Challenger Technologies Limited v Courts (Singapore) Pte Ltd

• Jurisdiction: Singapore
• Judge: George Wei J
• Judgment Date: 21 August 2015
• Neutral Citation: [2015] SGHC 218
• Plaintiff Counsel: Raymund A. Anthony and Mitchel Chua (Gateway Law Corporation)
• Docket Number: Suit No 455 of 2015 (Summons No 2421 of 2015)
• Date: 21 August 2015
• Hearing Date: 10 July 2015
• Subject Matter: injunctions,Civil Procedure
• Published date: 27 August 2015
• Citation: [2015] SGHC 218
• Defendant Counsel: Melvin Pang (Amica Law LLC)
• Court: High Court (Singapore)
• Year: 2015

George Wei J: Introduction

This was the plaintiff’s application for an injunction to restrain the defendant from: Infringing the plaintiff’s trademarks and/or using the plaintiff’s trade name, in the form of advertisements whether by publication, exhibition or issuing to the public copies of advertisements or materials bearing the plaintiff’s trademarks and/or trade name, whether online or otherwise, without the licence or permission of the plaintiff; and Otherwise falsely representing, whether online or otherwise, to any person that the defendant’s “3SIXT” electronic products and/or other related products are “Guaranteed 10% Cheaper Than Any CHALLENGER” and that the defendant’s “3SIXT” electronic products and/or other related products are “Guaranteed At Least 10% Cheaper Than Any CHALLENGER”.¹

I dismissed the plaintiff’s application and awarded costs of $4,000 (all-in) to the defendant. The plaintiff has appealed and I now give my grounds of decision.

Background

Both parties are retailers in Singapore. The plaintiff is an IT retailer that operates stores in Singapore and Malaysia. The defendant is an electrical, IT and furniture retailer in Southeast Asia. The dispute arose out of a marketing campaign launched by the defendant to drive awareness of a new mobile accessories brand, “3SIXT”.

On 2 May 2015, the defendant caused to be published in The Straits Times a ¾ page advertisement containing the words “Guaranteed At least 10% Cheaper Than Any CHALLENGER”.²

Subsequently, on 9 May 2015, a similar advertisement was run in the Straits Times. The second advertisement also bore the words “Guaranteed At least 10% Cheaper Than Any CHALLENGER”.³ On the same day, the plaintiff discovered that advertisements on the defendant’s website bore the words “Guaranteed 10% cheaper than any CHALLENGER”. The words “At least” had been omitted from the online advertisements.⁴

On 17 May 2015, the plaintiff’s employees discovered that a poster of the defendant’s advertisement had been pasted at the entrance of the defendant’s store at Causeway Point.⁵

On 28 May 2015, the Plaintiff’s Team found that the advertisement containing the words “Guaranteed At least 10% Cheaper Than Any CHALLENGER” was displayed on the website www.singpromos.com. On the same day, the defendant’s Facebook page was also found to be displaying pictures of the advertisements.

On 2 June 2015, the plaintiff’s General Manager of Operations received a copy of the defendant’s catalogue which contained an advertisement (similar to those published in The Straits Times) bearing the words “Guaranteed At least 10% Cheaper Than Any Challenger”. The copy had been delivered to his home.

By a writ dated 8 May 2015, the plaintiff commenced this suit. The plaintiff alleged (1) trade mark infringement, (2) defamation and (3) malicious falsehood.

On 5 June 2015, the defendant approached the administrators of www.singpromos.com to request the link that the plaintiff complained of be taken down. The request was complied with on the same day. The Facebook photos were also removed on the same day. The defendant also averred that the catalogue that the plaintiff complained of appeared to have come from the batch which was lodged with SingPost on 19 May 2015 and there were no other batches sent out.

The plaintiff’s marks

It was undisputed that the plaintiff was the registered proprietor of several trademarks registered in Singapore. It would suffice for our purpose to set out the word marks that the plaintiff is relying on in the present dispute: T9607360B in Class 9 T8906987E in Class 16 T9909861D in Class 35

As is clear from above, the registered marks are word marks, with the word “CHALLENGER” in upper-case alphabets (“the Word Marks”). Significantly, T9607360B is registered in Class 9, which covers, inter alia, IT products, electronic products and/or electronic related products; T9909861D is registered in Class 35, which covers inter alia retail store and online web store services.

The applicable law

The ground is well travelled in this area of the law. The principles governing whether an interim injunction should be granted were laid down by the House of Lords in the leading case of American Cyanamid Company v Ethicon Limited [1975] AC 396 (“American Cyanamid”). The requirements, in brief, are two-fold: That there is a serious question to be tried; and That the balance of convenience lies in favour of granting an injunction.

I shall now turn to examine whether the requirements have been satisfied in the instant case.

Serious question to be tried

The test laid down in American Cyanamid was whether the claimant had a “real prospect of succeeding in his claim for a permanent injunction at the trial” (at p 408). In other words, the claimant has to show that there is a serious issue to be tried. Lord Diplock relevantly said at p 407:

The use of such expressions as “a probability,” “a prima facie case,” or “a strong prima facie case” in the context of the exercise of a discretionary power to grant an interlocutory injunction leads to confusion as to the object sought to be achieved by this form of temporary relief. The court no doubt must be satisfied that the claim is not frivolous or vexatious, in other words, that there is a serious issue to be tried.

[emphasis added]

This limb was expounded upon by A P Rajah J in Hong Kong Vegetable Oil Co Ltd v Wicker and others [1977–1978] SLR(R) 65 at [15]:

Principle 1 “provided that the court is satisfied that there is a serious question to be tried, there is no rule that the party seeking an interlocutory injunction must show a prima facie case”. I interpreted this principle to mean that once the court is satisfied that there is a serious question to be tried then the court is not to follow the previous practice of requiring a plaintiff to show a prima facie case before granting him an interim injunction. Therefore, in the instant case I was of the view that I had first to decide whether there is in fact and in law a serious question to be tried and again in my view implicit in “a serious question to be tried” is the question whether the action is properly conceived and whether all the proper, necessary and/or interested parties are before the court so that any order made by the court can properly and effectively be implemented. In my judgment, if these elements or any of them are not present then, because of non-compliance with this principle alone, the motion should stand dismissed.

The prospects of the plaintiff’s success are to be investigated only to a limited extent: Singapore Civil Procedure 2015 vol I (G P Selvam gen ed) (Sweet and Maxwell, 2015) (“Singapore Civil Procedure 2015”) at para 29/1/12. As is clear from the preceding passages, this is a low threshold and all that has to be seen is whether the plaintiff has prospects of success, which, in substance and reality, exist.

The plaintiff’s case

The plaintiff submitted that there was a serious issue to be tried as there was a prima facie case of trade mark infringement under s 27(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”). Under s 27(1) of the TMA, a person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign which is identical to the trade mark in relation to goods or services which are identical with those for which it is registered.

The plaintiff argued that the defendant has infringed the plaintiff’s trademarks in the course of the “3SIXT” advertising campaign for goods/services that are identical to those protected by the plaintiff’s Word Marks in Class 9 and Class 35. The word “CHALLENGER” appeared in the defendant’s advertisements in upper-case alphabets, similar to how it appears in the Word Marks.

Furthermore, the plaintiff argued that the defendant may not avail itself of the exception contained in s...