Sunrise: Notes on the Distinctiveness, Similarity and Goodwill Inquiries for Trade Marks 

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In the recent decision of Sunrise Plus (Pte) Ltd v The Sunrider Corp dba Sunrider International [2025] SGHC 51 (“Sunrise”), the Singapore High Court considered the appeal by Sunrise Plus (Pte) Ltd (the “Appellant”) against opposition to their trade mark registration applications by The Sunrider Corp dba Sunrider International (the “Respondent”).

 

Facts

The Appellant had applied to register the following marks:

•                  under Class 5: Dietary and nutritional supplements for humans; vitamins and vitamin formulations for human consumption; minerals and mineral formulations for human consumption; etc.

•                  under Classes 29, 30 & 35 (multi-class application): Dairy products; chocolate products; retail services in respect of dietetic foods; etc.

 

The Respondent opposed these marks based on its earlier mark:

•                         :  “Herbal Drinks included in Class 5”.

 

The principal assistant registrar (“PAR”) had initially allowed the opposition on both the grounds of Section 8(2)(b) Trade Marks Act 1998 (“TMA”) and the Section 8(7)(a) TMA (i.e. ‘passing off’). On appeal, the High Court maintained the Section 8(2)(b) ground of opposition but dismissed the Section 8(7)(a) ground of opposition (i.e. ‘passing off’). 

 

This case offers three interesting takeaways.

 

‘State of the Register’ a Relevant Factor in Technical Distinctiveness Inquiry

In considering the degree of similarity between the Appellant’s and Respondent’s marks, the High Court considered arguments relating to the relevance of the “state of the register” vis-à-vis distinctiveness. The High Court appeared to take into consideration the “state of the register” and ultimately found that the word “SUNRISE” was not of low distinctiveness as only one other registration existed in Class 5, the relevant class in dispute.¹

 

Prior to this decision, there had been conflicting opinions on the relevance of such evidence:  

 

1. GCIH Trademarks Limited v Hardwood Private Limited ² and In the matter of a Trade Mark Application by Arangur UG (haftungsbeschrankt)³ provided that the state of the trade marks register was irrelevant in assessing distinctiveness under the similarity of marks inquiry as it could not “tell you what is actually happening out in the market”.

2. In Fair Isaac Corporation v LAC Co., Ltd., it was clarified that although “the state of the register does not shed light on the realities of the marketplace”, it “can be considered when assessing whether a particular mark is inherently technically distinctive” (emphasis added).⁴

 

The current decision before the High Court appears to demonstrate tacit acceptance of evidence of the ‘state of the register’ in determining mark distinctiveness. However, it remains to be seen the extent to which such evidence may be considered or used, and the types of inferences which may be drawn from it. 

 

Scope of Broadly Worded Specifications under Class 5 Similarity of Goods & Services Inquiry

 

The High Court in Sunrise also upheld the PAR’s determination – guided by the factors in British Sugar Plc v James Robertson & Sons Ltd ⁵ – that the goods and services covered by the Appellant’s mark (‘nutritional and dietary supplements’ in Class 5) are similar to that of the Respondent’s (‘herbal drinks’ in Class 5). 

 

In considering the ‘uses of the goods’ factor, the Appellant’s narrow interpretation of ‘nutritional and dietary supplements’ (i.e. products intended to provide some type of essential element found naturally in foods ingested by humans, such as vitamins or minerals),⁶ was rejected in favour of the wider, “ordinary and natural meaning” of the term obtained using dictionary definitions and Health Sciences Authority guidelines (i.e. products consumed to support, maintain or improve health).⁷ The Court went on to say that even under the narrow interpretation, herbal drinks would not be excluded under the definition as herbs can provide certain vitamins.⁸

 

This decision spotlights the potentially wide scope of certain broadly worded items such as ‘dietary and nutritional supplements’ in Class 5. Coupled with previous decisions such as Weider Global Nutrition, LLC v Morinaga & Co., Ltd, which held that the ambit of the proprietor’s Class 5 specifications was wide enough to encompass “non-alcoholic protein and/or carbohydrate energy drinks” registered under Class 32 due to their “nutritional value or functional benefit”,⁹ this demonstrates that certain broadly worded specifications may offer wider protection across classes, making them more strategically useful than others.

 

Sufficiency of Manufacturing Facilities in Generating Goodwill

 

In considering the passing off ground of opposition, the Court considered whether merely having a manufacturing plant in Singapore was, by itself, sufficient to prove goodwill “as a whole”.¹⁰

 

In Future Enterprises Pte Ltd v Tong Seng Produce Pte Ltd (“Future Enterprises”) at [32],¹¹ it was found that having a manufacturing plant for a product (MacCoffee) could generate some goodwill in the “manufacturing” business as a whole (Future Enterprises), even if it did not mean that goodwill was generated in the product (MacCoffee).

 

In the current case, the Respondent did not disagree with Future Enterprises but attempted to argue that there was goodwill as a whole, which was – following the authority of Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) (“Singsung”) at [34] – sufficient to show goodwill in the context of the passing off action.¹² Ultimately, however, the Court rejected the Respondent’s argument on the basis that they had not provided sufficient evidence of “sales or expenses incurred in promoting the goods and services in association with their marks”.¹³

 

This finding appears to conflate the goodwill which attaches to the business “as a whole” and that which attaches to the relevant mark or sign. Consequently, it would appear that despite the statements made in Future Enterprises, to establish goodwill in a business as a whole, the mere presence of a manufacturing facility is insufficient and evidence of sales or of expenses incurred in promoting the goods and services in association with the mark, brand or get-up which they bear is nevertheless required. 

 

Following this judgment, the significance of the distinction between goodwill in the business and goodwill in its constituent elements is unclear, as evidence of sales or advertising under the relevant constituent element (mark) seems to be required in any event. It will also be interesting to observe the impact of this decision on export businesses, especially considering the comments made in Singsung at [68]:

 

In this age of globalisation and electronic commerce, it may also arguably be said that the law ought not to require an export business such as that of the appellant to have customers physically present in Singapore before allowing it to invoke the protection of the tort of passing off here. 

 

In our view, it may well be sufficient for the purposes of passing off if a business operated from Singapore sells its products or services from here even if its customers happen to be based overseas at the time of purchase (subject, of course, to the caveat that the plaintiff would nevertheless have to prove the elements of misrepresentation and damage).

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