industrial Co Ltd v Yap
Kwee Kor [1974-1976] SLR(R) 581 (“Star Industrial”). There, Lord Diplock expressed the view that (at[8]):… A passing-off action is a remedy for the invasion of a right of property not in the mark, name or
getup improperly used, but in the business or goodwill likely to be injured by the misrepresentation
made by passing off one person’s goods as the goods of another. Goodwill, as the subject ofproprietary rights, is incapable of subsisting by itself. It has no independent existence apart fromthe business to which it is attached. It is local in character and divisible; if the business is carriedon in several countries a separate goodwill attaches to it in each. So when the business isabandoned in one country in which it has acquired a goodwill the goodwill in that country perisheswith it although the business may continue to be carried on in other countries. …
135 Our courts have since largely followed Star Industrial, holding that a foreign trader which does
not conduct any business activity in Singapore cannot maintain an action in passing-off here (seeTan Gek Neo, Jessie v Minister for Finance and Another [1991] 2 MLJ 301, Jumbo Seafood v Hong
Kong Jumbo Seafood Restaurant [1998] 1 SLR 860 and CDL Hotels). The hard-line approach, as
currently applied in Singapore, draws a clear distinction between goodwill and reputation: “[a] desire
to become a customer of the plaintiff without the ability to actually be one, cannot ordinarily form thebasis of goodwill” (Amanresorts at [62], see also CDL at [50], both citing Anheuser-Busch).
136
One aspect of the hard-line approach has however been softened. In CDL Hotels this court
relaxed the restriction that there must be actual trading for goodwill to exist. Following the lead ofEnglish and Canadian authority, as well as acknowledging industry practice, this court held that (at[58]):

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… pre-business activities can generate goodwill. This is a commonsense approach and is in linewith commercial reality where promoters of businesses usually embark on massive advertising
campaigns before the commencement of trading to familiarise the public with the service or
product. …
137
The conduct of pre-trading activity is one of the grounds upon which the Opponents in thepresent case seek to establish that goodwill subsisted in the ST. REGIS Singapore prior to therelevant date.
Goodwill can be generated by pre-trading activity
138
In CDL Hotels, this court identified two categories of activity relevant to the establishing of
goodwill prior to the official commencement of trading in Singapore. The first was what the court
termed “business activities which had gone into full swing and generated considerable income for the
respondents” (at [61]). This included confirmed room reservations and retail tenants which the
respondent had secured for the retail wing of its Singapore establishment. The finding that suchactual trading activities are capable of generating domestic goodwill is uncontroversial and does notdepart from the traditional hard-line approach. The importance of CDL Hotels was its recognition of asecond category of non-income generating “pre-trading activities” as capable of contributing to
goodwill. These were the respondent’s “large-scale advertising” efforts costing around $1m over one
year, the steady stream of press-releases and media events, entering into an operating agreementwith Ritz-Carton as to the running of the hotel facility, and widely-publicised promotional events suchas two topping-up ceremonies (see CDL Hotels at [59]). This court relied on the English cases of WH
Allen & Co v Brown Watson Limited [1965] RPC 191 (“WH Allen”) and British Broadcasting Corporationv Talbot Motor Co Ltd [1965] FSR 228 (“BBC”), where the relevant activity consisted of extensive
print and television publicity. The Canadian case of Windmere Corp v Charlescraft Corp Ltd (1988) 23
CPR (3d) 60 (“Windmere Corp”) was also considered. The relevant pre-trading activity there was a“concerted effort to introduce the trade mark to a wide segment of its purchasers in a short period oftime”, involving distribution of samples and promotional materials for the upcoming product, andexhibiting the product at trade shows.
139
CDL Hotels however identified a third category of activity which would not suffice to generate
goodwill, citing Amway Corporation v Eurway International Limited [1974] RPC 82 (“Amway”). In
Amway, the plaintiff had initially conducted “minor trading activity” in the UK, before seeking to
expand its UK operations by sourcing for premises and interviewing personnel to run the UK office.
These activities were found inadequate to show that the plaintiff had business activity in the UK
which was protectable under the law of passing-off. The latter activities were described as “merepreparations for trading” in CDL Hotels (at [58]).
140
In the present case, the Opponents argued that the activity conducted prior to the official
opening of the ST. REGIS Singapore fell on the side of relevant pre-trading activity, while Staywell
contended that they were “mere preparations to trade”. We do not think that it is ultimately helpful
to preserve this dichotomy or to resort to labels such as these. It is not always the case that nonpublicity activities such as administrative preparations have no relevance to the establishment of
goodwill in Singapore. Pre-trading activity may take many forms and it is always possible that a
combination of various types of activity may suffice to generate a sufficient degree of consumer
interest and demand, amounting to tangible and protectable goodwill. As always, the sufficiency ofthe pre-trading activity depends on its particular nature and intensity (CDL Hotels at [58]). Instead,
we provide the following guidance.
141

