Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International)

• Court: High Court (Singapore)
• Judge: Tay Yong Kwang J
• Judgment Date: 04 April 2006
• Neutral Citation: [2006] SGHC 58
• Citation: [2006] SGHC 58
• Defendant Counsel: Boey Swee Siang (Rajah & Tann)
• Plaintiff Counsel: Andy Leck, Daniel Chia and Geoffrey Liem (Wong & Leow LLC)
• Published date: 11 April 2006
• Docket Number: Suit No 863 of 2004
• Date: 04 April 2006
• Subject Matter: Whether goodwill or reputation attaching to plaintiff's products and services in mind of public by association with plaintiff's trade marks and get-up,Offending marks similar to plaintiff's registered trade marks in relation to goods and services identical or similar to those for which plaintiff's trade marks registered,Offending marks similar to plaintiff's registered trade marks and get-up under which plaintiff's products and services offered to public,Infringement,Whether defendant infringing plaintiff's registered trade marks,Whether defendant liable for passing off,Passing off,Trade Marks and Trade Names

4 April 2006

Tay Yong Kwang J:

1 The plaintiff alleged that the defendant had committed trade mark infringement and passing off and sought relief by way of injunction, an order for obliteration of the defendant’s infringing mark and/or an order for delivery up or destruction of the defendant’s offending goods, and (at the plaintiff’s option) an inquiry as to damages, statutory damages or an account of profits.

The case for the plaintiff

2 The plaintiff, a company incorporated in the US, testified through its trade mark attorney, James Michael Hurst, that it is in the business of designing, manufacturing, marketing, distributing and selling an extensive range of industrial, agricultural, construction, mining and road-building equipment together with the parts and accessories for such equipment. It also provides services such as the rental, maintenance, repair and distribution of its said products by itself and/or through its subsidiaries, licensees and authorised dealers and distributors. It has been operating since 1925, when it was formed from a merger of two companies. It is a global company and is listed on the New York Stock Exchange. In 2004, its worldwide sales and revenue amounted to some US$30.251bn. According to the 2005 Global Brands Annual Report by Business Week and Interbrand Corporation, it had a brand value of more than US$4bn. It has a website located at .

3 The plaintiff is the registered proprietor of, amongst others, the following trade marks in classes 7 and 12 in the Singapore trade marks register:

4 As the world leader in construction and mining equipment, the plaintiff is well known for its products and services. Apart from its registered trade marks, other distinctive features and get-up on its products and services are instantly recognisable as belonging to the plaintiff. To identify its products, the plaintiff uses a distinctive get-up, the prominent features of which included the use of, amongst others, its registered trade marks T8900215J and/or T8900211H, which have the word “CAT” in white and a triangle device in yellow directly beneath the “A”, superimposed over a black patch with a red line running across the black patch (“the get-up”). The black patch is located on the yellow body of the plaintiff’s products.

5 The plaintiff has been trading in Singapore since 1939 and, as at the last quarter of 2005, maintains a presence in Singapore through various wholly-owned subsidiaries, practically all of which had the word “Caterpillar” in their names. Through Caterpillar Sarl (Singapore branch office), the plaintiff sells its products to Tractors Singapore Ltd, its sole authorised dealer in Singapore, Christmas Island and the Maldives. Tractors Singapore Ltd is also responsible for the provision of the plaintiff’s aforesaid services. Since at least 1988, the plaintiff, by itself and/or through its subsidiaries, licensees and authorised dealer, has been marketing and selling its products and services in Singapore by reference to the get-up and the use of “CAT” or “CAT” with the triangle device directly under the “A” (“CAT marks”). Net sales of the plaintiff’s products in Singapore and in Asia between 2000 and 2005, bearing or using the get-up and the plaintiff’s CAT marks, run into hundreds of millions of US dollars annually.

6 The plaintiff and its associates also advertised and promoted its products and services extensively by reference to the plaintiff’s registered trade marks, its get-up and its CAT marks. As a result of the extensive use and marketing activities, the plaintiff has built up and owns goodwill in its get-up and its CAT marks, which have become so well known in Singapore and elsewhere such that they have become synonymous with and distinctive of the plaintiff.

7 In addition, the plaintiff’s registered trade marks, products and services are well known in Singapore and throughout the world and are the subject of trade mark, patent and design applications and registrations worldwide, using the words “CAT” and “CATERPILLAR” with or without the triangle device directly beneath the “A”.

