October 1, 2015
This is a rare Singapore case in which a defendant in a trade mark infringement suit relies on the defence of fair comparative advertising.
Challenger and Courts are both well-known retailers in Singapore. The dispute arose out of a marketing campaign in which advertisements by Courts contained the words "Guaranteed at least 10% cheaper than any CHALLENGER" or "Guaranteed 10% cheaper than any CHALLENGER".
Challenger sued Courts, alleging trade mark infringement, defamation and malicious falsehood. Courts argued that its use of the word “CHALLENGER” was honest descriptive use and/or fair comparative advertising.
Pending the outcome of the trial, Challenger tried to obtain an interim (pre-trial) injunction to stop Courts' use of its registered trade mark "CHALLENGER".
The High Court refused to grant the injunction as the grounds for granting the injunction were not satisfied.
The grounds for granting an interim injunction are:
- There is a serious question for trial; and
- On balance, the circumstances favour the granting of the injunction.
The Court confirmed that there was indeed a serious question for trial. Challenger had made out a serious issue on trade mark infringement even though Courts would assert several defences against the claim of infringement.
However, the Court found that Challenger had not established that the circumstances favoured the grant of the injunction. Firstly, Challenger's case was not so strong as to tip the balance in favour of granting the injunction. Secondly, the grant of the injunction would effectively dispose of the case without any trial on its merits. This was because the marketing campaign was only for a limited period and would end before trial. In the end, the Court considered it more prudent to maintain the status quo as at the date the proceedings began, namely by allowing the advertisements to run to their natural conclusion.
Further, the Court saw no reason to doubt Courts' ability to meet an award of damages in the event the injunction was not granted.
Challenger is appealing against this decision.