First, pre-trading activity need not be revenue-generating. This stems from the understanding

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that goodwill does not focus on the income of the trader per se but the response of the consumer.
The fact that income is generated is only a proxy for the attractive force of the business. This court’s
holding in CDL Hotels acknowledged that valuable demand may be created in a product or businessprior to its being monetized.
142
Second, the relevant pre-trading or pre-business activities should unequivocally evince theintention of the trader to enter into the Singapore market. This is consistent with the cases whichhave enlarged our understanding of how and for what purpose goodwill can be created. In WH Allen,
BBC and Windmere Corp, the advertising activity conducted was not of the sort that created brandawareness in general, but was geared toward creating tangible demand for an upcoming product. This
court in CDL Hotels also had in mind such ‘pre-launch’ advertising when it recognised (at [58]) that“promoters of businesses usually embark on massive advertising campaigns before thecommencement of trading to familiarise the public with the service or product” (emphasis added).
The fact that the traders in CDL Hotels, WH Allen, BBC and Windmere Corp had proceeded withadministrative arrangements such as entering into operating agreements for the soon-to-be-opened
hotel, or printing and manufacturing the advertised products in preparation for sale, left no doubt thatthe demand created by the advertising would eventually be satisfied. This distinguishes the situationfrom that in Anheuser-Busch, where any demand created would not be met due to the unavailabilityof the product within the jurisdiction.
143
More recently in Starbucks (UK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3974
(Ch), Arnold J held that although advance advertising could create protectable goodwill, the activities
relied on by the foreign plaintiff to establish goodwill in the UK “d[id] not take the form of advertisingor promotion for a forthcoming product or service”. Instead, the advertisements were primarily aimed
at promoting its home business in Hong Kong (at [151]–[152]). The Australian position on pre-trading
activity is also consistent with this approach. In Turner v General Motors (Australia) Pty Ltd [1929]
42 CLR 352, Dixon J found that protectable goodwill in General Motors (Australia) was created throughwidespread and prolonged advertising in Australia of the plaintiff’s intention to set up its Australian
undertaking. The plaintiff also secured offices and commenced the erection of works at the site. It
was found that due to the advertising, the Australian public came to associate the term “General
Motors” specifically with the upcoming Australian undertaking. This approach is also recognised in The
Law of Passing-off at 3-063, which states that:
Despite these reservations [as to whether pre-trade activity can generate goodwill], it issuggested that advertising directed at a specific market in actual preparation for trading does
generate sufficient goodwill to support the action. Lord MacNaughten’s description of goodwill as“the attractive force which brings in custom” is consistent with goodwill existing because
advertising has created a demand of the claimant’s business before it commences…
144 Besides consistency with the authorities, filtering pre-trading activity in this way reflects a key
rationale underlying the hard-line approach, namely to prevent unwarranted stifling of local enterprise.
This rationale was recognised by Cooke J in Dominion where he read the hard-line group of cases as
being motivated by the concern that (at 405):… unless a trader has already entered or at least is clearly about to enter the local market, andthus contributes to the local economy or is about to do so, the local law should not allow him to
stifle local enterprise. …
In softening the hard-line approach so as to consider pre-trading activity as capable of generating
goodwill, our courts must strike a considered balance between the interests of foreign or aspiring
entrants to the Singapore market, and existing local enterprises. Where the foreign trader has no

