Fragrance Foodstuff Pte Ltd v Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd

• Jurisdiction: Singapore
• Judge: Lai Siu Chiu J
• Judgment Date: 09 July 2002
• Neutral Citation: [2002] SGHC 142
• Docket Number: Suit No 141 of 2002
• Date: 09 July 2002
• Year: 2002
• Published date: 19 September 2003
• Plaintiff Counsel: Tan Tee Jim SC and Elaine Tan ( Allen & Gledhill )
• Citation: [2002] SGHC 142
• Defendant Counsel: Wong Siew Hong ( Infinitus Law Corp )
• Court: High Court (Singapore)
• Subject Matter: Infringement,Whether infringement established,Whether defence established,Use of trade mark,Whether usage of trade mark must be in accordance with class of registration,Copyright,Defence of fair dealing in the public interest,s 27 Trade Marks Act (Cap 332, 1999 Ed),Whether public interest element exists,s 37 Copyright Act (Cap 63, 1999 Ed),Trade Marks and Trade Names,Whether defence applicable in respect of artistic works,s 27(6) Trade Marks Act (Cap 332, 1999 Ed),Whether incidents of confusion can be considered current events,Defendants reproducing plaintiffs' logo in advertisements without consent,Defence of use of trade mark for purpose of identifying goods or services as those of proprietor or licensee,Whether requirements of s 27 of Trade Marks Act (Cap 332, 1999 Ed) satisfied,ss 7(1)(a), 31(1), 26(1)(b)(i), 27(1), 27 (4) & 37 Copyright Act (Cap 63, 1999 Ed)

judgment by the plaintiffs to restrain the defendants from infringing their copyright and trademark in a logo (the Work) which they had commissioned. It was not in dispute that the defendants had reproduced the plaintiffs’ Work in certain advertisements and notices without the plaintiffs’ consent. The plaintiffs had earlier registered the Work as a class 30 trademark for biscuits, cakes, pastry and confectionery. The defendants raised a preliminary issue that s 27 of the Trade Marks Act (Cap 332) was not satisfied because there was no "use" of the trademark since the defendants’ advertisements did not refer to any goods within class 30. Two of the defences raised were that (a) Copyright Act (Cap 63) should not be used as a mechanism to suppress information which the public has a right as well as an interest to know; (b) the defendants had used the Work for the purpose of identifying goods or services as those of the proprietor or licensee in accordance with s 27(6) of the Trade Marks Act.

Held

(1) The preliminary argument was rejected. There was no requirement or limitation that usage must be in accordance with the trademark’s registration under class 30 thereof (see 17)

(2) All the ingredients to found liability on the part of the defendants for copyright infringement had been satisfied (see 26 to 32).

(3) The defence of fair dealing was not established. The matter was only of interest to the plaintiffs and the defendants, not the general public. Further, it would be straining the language of s 37(a) of the Copyright Act to say that the incidents of confusion alleged by the defendants could qualify as current events. As the Work is not a literary but an artistic work, the defence of fair dealing was not available to the defendants (see 34 to 36).

(4) Having considered the conduct of the defendants, the court held that they had not established the second defence either (see 37).

(5) As no defence or any triable issue was raised against the plaintiff’s claim, the court granted the application to restrain the defendants from repeating the mischief committed by their advertisements/notices (see 38).

Cases referred to

Anacon Corporation Limited v Environmental Research Technology Limited

[1994] FLR 659 (refd)
Beloff v Pressdram Ltd [1973] 1 All ER 241 (refd)
Hubbard & anor v Vosper & anor [1972] 2 QB 84 (refd)
Lion Laboratories Ltd v Evans & ors [1985] 1 QB 526 (refd)

Legislation referred to

Trade Marks Act (Cap 332), s 27

[Editorial note: The defendants' appeal in CA 43 of 2002 is pending]

Judgment

GROUNDS OF DECISION

The facts

1. Fragrance Foodstuffs Pte Ltd (the plaintiffs) were incorporated on 12 April 1990 Singapore and since that date have been (and even prior thereto under its predecessors in title) in the business of manufacturing and selling food items such as titbits, fried cuttlefish, mooncakes and, barbecued pork/meat more commonly known by its Hokkien description "bakwa".

2. Bee Cheng Hiang Hup Chong Foodstuff Pte Ltd (the defendants) are in a similar business of manufacturing and selling barbecued meats as well as related products such as pork floss and fish floss. However, they/their predecessors have been in the business considerably longer than the defendants, namely from about the 1930s and, unlike the plaintiffs, the defendants do not sell crocodile "bakwa". The defendants have more outlets (about 22) than the plaintiffs (16-17) and target a slightly different market from the latter. According to the plaintiffs, the defendants have a more upmarket customer base, as their outlets are located in shopping centres whereas the plaintiffs' outlets are situated in public housing (HDB) estates.

