When a chain of “Lifestyle $1.99″ shops opened in Singapore, the existing “One 99″ retail chain was not impressed. But was Judge Chao Hick Tin impressed with One 99’s legal arguments?
Topic: Passing off
Who: Private Ltd v Lifestyle Private Ltd
Where: The Singapore Court of Appeal
When: April 2000
Model turned entrepreneur Nanz Chong spent three years sourcing product for her brainchild: a chain of shops selling everything at 1.99 Singapore dollars. In 1997 she launched in Singapore, under the name "ONE.99". Helped by Ms Chong’s fame as a former model, the venture was a success, with turnover at $6.9m by February 1999. In that same year Rubber Enterprises opened a Singapore store under the name "Lifestyle 1.99" after running a series of "$1.99" joint promotions over the previous year with existing retailers. Ms Chong was not impressed and brought proceedings against Rubber for passing off. On appeal her case was thrown out. Descriptive names like Ms Chong’s could in time become distinctive enough to be protectable by the law of passing off, the appeal judges said, but where brands are descriptive slight differences between them would often be enough to avoid confusion. It might well seem, the court said, that Rubber had been riding on the back of publicity generated by Ms Chong, but "unfair competition" was not illegal as such. The use of the prefix "Lifestyle" and different colour schemes and logos in the parties’ outlets meant there was no real risk of confusion and hence no passing off.
Why this matters:
Thanks to the British Empire, UK and Singapore law are at one on these points, and the concise, punchy judgement of Chao Hick Tin J.A. is a clear reminder of the limited protection the law of passing off gives brands that are in any way descriptive. Trade mark registration has to be the better option, although there too, more descriptive monikers will be more of a challenge to register.