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interest in the local market, the concern of stifling local enterprises prevails. Where the foreign trader
has unequivocally evinced his intention to enter the local market, the concern of preventing local
traders from “free-riding” on the efforts and expenditure of the foreign trader prevails. It will be a rarecase, if ever, that spill-over advertising meant primarily for a foreign audience or to increase brandreputation in general, or early stages of negotiation and sourcing without any serious commitment toinvestment, will displace the interests of local enterprise in favour of proprietary protection for theforeign trader.
145 Finally, the unequivocal intention to enter the local market is a necessary factor qualifying pretrade activity for consideration in the goodwill inquiry, but it is not sufficient. It must be rememberedthat the ultimate question is whether the activity has generated an attractive force that will bring incustom when the business eventually materialises. If a trader has taken steps evincing his intention
to trade in Singapore, such as securing premises or employees here, but has done nothing to put thebusiness in the awareness of the public so as to create demand, then there clearly is no Singapore
goodwill to be protected. Such was the case in Amway, where the plaintiff, despite taking firm steps
toward establishing a business presence in the UK, had not on the facts generated actual demand forits business whether by trading, advertising or otherwise. Similarly in Athletes Foot Marketing
Associates Inc v Cobra Sports Ltd [1980] RPC 343 Ch D, the plaintiff American trader unsuccessfullyargued that it had goodwill in the UK by virtue, among other things, of its seeking out English
franchisees. The plaintiff was unsuccessful because no evidence was adduced to prove that the
English public knew about the English franchisees or that the plaintiff had done anything to seek retailcustom. Against this background, we return to the final question, which is whether the activity
conducted, whatever its form, suffices to generate an attractive force in the business which will thenmaterialise into actual custom.
Application to the facts
146
In the present appeal the Opponents pointed to three forms of pre-trading activity: (a)advertisements promoting the ST. REGIS brand in general and the opening of the ST. REGIS Singapore
in particular; (b) the securing of restaurant tenants; and (c) the holding of a much-publicised job fairto hire hotel staff. Turning first to the latter two activities, we do not agree with the Judge’s focus
on the fact that they were non-income generating. In our view these were relevant endeavours as
they indicated an unequivocal intention to enter the Singapore market—an intention which did in factmaterialise. However an unequivocal intention to trade in Singapore is simply the gateway throughwhich pre-trading activity enters the court’s consideration as to the subsistence of goodwill. The
question remains whether the activity was sufficient to generate demand. For this, we must examine
the nature and intensity of the activity. In our view, the securing of restaurant tenants and the hiringof employees were not, on these facts, activities which themselves were capable of creating demandin the ST. REGIS Singapore as a hotel. The goodwill upon which the Opponents built their case inpassing-off was not goodwill in the ST. REGIS as an employer or a landlord, but as a provider of hoteland dining services. The relevant pre-trade activity should therefore be of the kind which informed
and attracted the public to consume its hotel and dining services. It follows that we must therefore
consider the Opponents’ advertising efforts prior to the launch of the ST. REGIS.
147 The Opponents submitted that they spent over US$300 million in 2008 on advertising for its ST.
REGIS mark. This was not particularly helpful to their case, because we were unable to tell how muchof this advertising related to the ST. REGIS Singapore rather than other ST. REGIS hotels or the ST.
REGIS brand in general. As we have stated, our focus is on publicity activity preceding the actualcommencement of trade within the jurisdiction, but directed at creating demand that would besatisfied by it. The print advertisements exhibited in the Statutory Declaration of the Opponents’Vice-President, spanning close to 200 pages, were of more relevance as most were specific to the

