Han’s Cafe v HAN Cuisine: A walk-through in trade mark infringement analysis
In a case concluded recently, the owner of the popular Han’s Cafe chain of restaurants (“Han’s”) commenced an action against the owner of HAN Cuisine of Naniwa (“HAN”), a restaurant serving high-end Japanese food, for trade mark infringement and passing off. HAN counterclaimed that Han’s trade marks were not valid as “Han” was a common surname.
Han’s had registered 4 trade marks: 2 word marks and 2 composite marks that were stylised.
The court decided that even common surnames could be used as trade marks, especially since the composite marks had special fonts and colors. Besides, the marks had acquired distinctiveness through use. As such, the Han's trade marks were valid.
Next, on the issue of trade mark infringement, the court compared the trade marks with HAN’s sign in terms of visual similarity, conceptual similarity and phonetic similarity.
In comparing the 2 word marks that were registered with the HAN sign, the court was of the opinion that the HAN sign was visually similar to the Han’s word marks. The shared common denominator “HAN” in both the HAN sign and the Han’s word marks was substantial.
Hans’s composite marks were visually dissimilar to the HAN sign as they were stylised. This emphasised the other elements present in the HAN sign: a stylised depiction of skewers done in a manner resembling a calligraphy brush-stroke, encircling the sign. The lettering of the HAN sign was also in gold, a different color from Han’s composite marks.
In phonetic similarity, the court found that the HAN sign and Han’s trade marks were phonetically similar, as the slightest mispronunciation would result in complete identity. There is, therefore, phonetic similarity between the HAN sign and the Han’s trade marks.
There was no conceptual similarity as “Han’s” caused the concept of possession or ownership to spring to mind, whereas “Han” gave the impression of a house or a restaurant owned by a person named “Han”. The phrase “Cuisine of Naniwa”, which appears in the subtext of the HAN sign, further suggests that “Han” is being used in its geographical and cultural form.
Overall, the court found that the HAN sign was similar to Han’s word marks, due to the visual and phonetic similarity. On the other hand, the Han’s composite marks were dissimilar to the HAN sign.
Likelihood of confusion
Taking into account that Han’s and HAN were both brick-and-mortar establishments, the court placed importance on the visual and conceptual aspects of the marks. This is because potential patrons will have direct physical perception of the respective marks. As analysed earlier, there was conceptual dissimilarity and only slight visual similarity between Han’s marks and the HAN sign.
In addition, the success and prominence of Han’s trade marks mean that there is less likely to be confusion among consumers. Furthermore, it was relevant that there was significant difference in style, price, range and type of food and services offered.
Hence, the court concluded that although there was some similarity between Han’s marks and the HAN sign, there was no confusion, and the claim for trade mark infringement was dismissed.
Han’s had also claimed that HAN had passed off its business as being connected to or associated with Han’s. For the claim to succeed, Han’s had to prove that its business had goodwill, that misrepresentation by HAN had given rise to the likelihood of confusion that the goods and services of HAN were connected to Han’s, and that Han’s had suffered damages as a result.
It was clear that there was goodwill associated with Han’s restaurants due to the large revenues and volume of sales, along with the fact that there are 21 outlets operating throughout Singapore.
However, there was no likelihood of confusion due to the stark difference in the market segments targeted. The Han’s restaurants are known for being “value for money”, and “affordable and good”; Han’s “price has always been a powerful lure thus making the chain almost unbeatable and recession-proof”. HAN, on the other hand, served the Japanese equivalents of western fine dining. An average consumer is unlikely to conclude that there is an economic connection between the two.
The court concluded that there was no misrepresentation and the passing off claim failed as a result.