Bengawan Solo Pte Ltd and Another v Season Confectionery Co (Pte) Ltd

• Jurisdiction: Singapore
• Court: Court of Three Judges (Singapore)
• Judge: L P Thean JA
• Judgment Date: 24 February 1994
• Neutral Citation: [1994] SGCA 29
• Citation: [1994] SGCA 29
• Plaintiff Counsel: Jimmy Yim and Tony Yeo (Drew & Napier)
• Subject Matter: Civil Procedure,Plaintiff applied ex parte and obtained interim injunction and Anton Piller order,No suspicious conduct,Whether interim injunction should be discharged,Anton piller orders,Passing off,Interim injunction and Anton Piller order discharged,Injunctions,Balance of convenience,Interim injunction,Anton Piller order unjustified,Non-disclosure of material facts,Subject matter of Anton Piller order are perishable,No grave danger or real risk of destruction of evidence
• Published date: 19 September 2003
• Defendant Counsel: Koh Hai Keong and Teo Keng Siang (Koh & Teo)
• Date: 24 February 1994
• Docket Number: Civil Appeal No 156 of 1992

Both the first appellants and the respondents are engaged in the business of manufacturing and selling cakes, pastries and other confectionery products in Singapore. The first appellants were incorporated in 1991 and took over the business of a sole proprietorship under the name and style of Bengawan Solo Cake Shop which had been carrying on such business since December 1975. At present, the first appellants have a chain of 15 retail outlets. The respondents were incorporated in 1966 and were the successors of a partnership which had been carrying on the same business under the name and style of Season Confectionery and the Chinese name of the respondents is ` `. The respondents do not have their own retail outlets, and their cakes, pastries and other confectionery products are distributed to and sold at various emporiums, supermarkets and stores under the brand name `Seasons` represented in a particular style and logo.

In 1992, the Chinese Eighth Moon Festival fell on 11 September 1992. Sometime prior to that date, both the first appellants and the respondents were actively selling Chinese mooncakes. The first appellants` mooncakes were made and supplied by the second appellants who carried on the business of manufacturing and selling confectionery in Johore Bahru under the name and style of Season Kedai Kek Dan Roti or Season Cake House. Their mooncakes had impressed on them the Chinese characters ` `, the literal translation of which is `Always Fresh`, and the name `Season Cake House` and the words `Season Mooncake` appeared on all the packages or boxes and carrier bags for the mooncakes. The respondents` mooncakes, on the other hand, were made and supplied by Standard Confectionery Sdn Bhd of Lot 20 Jalan E1/4, Taman Eksan Industrial Estate, Kepong, Selangor, West Malaysia. Their mooncakes had impressed on them ` `, the literal translation of which is `era` or `period`. These two Chinese characters also appeared on the packages or boxes. The respondent did not use as the trade mark `Seasons` or ` ` for the mooncakes, but the trade mark `Standard`. The Chinese characters ` ` are not a translation of `Seasons` but a transliteration rendering in Chinese of the sound of the word `season`.

On or about 25 August 1992, the respondents` representatives made a trap purchase of a box of mooncakes sold by the first appellants bearing the name `Season Mooncake`, and complained that the first appellants had passed off their mooncakes as those distributed and sold by the respondents. Accordingly, on 2 September 1992, the respondents commenced an action in Suit No 1781 of 1992 in the High Court claiming that the first appellants in selling mooncakes bearing the name `Season Mooncake` had passed off the mooncakes as those of the respondents. On the same day they applied ex parte for an interim injunction to restrain the first appellants from selling mooncakes under that name and also an Anton Piller order permitting the respondents and their representatives to enter the premises of the first appellants to search, inspect, photograph and also to remove all the mooncakes sold under that name and all advertising and other materials relating thereto. The ex parte application was heard before P Coomaraswamy J, at which an amendment was made to the application. On 3 September 1992, the learned judge granted to the respondents the interim injunction and the Anton Piller order. The terms of the injunction were very wide and, so far as material, restrained the first appellants from `parting with possession, power, custody or control` confectionery which bore upon them the name `Season` or the Chinese characters ` `. The Anton Piller order directed the first appellants to permit the respondents` solicitors and representatives to enter the appellants` head office and 13 branches or retail outlets named therein for the purpose of searching, inspecting, photographing...