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opening of the ST. REGIS Singapore. In fact, these were pre-launch advertisements of the typereferred to in CDL Hotels, BBC and WH Allen. But the level of pre-launch advertising in this case fellsignificantly short of that conducted in those cases. The pre-launch advertisements exhibitedspanned only one calendar month (between November and December 2007), and only three of thesewere published in a Singapore publication, namely the Straits Times. This by no means indicates thatthe rest of the publications were not viewed by the Singapore public, but it does hinder our ability toconclude that the Opponents’ advertising was extensive and widespread and targeted at creating
demand within the jurisdiction.
148 We also note that there was no mention of physical promotional events, or any use of digitaland television media. It may be that the Opponents had the same limited and targeted marketingstrategy as was adopted in Amanresorts (at [51]). However, it is difficult for us to conclude based on
this limited marketing that the Opponents had actually succeeded in creating demand amongst its
intended segment of the public. This is different from Amanresorts where the success of themarketing strategy was evidenced by actual demand. Absent any kind of survey or other evidence,
our finding is that the 200 pages of print advertisements in a number of foreign magazines (in fact it
was substantively less, given that many pages were simply covers of the magazines containing theadvertisements) are insufficient to warrant a finding of the generation of an attractive force thatwould bring in custom in Singapore at the date of the Application.
Can a foreign business own goodwill in Singapore?
149 The Opponents’ alternative argument was that there was goodwill in the ST. REGIS Singapore
prior to its launch by virtue of the international reputation of the ST. REGIS brand, coupled with thepresence of Singapore customers who purchased hotel services in ST. REGIS hotels abroad. The
Opponents relied primarily on the decisions in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd[2009] RPC 9 (“Hotel Cipriani (HC)”) and Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] Bus
L R 1465 (“Hotel Cipriani (CA)) (collectively referred to as “Hotel Cipriani”) as authority for the
proposition that the presence of customers within the jurisdiction meant that a trader had businesswithin the jurisdiction relevant to the finding of local goodwill.
150 The Opponents’ submission appears to simplify the position in the Hotel Cipriani cases, which infact reiterated the position that to sustain a claim in passing-off, mere reputation was insufficient andthe plaintiff must prove that it had English goodwill. Further, the cases preserved the former English
position that in order for a foreign service trader to establish English goodwill, the trader must (a)have customers in the UK and (b) bookings for the trader’s foreign services must have been madefrom within the UK (“the direct bookings requirement”). It was the latter requirement which
distinguished the different conclusions reached in Sheraton Corporation of America v Sheraton Motels
Ltd [1964] RPC 202 (“Sheraton”) and in Crazy Horse. In Sheraton, the plaintiff’s customers in the UK
made bookings for the plaintiff‘s hotels abroad via the plaintiff‘s booking office in the UK, and theplaintiff was found to have goodwill in the UK. In Crazy Horse on the other hand, the customers fromthe UK who visited the plaintiff‘s famous saloon in Paris did not make their bookings from the UK, andthe goodwill element was not made out.
151
In Hotel Cipriani, Arnold J in the English High Court and Lloyd LJ in the Court of Appeal foundthat the plaintiff owner of the famous Hotel Cipriani in Venice owned valuable English goodwill owing
to the substantial body of customers from England, significant marketing efforts directed at therelevant English public, and a significant volume of bookings placed directly from England (see Hotel
Cipriani (HC) at [223]–[224] and Hotel Cipriani (CA) at [118]). In Hotel Cipriani (HC) Arnold J
summarised a number of propositions governing the goodwill requirement in English law, which included
the following (at [215]–[217]):

