Seager Enterprise & anor v Demarco Pte Ltd
| Jurisdiction | Singapore |
| Judge | Daniel Koh Poh Leong |
| Judgment Date | 20 April 2001 |
| Neutral Citation | [2001] SGDC 124 |
| Court | District Court (Singapore) |
| Year | 2001 |
| Published date | 30 April 2004 |
| Plaintiff Counsel | Mr Steven Seah & Mr Adrian Kwong [ M/s Drew & Napier] |
| Defendant Counsel | Mr Tan Cheng Kiong & Ms Karen Gan [ M/s Chung Tan & Partners] |
| Citation | [2001] SGDC 124 |
v
Demarco Pte Ltd ...defendants
| Citation: | DC Suit No 51039 of 1999 |
| Jurisdiction: | Singapore |
| Date: | 2001:04:20 |
| 2001:01:18, 2000:10:02, 2000:09:20, 2000:09:11 - 2000:09:13 | |
| Court: | Subordinate Courts |
| Coram: | Daniel Koh, District Judge |
| Counsel: | Mr Tan Cheng Kiong & Ms Karen Gan (Chung Tan & Partners) for the appellant/defendants |
| Mr Steven Seah & Mr Adrian Wong (Drew & Napier) for the respondent/plaintiffs |
JUDGMENT:
Grounds of Decision
Introduction
1. The 1st plaintiffs are a Singapore registered partnership since 1992. They are in the business of manufacturing, distributing and retailing of handbags, luggage, travel bags and travel accessories. They started business as a family concern selling handbags since 1981. As it transpired that the main products handled by them were products bearing the mark "Polo Club", in 1996 the partners in the 1st plaintiffs, who are also siblings, incorporated the 2nd plaintiffs to carry on business pertaining to the "Polo Club" products and products of other brands.
2. The defendants are also a Singapore incorporated company carrying on the business of wholesale and manufacture of luggage bags and accessories. They claimed to be licensee to a wide range of famous brands including Pierre Cardin, Crocodile, Elle and Beverly Hills Polo Club.
3. The plaintiffs filed proceedings in October 1999 claiming that the defendants were passing off their "Polo Team" luggage as and for the plaintiffs’ luggage when they are not and for having some association or connection with the plaintiffs when they have none.
4. The allegations in the particulars of claim relating to passing off are to be found in paras 13 and 14 of the particulars and are in the following terms, that:
"13. The defendants have passed off, attempt to pass off or caused, enabled or assisted others to pass off their products as and for the plaintiffs’ products bearing Polo Design Studio Trade Mark by using the trade mark "POLO DESIGN TEAM".
14. The defendants’ acts were calculated to and to procure, cause, enable, direct and/or assist others to mislead and deceive the trade and the public in Singapore into the belief that their products are the plaintiffs’ products or are connected to or associated with the plaintiffs’ products."
5. Further the plaintiffs also claimed that the defendants have breached a settlement agreement entered between the parties dated 31 March 1999 in which the defendants undertook not to deal in luggage bearing the trade marks "Polo Design Team", "Polo Design" or any colourable imitation thereof.
6. It was alleged that in breach of the said settlement agreement, the defendants commenced use of the mark "Polo Team" on trolley luggages. Trap purchases were made by the plaintiffs on the 15 July 1999. Plaintiffs alleged in paras 17, 18 and 19 of their claims as follow:
"17. The trade mark "POLO TEAM" is colourably similar to the defendants’ earlier "POLO DESIGN STUDIO" and "POLO DESIGN" trade marks, which the defendants have undertaken not to use. At the same time, the defendants’ trade mark "POLO TEAM" is colourably similar to the plaintiffs’ Polo Club and Polo Design Studio trademarks.
18. The use of the "POLO TEAM" trade mark also constitutes an act of passing off in that the use of the offending mark is calculated to and to procure, cause, enable, direct and/or assist others to mislead and deceive the trade and the public in Singapore into the belief that their products are the plaintiffs’ products or are connected to or associated with the plaintiffs’ products.
Particulars
(a) The plaintiffs rely on the particulars set out in 16 herein.
19. The defendants threaten and intend to continue the acts complained of, unless restrained by this Honourable Court. Despite requests that they observe the terms of the Settlement Agreement and to cease and desist from further acts of passing off, they have refused, neglected and/or failed to accede to the plaintiffs’ request to cease and desist using the mark POLO TEAM."
7. Then in paragraph 20 of the statement of claim is contained the usual allegation that:
"20. By reason of the aforesaid matters, the plaintiffs have suffered and are likely to suffer loss and damage."
