Extended: Passing Off in the “SK Door” Dispute in Singapore

Very recently, our colleagues discussed the Singapore High Court case of Ng Say Keong v Jia Le Aluminium Pte Ltd [2025] SGHC 243. A copy of this article is available at https://www.marks-clerk.com/insights/latest-insights/102mljy-reflections-from-the-sk-door-patent-dispute-in-singapore/.

To recap, the claimant, Mr. Ng Say Keong (“Mr. Ng”) is the sole proprietor of a local company, S & K Solid Wood Doors, and is the patent owner of Singapore Patent No. 10201401033R (“SK Patent”) for a slide-and-swing door invention (“SK Door”). Mr. Ng initiated proceedings against 2 defendants, which are private limited companies registered in Singapore, and involved in selling aluminium products including doors. This is on the basis that the defendants have infringed the SK Patent with acts of making and importing of their door products (“SD Door”).

Our colleagues focused on the issues of patent validity and infringement. This article, however, addresses the passing off claim, which the High Court decided in Mr Ng’s favour. The High Court held that the elements of goodwill, misrepresentation, and likelihood of damage were established, and that the defendants were therefore liable for passing off. Damages are to be assessed separately, with the hearing expected to take place in 2026. 

Establishing goodwill in this case appears to have been relatively straightforward. The High Court found that the sale of approximately 350,000 units of SK Doors, coupled with increasing revenue over the years and the prominent use of the “SK” name, was sufficient to establish goodwill in Singapore. 

The more challenging aspect of the passing off claim appears to have been the element of misrepresentation. To establish misrepresentation, Mr Ng had to show that there was a false representation which gave rise to actual confusion, or a likelihood of confusion, among the relevant public. One of the factors considered by the High Court in assessing whether confusion existed was the inherent distinctiveness of Mr Ng’s mark or the name “SK”. If a claimant’s mark or get-up is not distinctive of the claimant’s goods or services, it would be challenging to establish misrepresentation, even where the defendant uses an identical or similar mark or get-up. 

In this case, the High Court took the view that although “SK” had no obvious reference to the character or quality of slide-and-swing doors, it is a common two-letter combination. The High Court therefore found it difficult to regard “SK” as inherently distinctive. The saving grace for Mr Ng was his substantial use of the “SK” elements over time, as a result of which the mark had acquired distinctiveness. Had Mr Ng failed to establish acquired distinctiveness through substantial use of the mark in Singapore, the passing off claim might well have failed, even if the defendants’ mark was identical or confusingly similar. 

Once Mr Ng established that the mark was distinctive, albeit through acquired distinctiveness, proving confusion became much more straightforward. This was particularly so given that the defendants had promoted the infringing products by reference to Mr Ng’s “SK” name. This included the use of an actual SK Door as a sample installed in the defendants’ showroom. The defendants also consistently used “SK”, including in work orders, referring to the infringing doors as “SK doors”. These were among the factors relied on by the High Court in finding misrepresentation. In substance, the defendants were selling the infringing SD Doors by using an SK Door as a sample, and by referring to it as an SK Door, thereby misleading customers into believing that the doors being sold were genuine SK Doors.

Although the defendants had also adopted the name “SD” for their doors, there appeared to be no plausible explanation for this choice. This was particularly significant given that “SD” had long been used by Mr Ng as a product code for SK Doors, and that the director of a company related to the defendants was a former employee of Mr Ng.

Once misrepresentation was established, the element of likelihood of damage appears to have followed relatively naturally. The High Court found that there was a likelihood of damage in light of the parties’ activities in the same field of business, the resulting direct competition between them, the similarity between the marks, and the likelihood of confusion involved.

This case also serves as a useful reminder of the Court of Appeal’s observations in The Singapore Professional Golfers’ Association v Chen Eng Waye and others [2013] SGCA 18, particularly at paragraph 41, on the element of misrepresentation. An intention to deceive is not a necessary ingredient of passing off, and the focus is on the actual or anticipated effect of the defendant’s actions on the minds of those constituting the relevant segment of the public. That said, when an intention to deceive is shown to exist, “it becomes easier to establish that there is a likelihood of deception on the facts on the simple premise that one will tend to achieve that which one specifically sets out to do, and the courts are inclined to infer that this is so”. 

In the present case, where the evidence suggested that the defendants intended to mislead the public (including Mr. Seet, a private investigator hired by Mr Ng) into thinking that they were selling SK Doors, the High Court is more likely to infer that they have succeeded in causing this confusion, and hence, misrepresentation to take place.