Version No 0: 29 Nov 2013 (00:00 hrs)Fourthly, in order to found a passing off claim in the United Kingdom, the claimant must own
goodwill in the United Kingdom. It is not enough to have a reputation here: see Anheuser—Busch
Inc v Budejovicky Budvar NP [1984] F.S.R. 413.
Fifthly, it is sufficient for goodwill to exist in the United Kingdom that the claimant hascustomers or ultimate consumers for his goods here, and for this purpose it is immaterial
whether the claimant (a) has some branch here or (b) trades directly with customers here
without having any physical presence in the jurisdiction (for example, by mail order) or (c) trades
through intermediaries such as importers and distributors (provided that the circumstances are
not such that the goodwill is owned by the intermediary)...
Sixthly, in the case of claimants who provide services which are physically performed abroad, it
is sufficient for goodwill to exist in the United Kingdom that the services are booked bycustomers from here: compare Sheraton Corp of America v Sheraton Motels Ltd [1964] R.P.C.
202 with Alain Bernardin et Cie v Pavilion Properties Ltd [1967] R.P.C. 581.
[emphasis added]
152 Both Arnold J and Lloyd J expressed the desire to review the direct bookings requirement (seeHotel Cipriani (HC) at [222] and Hotel Cipriani (CA) at [124]), noting the contrary approach taken in
Pete Waterman v CBS United Kingdom Ltd [1993] EMLR 27 and a suggestion for a different test
proposed by Prof Wadlow in The Law of Passing-off (at para 3-095). However, neither Judge wasprepared to adopt these alternative approaches in Hotel Cipriani, largely because the facts did notcall for it. It therefore remains necessary to establish that direct bookings are made by customers
within the jurisdiction in order to establish the English goodwill necessary to maintain a passing-off
claim under English law.
153
The decisions in Hotel Cipriani are in fact in line with this court’s decision in Amanresorts. In
that case, the respondent’s luxury hotel was located in Bali, but bookings were made by Singaporebased customers in the respondents’ two Singapore reservations offices. This was sufficient toestablish the requisite local custom and business necessary to show that there was goodwill in
Singapore attached to the respondents’ Balinese resort. It was therefore not necessary for this court
to consider the situation of a trader with an entirely foreign presence and where bookings were notmade in Singapore (at [68]). In the present case, as the Judge rightly noted, the Opponents wereunable to prove that room reservations made by Singaporean members of the Opponents’ Starwood
Preferred Guest (“SPG”) loyalty programme for other ST. REGIS hotels located abroad, had been madein Singapore. In fact, it was not even proven that these reservations were made for ST. REGIS hotels
rather than hotels under the Opponents’ numerous other brands. Under the current position, theOpponents were therefore unable to prove that protectable goodwill subsisted in the overseas ST.
REGIS hotels.
154
The Opponents however went further. They invited this court to depart from the hard-line
position which extends protection to local goodwill but not to reputation that is unconnected to local
custom. It was argued that the hard-line approach was inconsistent with the positions taken in the
UK, Australia and Hong Kong.
155 In fact, the position taken in each of these jurisdictions is distinct and somewhat varied. The
English position has already been discussed. Australia has most clearly gone down the soft-line
approach, holding that a passing-off action may be maintained based on a trader’s reputation in thejurisdiction, notwithstanding the absence of business premises, business activity or products in thejurisdiction. In Conagra v McCain Foods (1992) 23 IPR 193 (“Conagra”), after reviewing Australian,

