Navigating keyword advertising from a Singapore and European trade mark perspective

In this increasingly digitalised world, how should organisations approach internet keyword advertising and avoid trade mark infringement whilst doing so? In this update, we not only discuss how the Singapore High Court recently dealt with this issue in East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102, but also provide a European perspective on the decision.  

The Singapore Decision

East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2024] SGHC 102 concerned a trade mark infringement claim by a claimant who was the registered proprietor of a number of trade marks in Singapore that contained the words “East Coast Podiatry”. For example:

The defendant, who was also in the business of providing podiatry services, used Google Ads to display advertisements on the internet containing, amongst other things, the words “east coast podiatry”. For example:

The defendant claimed that it had inputted the words “east coast podiatry” into the headlines of the Google Ads (i.e. the hyper-link) as part of the defendant’s campaign to advertise the impending opening of its east coast branch.

The court held that there was no trade mark infringement. While there was no real dispute on whether the claimant’s trade marks and the signs in the defendant’s advertisements were similar, the main issue surrounded the issue of whether there was a likelihood that the relevant public would be confused.

In deciding this issue, the court adopted the test formulated by the European Court of Justice in Google France SARL v Centre National de Recherche en Relations Humaines (CNRRH) SARL and others [2011] All ER (EC) 411 as summarised by the English Court of Appeal in Interflora Inc and another v Marks and Spencer plc [2015] IP & T 109 at [75]:

“… the critical question to be answered in such a case is whether the advertisement does not enable normally informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to in the advertisement originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party …”

On the facts, what was crucial in deciding in the defendant’s favour was the defendant’s website. In the court’s view, the defendant’s website itself (i.e. going into the website itself when clicking the sponsored hyperlink) constitutes part of the actual use of the defendant’s sign and was an intrinsic part of the advertisement as a whole. After considering the content on the defendant’s website, the court held that when the relevant public clicked and visited the defendant’s website, the website would immediately dispel any confusion that the website was associated with the claimant because the website (i) used marks and trade names that were very different from the claimant’s marks; and (ii) did not make any mention of the phrase “east coast podiatry”.

From a Singaporean perspective, for businesses engaging in keyword advertising on the internet, they should (in order to avoid trade mark infringement claims) collectively consider how the keywords selected for the advertisements, the display of the advertisement, and the content of the hyper-linked website itself, may be perceived by the relevant consumer before purchasing such advertisements.

A UK Perspective

This is an interesting case and there are a few factors here that likely played against the claimant. East coast is a well-known area of Singapore, which despite the claimant holding a registered trade for ‘East Coast Podiatry’, it can be argued it is not an overly distinctive mark. Coupled with the defendant’s use of lower-case stylisation in the advertisement as displayed on Google, it brings to mind the area of Singapore in which the defendant’s services are offered as opposed to a clear intention to use the claimant’s trade marks to divert trade from the claimant and/or impact the trade marks’ ability to function.

The UK (post Brexit) is still bound by EU law and the cases cited in this judgement would have applied if the case was heard in the UK. However, it is possible that in light of the enactment of the Retained EU Law (Revocation and Reform) Act 2023 that the UK position may diverge from that of the EU – this remains to be seen. If this case was heard in the UK, it is likely the courts would have come to the same decision as the Singapore High Court.

A Bulgarian Perspective

If a similar case was brought in Bulgaria, the Bulgarian court would have most likely coincided with the Singapore decision and dismissed the infringement claim.

While the Bulgarian courts have not yet heard an identical case, their focus in cases of a conflicting registered trade mark and a similar sign applied in commerce, has always been on the assessment of similarity between the signs and the services. If the court establishes the presence of common / similar elements, an assessment of the distinctive character of these elements would follow. In case of phrases that are descriptive (which is likely in this case for the claimant’s trade mark), the Bulgarian courts would have dismissed the claimant’s infringement claim.

The claimant’s trade mark would also be vulnerable to cancellation due to its non-distinctive character –  this would have been a possible defence taken by the defendant. The Bulgarian Trade Marks and Geographical Indications Act (Art. 36, para 1 in conjunction with Art. 11 (4)) entitles any third party to seek the cancellation of a trade mark when the sign of the trade mark consists exclusively of the description of the geographical origin or the type of services offered. In this Singapore decision, the green-white cross figurative component could be construed to be distinctive to a rather low extent (as it suggests pharmaceutical or medical products or services). All things considered, there is a reasonable chance that the Bulgarian Patent Office would have cancelled the claimant’s trade mark registration if filed by the defendant.

If a cancellation action were launched by the defendant, the court would have been obliged to suspend the court proceedings until there was a final effective decision in the cancellation proceedings. This would have contributed to a prolongation of the dispute.

Conclusion

From the above, whilst it appears that this case would have reached the same conclusion in all three jurisdictions, the reasons differ – the Singapore decision focused more on whether there was a likelihood of confusion, whilst the UK and Bulgarian courts might have focused more on whether the claimant’s trade mark was distinctive in the first place.

Collectively, when companies use keyword advertising in a borderless online environment, they should consider using generic and descriptive keywords for the advertisements to reduce the chances of successful infringement claims being made out against them.

The decision is currently on appeal to the apex Singapore court, and we will provide an update if and when the decision is released as this would help to provide more clarity around the laws surrounding online advertising and trade mark infringement.

The full decision can be accessed at the following link.