Alteco Chemical Pte Ltd v Chong Yean Wah trading as Yamayo Stationery Manufacturer

• Jurisdiction: Singapore
• Judge: G P Selvam J
• Judgment Date: 13 July 1999
• Neutral Citation: [1999] SGHC 186
• Citation: [1999] SGHC 186
• Defendant Counsel: Alex Thian Phin Hock and Elaine Lee (Yeo Wu Thian)
• Published date: 19 September 2003
• Plaintiff Counsel: G Radakrishnan (Rada & Associates)
• Date: 13 July 1999
• Docket Number: Suit No 498 of 1996
• Court: High Court (Singapore)
• Subject Matter: Infringement,Whether virtual reproduction of product display get-up by defendant,Copyright,Whether non-marketing of defendant's product in Singapore relevant,Defendant's admission of similarity in her get-up with plaintiffs' get-up,Authorship,Product display get-up,Trade Marks and Trade Names,Elements of passing off,Passing off,Whether non-selling of defendant's get-up not sold in Singapore relevant,Applicable principles and determination of authorship,Test for infringement,Tort,Likelihood of deception and damage,Whether defendant infringing plaintiffs' trademark,ss 30(2), 130 Copyright Act (Cap 63, 1988 Ed)

The principal cause of action in this case is a claim for passing-off in respect of the get-up for the display and sale of 3g super glue in tubes. For good measure, claims for infringement of copyright and registered trademarks were tacked on. The principal relief sought was a perpetual injunction. For good measure an inquiry as to damages or an order for account of profits was added.

The passing-off claim

the plaintiffs, a Singapore company, is an offspring of a Japanese company called Alpha Techno Ltd (`Alpha Techno-Japan`). When this suit was brought, Alpha Techno-Japan had for some time been manufacturer of super glue in small tubes, not unlike toothpaste tubes one finds in airplanes and hotels. There was one difference, however. the screw cover of the glue tube was long and conical. Twelve of the tubes were mounted on a hangable rectangular display card with perforations to form 12 sections, each tube to be sold individually. This would enable each section with a tube to be torn off with ease. Each section was called a `tube-card`. The pack of tubes and the display card constituted the `SG-12 get-up`. The 12 tube-cards formed the bottom two-thirds of the display card. The top one-third was devoted to advertisement.

The SG-12 get-up was described as follows:

The centre piece of the get-up was a small tube containing 3g glue. On the surface of the tube appeared the trademark `ALTECO` and a yellow square on a white background with the words `SUPER GLUE` in red lettering. The tube was attached to a rectangular card (`the tube-card`) with a pin and sealed in transparent plastic. The tube-card was black with the words SUPER GLUE in red in a yellow square in the centre of the card. The trademark ALTECO appeared at the top left hand of the tube card. On the reverse side of the tube card appeared various instructions on how to use the glue. The tubes were mounted on three vertical and four horizontal rows - that is 4 x 3 making 12. On the display card was printed the picture of a hand squeezing the tube of glue. In addition there were four coloured boxes. On each individual box there appeared pictures of a cup and saucer, a toy car, a handbag and belt. Further there appeared on the surface of the display card next to the blue background on a black background on the other top half the words SUPER GLUE in yellow lettering and the following phrases in small white lettering:

`For PLASTICS-METAL-WOOD-RUBBER-PAPER & LEATHER`

`Cyanoacrylate adhesive`

`NET.3g`

`ALTECHO CHEMICAL PTE LTD`

It was further asserted by the plaintiffs that the SG-12 get-up was produced and used in Singapore by Alpha Techno-Japan before 1990 and for six years prior to the action (1996) by the plaintiffs. According to them the get-up when it first made its advent was unique. For the six years before the action (1996), they had substantial local and export sales to Asean, Africa and Middle-East countries. They gave a tabulation of their sales during that period as follows:

Period	Quantity	Value in S$	Quantity	Value in S$
5/90-4/91	153,588	77,933	5.7m	2.5m
5/91-4/92	137,748	70,816	1.2m	4.5m
5/92-4/93	138,576	70,218	3.1m	5.2m
5/93-4/94	52,416	27,619	15.3m	5.7m
5/94-4/95	39,168	22,934	20.1m	6.6m
5/95-12/95	14,976	10,416	16.5m	5.3m

Singapore Overseas In addition the plaintiffs said that they spent money on promoting the glue by advertising the SG-12 get-up. In the result they acquired a substantial and valuable goodwill in the business relating to the manufacture and sale of glue in the SG-12 get-up. They further claimed to be owners of Registered Trademarks Nos 5117/93 and 5118/93 in respect of the tube-card, and also the owners of the copyright in the SG-12 get-up pursuant to assignments from Alpha Techno-Japan.