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Irish, English, American and Canadian authority Lockhart J concluded as follows (at 235):
I am of the opinion that it is not necessary in Australia that a plaintiff, in order to maintain apassing off action, must have a place of business or a business presence in Australia; nor is it
necessary that his goods are sold here. It is sufficient if his goods have a reputation in thiscountry among persons here, whether residents or otherwise, of a sufficient degree to establishthat there is a likelihood of deception among consumers and potential consumers and of damage
to his reputation.
156
The court’s reasoning appears to extend protection beyond reputable foreign traders withcustomers within Australia, covering also reputable foreign traders with only the potential of obtaining
such customers should it commence trade in Australia. As stated by Gummow J (at 263):…where the plaintiff, by reason of business operations conducted outside the jurisdiction has
acquired a reputation with a substantial number of persons who would be potential customers
were it to commence business within the jurisdiction, the plaintiff has in a real sense acommercial position or advantage which it may turn to account.
157 As can be seen, the Australian position goes much further than the English one in liberating theaction in passing-off from even the requirement of goodwill, let alone the requirement of customers in
the jurisdiction who have made purchases or bookings from within the jurisdiction.
158
As for Hong Kong, the decided cases are few and uncertain. The Opponents cited JC Penney
Co Inc v Punjabi Nick [1979] FSR 26, which concerned the grant of an interlocutory injunction infavour of the American plaintiff against a local defendant which conducted its business under thename “Penneys Fashion” in wording identical to that used in the plaintiff’s logo. The plaintiff in fact
had a Hong Kong subsidiary through which it conducted retail purchases. The court’s decision turnedon the finding that the plaintiff’s Hong Kong subsidiary “does a very substantial business here”, andthat “the business which it does carry on through its subsidiary must necessarily enjoy a local
reputation which the plaintiff is entitled to protect”. Therefore, this was not a case in which theplaintiff’s protection rested on nothing more than an intangible reputation. In fact, it was in line withthe traditional position that a plaintiff may establish goodwill through even modest business activities
conducted by its local agents or subsidiaries. The court did opine (at 27) that:In these days of expanding travel and tourism I would anticipate a development in the law ofpassing off whereby the owners of reputation and goodwill acquired abroad may be granted
protection for that reputation and goodwill here even though they do not carry on business here
and even though its goods themselves have earned no reputation here.
159 However the court did not go so far as to state that that was the current position under Hong
Kong law. In the oft-cited case of Ten-Ichi Company Ltd v Jancar Limited and Others [1990] FSR
151, also concerning the grant of an interlocutory injunction, the Judge indicated partiality to a more
soft-line approach and noted that the Canadian and New Zealand courts in Dominion and Orkinrespectively “have recognised international reputation”, but did not proceed to analyse these cases.
The Judge then used the terms “reputation” and “goodwill” interchangeably, finding in the result thatthe plaintiffs had “international goodwill” and that some of that goodwill existed in Hong Kong. It is
unclear whether the Judge intended to conflate the two concepts (as Lockhart J did in Conagra), or
whether he had unintentionally equated the two distinct concepts. The reasoning deployed in thecase has been questioned and it has been noted that the case of Anheuser-Busch was notconsidered at all (see The Law of Passing-off at para 3-117 and Lim Cheng Saw “Goodwill hunting inpassing off: time to jettison the strict “hard line” approach in England?” JBL 2010, 8, 645–669 at p

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655). The Hong Kong cases are therefore not instructive.
160
Prof Ng-Loy Wee Loon suggested, perhaps having regard to the reality of an increasingly
transnationalised world, that the following test proposed by Prof Wadlow in The Law of Passing-Off atpara 3-095 is one we could adopt:
It is now suggested that a service business operating from a place or places abroad hascustomers and therefore goodwill in England to the extent that persons from England consciously
seek out and make use of its services in preference to those available from competitors, inEngland or elsewhere. So the foreign business has goodwill here if English residents are prepared
to go to it (literally or figuratively) to avail themselves of its services, or if the availability of
those services abroad is a material factor in their travelling to wherever the services can beacquired or experienced.
161
There is much to commend such an approach given the widespread practice of international
travel which is now commonplace in Singapore, as well as the prevalence of accessing services
through the internet by means of on-line bookings. Having said that, we prefer to leave thisdetermination to a subsequent occasion when it is necessary for the determination of the issues
presented. This is not that occasion, not least because even if we were to adopt Prof Wadlow’s
formulation in this case, it would not make a difference to the Opponents’ position given that there
was no evidence of Singapore residents who travelled abroad for the purpose of seeking out andstaying at St Regis hotels there.
Conclusion on goodwill
162

For these reasons, we affirm the Judge’s dismissal of the opposition under s 8(7) of the Act.

Summary of our holdings
163 For convenience and without displacing the need to read what we have set out above in its fullcontext, we summarise our principal holdings in this case:(a)
We maintain the step-by-step approach to the analysis of both opposition andinfringement claims (see [15] above);(b)
We reject the notion that there is any particular or notably low threshold at the markssimilarity stage of the inquiry. The different aspects of similarity are to be applied as signposts
towards answering the question of whether or not the marks as a whole are similar. This analysis
is done mark-for-mark without consideration of external material. But at the confusion-stage ofthe inquiry it would be appropriate to have regard to the relative importance of the various
aspects of similarity having regard to the nature of the goods and services in question (see [16],[17] and [20] above);(c)
The marks are to be assessed as composite wholes but bearing in mind and having due
regard to distinctive and dominant elements (see [25]–[26] above);(d)Unlike aural similarity which considers the utterance of the words without regard to their
meaning, conceptual similarity seeks to uncover the ideas that lie behind and inform theunderstanding of the marks (see [35] above);(e)