3. Sometime in October 1994, the plaintiffs commissioned (and paid) a Singapore citizen and designer, one Chionh Cher Tin (Chionh) to create a logo for their business, on the understanding that the copyright for the same would belong to the plaintiffs. Chionh created a logo (the Work) which comprised of the English word "Fragrance" with its Mandarin equivalent " " (pronounced "Xiang") and a stylised representation of the tongue coming out of the mouth and licking lips, as reproduced below:

According to the plaintiffs, the tongue licking the lips was meant to emphasise the quality and tastiness of the plaintiffs' products. The Work was first published in Singapore in or about January 1995. The plaintiffs gradually used the Work on all their products, signage, packing, advertisements and other promotional materials. In July 1995, they applied to and did register, a mark comprising the Work in class 30 for biscuits, cakes, pastry and confectionery under T95/06325E which registration is still valid and subsisting. At the same time they also applied to register the Work as a mark in class 29 (for dried minced pork, pork floss, chicken floss, snack foods, preserved, jellies, dried and cooked fruits and vegetables).

4. The plaintiffs' application under class 29 is still pending due to the defendants' opposition on the ground inter alia, that the Work is identical to or nearly resembles the defendants' logo which (since 1985) is a single calligraphic Mandarin character "Xiang" meaning 'fragrant'; the parties are waiting for a hearing date for the opposition proceedings.

5. Ten (10) days before this year's Lunar New Year festival, namely on 2 and 3 February 2002, the defendants caused to be published in the local English and Chinese newspapers the following half-page advertisement:

At the same time, the defendants also distributed to the public pamphlets/notices similar to their advertisements; these were handed out at the defendants' outlets, to passers-by near the plaintiffs' outlets and were even placed under the windshield wipers of parked vehicles.

6. Apparently, the defendants were prompted to place the advertisements as a result of two incidents (according to their affidavits). The first occurred in 1988 when Bloomdale (S) Pte Ltd, a gift/hamper company, in its Lunar New Year catalogue, mistakenly advertised as part of its hamper offerings, pork/fish floss of the plaintiffs as the defendants' products. The company was required by the defendants to tender in a press advertisement an apology for its unfortunate error and to correct its catalogue.

7. The second incident of mistaken identity between the parties occurred in the February 2002 issue of the monthly periodical Singapore Women's Weekly where (at p 43) headed WATCH there appeared the following comments against a picture of packaged products:

FRAGRANCE YOU'LL LOVE

Think bak kwa and pork floss, and Fragrance Foodstuff comes to mind. Its bak kwa stays fresh for two weeks without refrigeration, and there's s whole range of floss, lup cheong and even crocodile bak kwa that promises to be a tasty snack. Get your fill of sweet meats this festive season at one of their 16 outlets. For inquiries, call 2984020.

There was no confusion in the advertisement itself but, the telephone number stated was the defendants', not the plaintiffs'. This advertisement prompted the defendants' solicitors to write to the magazine's publishers who apologised for their mistake; the publishers claimed it resulted from the fact that the magazine had sent an 'intern' to the press conference organised by the plaintiffs, who subsequently did the above write-up. The publishers explained that after the press conference, the intern had checked the telephone number of the plaintiffs using the Chinese character "Xiang", not realising that the defendants used the same logo. The intern assumed (wrongly) that the defendants' telephone number was that of the plaintiffs.

8. It did not help matters that on 3 February 2002, a report in the Chinese daily Lianhe Zaobao quoted the defendants' general manager Daniel Wong (Wong) as saying that the defendants may continue to publish notices similar to that set out in para 5 above, in order to dispel the public's confusion that the plaintiffs and the defendants are one and the same company/management.

9. By an agreement dated 5 February 2002, Chionh formally assigned to the plaintiffs all his rights and interest in the Work, including the right to commence action for any infringement of the copyright in the Work. On the following day, the plaintiffs' solicitors wrote to the defendants pointing out that the newspaper notices using the Work had been placed without the plaintiffs' consent and hence constituted an infringement of the plaintiffs' copyright in the Work. The solicitors demanded: (i) a written undertaking from the defendants that they would not reproduce the Work or deal with it in any form or manner, (ii) costs and (iii) compliance with certain other conditions, by 1pm of 7 February 2002.

10. The defendants' solicitors replied to the above demands on 7 February requesting more time (until 8 February 2002) in which to render a substantive response. However, this was past the plaintiffs' solicitors' deadline. Consequently, the plaintiffs issued this writ on 8 February 2002, alleging that the defendants had infringed their copyright in the Work as well as, the trademark.

The applications

11. At the same time that they commenced this action, the plaintiffs applied by way of summons in chambers no. 417 of 2002 for an ex-parte injunction (the injunction application) to inter alia, restrain the defendants (whether acting by their directors, officers, servants or agents or any of them) until after the trial or until further order, from infringing the plaintiffs' copyright in the Work and the trademark. Hearing of the injunction application on 8 February 2002 was postponed to be dealt with inter-partes at a later date, on the defendants' voluntary undertaking not to further infringe the copyright in the Work.

12. Shortly after the defendants' solicitors had filed a memorandum of appearance and the plaintiffs had filed their statement of claim, the plaintiffs applied by way of summons in chambers no. 626 of 2002 (the O 14...