The plaintiff went on to aver that the defendant, a lady by the name of Chong Yean Wah, passed off glue in tubes as that of the plaintiffs or as being connected or associated with the plaintiffs`. It was further asserted that their registered trademarks and copyright were infringed by the defendant. The thrust of their case in short was that she had copied and used their SG-12 get-up to palm off her glue in tubes as those of the plaintiffs. The defendant carried on her trade under the trade name `Yamayo Stationery Manufacturer`.

The passing-off claim

on that premise the plaintiff sought an injunction to restrain the defendant, her servants and agents from dealing with her glue in respect of the alleged passing-off, infringement of registered trademarks and infringement of copyright. The plaintiffs gave the following particulars in support of their allegation that the defendant was a wrong-doer.

Particulars of Passing-Off

(i) The defendant has made and/or sold and still makes and sells glue in a get-up similar to the plaintiffs` SG-12.

(ii) The similarity between the infringing get-up and the plaintiffs` SG-12 get-up amounts to a misrepresentation by the defendant in the course of trade to prospective customers of her (sic), such as retailers or shopkeepers, or ultimate purchasers of the glue that her glue is that of the plaintiffs` or is connected to or associated with the plaintiffs.

(iii) The similarity is sufficient to deceive ultimate purchasers or cause them the mistaken belief that the defendant`s glue in the infringing get-up is that of the plaintiffs` or is connected to or associated with the plaintiffs.

(iv) The deception or mistaken belief of the ultimate purchasers is particularly acute overseas where the rate of literacy is low and therefore the get-up of the glue plays an important part in deciding which glue to buy.

The plaintiffs then set out particulars of several display cards of the defendant bearing the trademark `Yamayo`. They attached a coloured photocopy of one such display card to the statement of claim. I shall write more about this later.

The infringement of registered trademarks claim

Secondly, the plaintiffs said that they were the registered proprietors in Singapore of two trademarks. The first was No 5117/93 in Class I in respect of adhesive substances used in industry. The other was No 5118/93 in Class 16 in respect of adhesive for stationery. The subject matter of both trademarks was the same. Both registrations were effective from 8 July 1993 for 10 years. The defendant, it was alleged, had infringed trademarks in respect of the get-up and caused confusion and deception of the public. I shall write more about this later.

The infringement of copyright claim

Thirdly, the plaintiffs asserted that they owned the artistic copyright in the work identified as SG-12 get-up for Singapore. The plaintiffs derived their copyright by virtue of an assignment on 22 August 1994 from the original owner, Alpha Techno-Japan. The plaintiffs further said that the defendants infringed their copyright by reproducing the get-up and by advertisements. I shall write more about this later.

The defences

The defendant made a series of denials. Indeed, denials were the principal plank of her defence. She said that the SG-12 get-up was not distinctive or peculiar to the plaintiffs and would not admit that Alpha Techno-Japan had used the SG-12 get-up in Singapore. She said also that not all those products bearing the trademark `Yamayo` were hers. Those with the trademark `HI-TECH` on the tube and `Made in Japan` at the back of the tube-card were imitations of her own get-up. Her only positive case was that a design similar to the SG-12 get-up was first created and published not by Alpha Techno-Japan but by a company by the name of Gordon Brothers Co Ltd of Taiwan in 1987, two years before the alleged creation by Alpha Techno-Japan. The defendant had in Singapore a design similar to the plaintiffs` SG-12 get-up. Further, the get-up was common to the trade and she gave a list of other eight products she intended to rely on. Several positive points the defendant proposed to advance in her submissions were not pleaded. Elementary rules of justice and convenience require a defender to specifically plead and place on record before trial all matters which make the plaintiffs` claim not maintainable. The defendant must not cast about for points as the plaintiffs` case develops and then spring surprise points in closing submission. Regrettably, the defendant did not adhere to this rule of essential justice.

The plaintiffs` evidence

The evidence of the plaintiffs was that the SG-12 get-up was first used by the plaintiffs` parent company in Japan, that is by Alpha Techno-Japan. The plaintiffs` first witness, Mr Koichiro Nogami, asserted in his evidence that the SG-12 get-up was conceived by him sometime in late 1985 or early 1986. Alpha Techno-Japan had since 1983 been selling the 3g glue tubes in a single card (`the SG-2 get-up`). Imitators from Taiwan made it tough for them. So, to save costs, he came up with the novel idea of selling the same tube of glue by a composite card exhibiting a pack of 12 tubes in a spread out display. However, because the SG-2 get-up had already acquired a reputation he decided to retain the same tube-card design but in a much larger pack of 12 tubes. This would also save costs as less card or paper was needed. His input was conveyed to the marketing people who worked closely with a design agency (`Fujita Sangyo`) to come up with the SG-12 design. The predominant purpose of the SG-12 get-up was, therefore, to distinguish Alpha Techno-Japan`s product by a striking display. In my view they did an admirable job of it. Nogami`s evidence was as clear as it was compelling on that score as well as on other points. The veracity of his evidence could be seen from the fact that the SG-12 get-up retained many of the features of the established SG-2 get-up such as the hand holding a black and white glue tube, the flash with...