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a specification in which the incumbent mark has been registered, the goods or services inquestion are to be regarded prima facie as identical (see [40]–[41] above);(f)
There is a difference at the confusion-stage of the analysis between opposition
proceedings and infringement proceedings. In the former, the court must have regard to the fullrange of actual and notional uses of the marks; whereas in the latter, the court compares the fullrange of notional fair uses of the incumbent mark against the actual use of the later mark (see[56]–[62] above);(g)
It is not relevant to have regard to extraneous factors concerning the actual andparticular circumstances and way in which the mark has been used on the goods in question in
opposition proceedings. In both opposition and infringement proceedings, it is impermissible at theconfusion-stage of the inquiry to consider extraneous factors consisting of steps taken by atrader to differentiate his goods or marks from those of the owner of the incumbent mark.
Extraneous factors that relate to the nature of the goods or services, the typical purchasing
practices that would attend such goods or services and the degree of care that would be appliedby the consumer would be relevant (see [69], [73] and [84]–[96] above);(h)

The doctrine of initial interest confusion has no application in Singapore (see [112]–[116]);(i)
Where the field of trade in which the defendant in infringement proceedings or the applicant
for registration operates is in close proximity or is a natural extension of that of the incumbent’s
business, damage in the form of a restriction of business expansion opportunities will generally beinferred (see [125]–[126]) above; and(j)
The hard-line approach to goodwill is softened in Singapore to the extent that pre-trading
activity need not be revenue-generating as long as it is directed at generating demand for theplaintiff’s business and the trader evinces an unequivocal intention to enter the market (see[140]–[145] above).
Conclusion
164
For the reasons we have given, we allow the appeal in CA 148/2012 with respect to the
opposition under ss 8(2)(b) and 8(4)(b)(i) of the Act. We dismiss the appeal with respect to the
opposition under s 8(7)(a) of the Act. We also dismiss the appeal in CA 147/2012. The Opponents areto have 85% of their costs for both appeals and similarly 85% of their costs below having regard to
the fact that the Opponents failed in their opposition under s 8(7)(a). These are to be taxed if notagreed. The Applicant Mark may not proceed for registration.
165 We are grateful to all counsel for their assistance in this matter. We are especially grateful toProf Ng-Loy Wee Loon for the tremendous assistance she rendered us in this matter. Prof Ng-Loy
made available to us the benefit of her great breadth of knowledge in this field and she clarified anumber of important matters for us.
[note: 1] See Appellant’s Core Bundle Vol 2 (“2ACB”) (Part A) in CA 148/2012 at p5, para 4[note: 2] See 2ACB (Part A) in CA 148/2012 at p 6 para 7, and the Principal Assistant Registrar’s

Grounds of Decision (“PAR’s GD”) in 2 ACB (Part B) in CA 148/2012 at [10][note: 3] See PAR’s GD in 2 ACB (Part B) in CA 148/2012 at [12]Version No 0: 29 Nov 2013 (00:00 hrs)

[note: 4] See Grounds of Opposition in Record of Appeal Vol 2 at pp 21-26[note: 5] See 2 ACB (Part B) in CA 148/2012 at [54]-[60][note: 6] See 2 ACB (Part B) in CA 148/2012 at [61]-[63][note: 7] See 2 ACB (Part B) in CA 148/2012 at [73] and [90][note: 8] See 2 ACB (Part B) in CA 148/2012 at [35]-[36][note: 9] See Grounds of Decision (“GD”) at [18]-[20][note: 10] See GD at [21]-[29][note: 11] See GD at [30]-[35][note: 12] see Tab 13 of Annex B[note: 13] See GD at [36]-[49][note: 14] See GD at [55][note: 15] See GD at [57]-[58][note: 16] See GD at [59]-[61][note: 17] See GD at [66]-[79][note: 18] See 1 ACB in CA 148/2012 at pp 45-46[note: 19] See RA Vol 2 at pp 13-16[note: 20] See RA Vol 2 at pp 5-7[note: 21] See RC in CA 147/2012 at [11] - [13][note: 22] See AC in CA 147/2012 at [46]-[48]C opyright © Government of Singapore.

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