8 The defendant was formerly trading as Catplus International with its registered place of business at 23 Dunearn Close (the defendant’s residential address) and a place of business at 122 Middle Road, #01-13, Midlink Plaza (“the Midlink Plaza address”). The registered business activities were said to be “manufacture and repair of construction machinery and parts” and “machinery and equipment”. He terminated this sole proprietorship on 22 September 2004.

9 The defendant has used, in the course of business between 9 February 2004 and 22 September 2004, one or more of the following signs or marks, namely “CATPLUS” by itself or with the letters in yellow or white on a black rectangular background with a red line running across the black background, together with the inscription “CATPLUS INC, USA” in small-sized print at the bottom right-hand corner of the rectangle (“the offending marks”). He also dealt in construction equipment and machinery affixed with the offending marks (“offending products”).

10 Sometime in December 2003, the plaintiff received information that the defendant and another entity known as Worldwide Techno-Builders Group (1973) Pte Ltd, now known as Worldwide Techno-Equipment Group (1973) Pte Ltd (“Worldwide”), were dealing in offending products. In February 2004, the plaintiff instructed private investigators to look into the business activities of the defendant and to determine if the defendant and/or Worldwide had any equipment yard housing offending products for sale in Singapore and to make a purchase of such products.

11 In January 2005, the plaintiff’s former solicitors made printouts of some salient pages from the defendant’s website at (“the website in issue”), including the sections on its products, corporate information and contact information. In July 2005, the plaintiff’s present solicitors conducted an instant information search through BizNet on Worldwide. The search showed Worldwide having its registered office at Catplus International’s business address at the Midlink Plaza address. The defendant and his elder brother, Derrick Ong Puay Khoon, were two of the three directors on record. The shareholders were listed as Powerplus Group Pte Ltd (with its address being the same Midlink Plaza address) holding 138,000 shares, See Siok Ngoh (the defendant’s mother, with the same residential address as the defendant) holding 450,001 shares and the defendant holding 49,999 shares.

12 The investigation report and the printouts from the website in issue showed that the defendant’s assertion that Catplus International was dormant since registration and never did any business was a sham. This was because Catplus International was identified as the party which the public should contact in case of interest in the products and services listed on the website. The website was about a business dealing in construction equipment and machinery, the same activities as those of the defendant. Catplus International was also identified as the Asian main office of the Catplus group of companies, located at the Midlink Plaza address. The defendant was present at the said address when the private investigators went there and it was he who dealt with the private investigators. After this action was commenced in October 2004, the website in issue was altered from:

CONTACT INFORMATION

CATPLUS INTERNATIONAL

Asia Main Office: [the Midlink Plaza address]

…

CATPLUS INC., USA

…

to:

CONTACT INFORMATION

CATPLUS INC.

INTERNATIONAL

Asia Main Office: [the Midlink Plaza address]

…

U.S.A. HQ

…

13 The defendant has been a director of Worldwide since August 2002 and holds 7.8% of its shares. Worldwide shares the same Midlink Plaza address. Even if he had met the private investigator in his capacity as a director or employee of Worldwide, as he had claimed, it was impossible that he did not know the nature of Worldwide’s business. The brochures that he handed to the private investigator in February 2004 bore the name “Catplus” and made reference to the website in issue which in turn referred to the defendant’s sole proprietorship as the contact point. The plaintiff has also commenced proceedings against Worldwide and Derrick Ong Puay Khoon for trade mark infringement and passing off (in Suit No 667 of 2005).

14 At no time did the plaintiff give its consent to the defendant, to Worldwide or to any of the entities listed in the defendant’s website or the brochures to use the plaintiff’s CAT marks in any way whatsoever. Through the said website and the brochures, the defendant used, in the course of trade, the offending marks. The offending marks were signs that were similar to the plaintiff’s CAT marks in relation to goods and services identical with or similar to those for which the plaintiff’s CAT marks were registered. The offending marks were visually similar to the plaintiff’s CAT marks. In addition, they were phonetically similar to the plaintiff’s CAT marks because of the identical prefix “CAT”. This similarity was very significant as there was less significance attached to the suffixes. It was industry practice for the plaintiff to be known as “CAT”, with even its website being designated as . It was also industry practice for the plaintiff’s products to be known as “CAT” products as a shorthand version of “CATERPILLAR”.

15 “CATPLUS” was also conceptually similar to “CAT” since the suffix “PLUS” was merely laudatory and entirely non-distinctive in nature. It merely denoted something positive or in addition to and served no purpose in distinguishing the offending marks from the plaintiff’s registered trade marks bearing the word “CAT”. It also did not inform the public that the offending products did not originate from the plaintiff.

16 Due to the nature of the defendant’s business activities, he should know about the plaintiff’s CAT marks, its highly distinctive get-up and...