Singapore Court of Appeal considers trade mark infringement and passing off claim involving internet keyword advertising: East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2025] SGCA 28

https://www.elitigation.sg/gd/s/2025_SGCA_28

Brief Facts

As discussed in my comment on the High Court decision of this case here, this case concerned the defendant’s use of keywords “east coast podiatry”, “Podiatry East Coast”, and/or “Podiatrist East Coast” (the “Signs”) in Google ads. The ads appeared in various forms with links redirecting users to the defendant’s website, which did not contain the claimant’s Mark or any of its variants. The defendant used the Signs to advertise the impending opening of a new branch at the East Coast area, following advice from a Google consultant to use location-based keywords. The Court of Appeal (CA) dismissed the claimant’s appeal.

Legal Holdings

First, the CA reaffirmed [43] that in Singapore, trade mark use (use as a badge of origin, rather than descriptive use) is a threshold inquiry when assessing infringing use, including in advertising and use on websites which offered goods or services for sale.

The CA rejected [68]-[69] the “effect-centric” approach (inquiry on the “ultimate impact on the proprietor’s interests in the registered mark” as per the CJEU’s Google France test). It is inconsistent with Singapore’s statutory framework, introduces a likelihood of confusion requirement for s 27(1) TMA (where confusion is presumed) and could unintentionally widen the scope of infringement to purely descriptive uses.

Second, for internet ads, [70]-[78] a robust application of the threshold test involves 3 considerations.

1. Objective circumstances surrounding use, incl. the ad’s presentation, prominence and purpose of the signs, other signs used. Defendant’s subjective intentions may be relevant but are not decisive.
2. The inherent distinctiveness of the defendant’s sign; greater latitude is given for generic words, as internet users often use a wide range of generic search terms.
3. Content of the website the ad redirects to, to assess the apparent purpose of the signs’ use, especially when the ad itself is vague, distinct from assessing likelihood of confusion.

The CA left open the issue of whether the defendant’s website can be considered in the confusion inquiry.

On one hand, there’s force [102] in the claimant’s argument (based on Staywell) that this should be impermissible as an “extraneous factor” or “differentiating steps” that a trader could easily change to avoid a finding of confusion, even if the marks themselves were highly similar.

However, the CA noted [103] that in infringement proceedings (unlike opposition proceedings in Staywell) especially for interactive internet ads, it might be relevant to consider the website’s purpose of enticing clicks, as it relates to consumer perception.

Application

The CA found the defendant’s use of the Signs here to be descriptive, not as badge of origin.

1. “East Coast” is a geographical area, and “east coast podiatry” is descriptive of podiatry services in that region.
2. Defendant’s evidence of using location-based keywords was consistent with objective facts.
3. Appearance of the signs in the ad headlines was a function of Google Ads, not necessarily an indication of origin.
4. Defendant’s website and URL clearly showed services offered under “Family Podiatry Centre Pte Ltd” branding, not “East Coast Podiatry,” reinforcing the descriptive use.
5. No credible evidence that the defendant intended to confuse prospective clients.

In any case, the CA found that the claimant’s marks and the defendant’s Signs were not similar.

 

Commentary: Impact on Businesses

 

For businesses using internet ads:

1. Use descriptive terms, not competitors’ marks suggesting badge of origin.
2. Align ads with actual business strategy e.g. branch in particular area. Documenting advice from ad consultants to use such keywords can support your claim of descriptive intent.
3. Prominently display own brand/trade name, and not competitor’s, on linked websites.
4. Consider inherent distinctiveness or descriptiveness of your own signs.

 

For businesses protecting their brands:

1. Assess if competitors’ use of signs as a “badge of origin”.
2. Collate evidence on how competitors’ alleged infringing signs are presented in ads (prominence, accompanying text, other branding).
3. Review your own branding & trade mark’s distinctiveness. If your trade marks use descriptive terms, it will be harder to protect.

Businesses should review branding & marketing strategy with specialist IP legal advice. As always, feel free to reach out to discuss with our team on this!