They prayed for:
1. An injunction to restrain the defendants whether by themselves, their director, officers servants or agents or any of them or otherwise howsoever from passing off or attempting to pass off or causing, enabling or assisting others to pass off products not manufactured, distributed, offered for sale and/or sold by the plaintiff’s products by the use of the POLO TEAM or any other colourable imitation of the mark POLO DESIGN STUDIO.8. I will now turn to the evidence adduced by the respective parties.2. An inquiry as to damages or at the plaintiffs’ option an account of profits and payment of all sums found due upon taking such inquiry or account;
3. Costs;
4. Interest;
5. Such further or other relief that the Court deems fit.
The Plaintiffs’ case
9. Tan Kiang Nguan (PW1) the managing director of the 2nd plaintiffs testified that the family business started in 1981 with the mother Lee King Hwa and the sister Pam Tan Gek Nguan (PW2). They were then selling handbags at Yonie House Handbags. In 1989, it was PW2 who initiated the idea of establishing the Polo Club trademark for their range of luggages. She derived the idea from the logo of Singapore Polo Club at Thomson Road. It was felt the brand "Polo Club" would carry with it the characteristics of quality, success, exclusiveness and style thereby creating a distinctive brand for the luggages in the mind of consumers. From 1993 onwards, the 1st plaintiff then started to use "Polo Club" alone on their luggage. Sometime in 1997, the plaintiffs started to market "Polo Design Studio" luggage. More recently, PW2 added "Polo Club Women", "Vintage Polo Club" and "Polo Club Sports" to the range.
10. The "Polo Club" and "Polo Design Studio" luggages are sold in their own retail outlets (a total of about 8 outlets), as well as reputable departmental stores. By July 1999, the plaintiffs have sold around $11.8 million of ‘Polo Club’ products in Singapore. The plaintiffs turnover from 1 January 1992 to 31 March 2000 was about $13.5 million; this figure did not include the plaintiffs’ overseas sales of about $6.6 million. These turnover figures were in respect of all "Polo Club" products, of which the turnover for luggage constitutes about 75%.
11. The plaintiffs advertising and promotional expenditure from 1 January 1992 to 31 March 2000 was $386,065.71. The "Polo Club" mark also featured prominently on their delivery vans.
12. The advertising and promotional expenditure for "Polo Design Studio" from 1 April 97 to 31 May 2000 was $316,962.85; its turnover was about $1.5 million for the same period. Over the years, since the marks were first introduced by them, the products have become successful as the percentage of sales showed over the year. The plaintiffs contended that they had since the launch acquired goodwill in the name "Polo Club" and "Polo Studio Design Studio" luggages, and that these names on the luggage products had become distinctive of the plaintiffs.
13. PW1 also gave evidence that in July 1998, the defendants were found to be offering for sale luggage bags with the mark "Polo Team Design" which the plaintiffs claimed is confusingly similar to the plaintiffs’ "Polo Design Studio" luggage. The plaintiffs commenced proceeding in the Subordinate Courts in DC Suit No 5330 of 1998 against the defendants for passing off their "Polo Design Team" luggage as and for the plaintiffs’ "Polo Design Studio" luggage. A settlement was subsequently reached between the parties, whereby the defendants undertook not to deal in "Polo Design Team", "Polo Design" or any colourably imitations thereof.
14. However, some four months later, sometime in July 1999, the defendants were found to be selling luggages under the "Polo Team" mark. After the defendants ignored the plaintiffs cease and desist letter, the plaintiff were compelled to take out this present action in Court. PW1 informed the court that the plaintiffs had previously also commenced actions against other trespasses of their goodwill
15. The only other witness for the plaintiffs was Pam Tan (PW2). She gave evidence in relation to her artistic contributions to the design and layout of the lugagges, handbags and fashion bags sold by the plaintiffs. Counsel for the defence cross-examined PW2 on how she came up with the idea of "Polo Club" as a trademark for the plaintiffs’ luggages. In her cross-examination, she was made to concede that "Polo Club" is a generic word. It was only in her re-examination that she explained herself as follows:
Q. Does Polo Club describe any character or quality of a luggage?
A. No, not at all.
Q. Would you say the Polo Club is generic of luggages?
A. No.
Q. Refer to AB Volume 5, page 17, did you know if your brother filed this application?
A. No.
Q. Did you know the reason why he filed the markAB5 pg 17?
A. No.
Q. Can you explain why did you say earlier that the mark was convenient and complete?
A. That was what he told me.
(vide at page 34 NE)
16. Counsel for the plaintiffs submitted that based on the evidence of the plaintiffs witnesses, the defendants conduct in selling products under the label was calculated to cause both confusion and deception and was intended to mislead the luggage bags buying customers.
The defendants’ case
17. The pitch of the defendants case was simply that while it was admitted that they have used the mark "Polo Team", they denied that the said usage constituted a hostile act of passing off or was in breach of the settlement agreement. Beyond a general bare denial of liability, the defence was devoid of any pleaded facts or particulars. I shall elaborate on the defendants position below;...
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