Clairol Incorporated v Too Dit Company

• Jurisdiction: Singapore
• Judgment Date: 06 February 1980
• Date: 06 February 1980
• Docket Number: Suit No 2851 of 1976
• Court: High Court (Singapore)

Clairol Inc

Plaintiff

and

Too Dit Co

Defendant

[1980] SGHC 6

T S Sinnathuray J

Suit No 2851 of 1976

High Court

Tort–Passing off–Goodwill–Bottles of shampoo–Whether plaintiff's get-up can be known to public as distinctive to plaintiff

The plaintiff, a company incorporated in the United States of America, was the manufacturer of a herbal essence shampoo under the trade name “Clairol”. It has been marketing Clairol in Singapore through its sister company, Bristol-Myers (Singapore) Pte Ltd, since November 1972.

The defendant is a sole proprietorship, which Ho registered under the Business Names Act in 1973. It manufactures shampoo under a trade name “Backer” and a trade mark which Ho registered, in his own name, under the Trade Marks Act as early as 1963. In 1976 the defendant went into the business of herbal essence shampoo. The shampoo was sold in bottles with green caps which were of the same size and shape as the plaintiff's bottles. The label on the defendant's bottle was similar in form and colour to the label on the plaintiff's bottle, except that the trade name on the bottle was “Backer”. Instead of a young girl in a pool of water, the defendant's label had the trade mark, a yellow circle and in it the device of a bent arm holding an arrow.

The plaintiff objected to the get-up of the defendant's product and claimed against the defendant for passing off and infringement of copyright.

Held, dismissing the plaintiff's claim:

(1) The plaintiff's goods had been put comparatively recently on the market in its present get-up. This was not the case where a peculiar get-up of goods had been for a long time, for many years, on the market so as to become identified in the course of time with the plaintiff's goods and with no others, so that that get-up almost of necessity was identified in the market or amongst the public as representing the plaintiff's goods: at [8] and [9].

(2) There was nothing distinctive or novel about the plaintiff's get-up and it had no case whatever as regards the bottles or the caps: at [10] and [11].

(3) In considering the labels, the two ingredients which the plaintiff had to prove, of reputation and deception or confusion become inseparable. In the present case, the two labels unquestionably did not resemble each other. The sole proprietor of the defendant has used the registered trade mark nine years before the plaintiff came into the market. The defendant was properly entitled to use its trade name and trade mark. The plaintiff had not made out a case of reputation in the get-up of its product: at [11] and [15].

(4) There was also no deception or confusion to the public between the plaintiff's and the defendant's products, to the prejudice of the plaintiff: at [18].

Asian Organization Ltd v White Hudson & Co [1962] MLJ 139 (refd)

Boh Plantations Sdn Bhd v Gui Nee Chuan [1975] 2 MLJ 213 (refd)

JB Williams Company v H Bronnley & Co Ld (1909) 26 RPC 765 (folld)

Payton & Co Ld v Snelling, Lampard & Co Ld (1900) 17 RPC 48; [1901] AC 308 (refd)

Payton & Co Ld v Titus Ward & Co Ld (1900) 17 RPC 58 (refd)

White Hudson & Co v Asian Organization Ltd [1965] 1 MLJ 186 (refd)

C A Remedios (Donaldson & Burkinshaw) for the plaintiff

Quek Kai Kok (Quek Kai Kok) for the defendant.

T S Sinnathuray J

1 In this passing-off action and for infringement of copyright, the plaintiffs, Clairol Incorporated, a company incorporated in the United States of America, are manufacturers of a herbal essence shampoo under the trade name “Clairol”. Since November 1972, through their sister company, Bristol-Myers (Singapore) Pte Ltd, they have been marketing Clairol in Singapore.

2 The shampoo is packed in transparent plastic bottles of different sizes and has three different formulations which are distinguished by different caps on the bottles. The colours of the caps are white, green or yellow. The “Exh P157” tendered in court is a bottle, one of the three sizes, with a green cap.

3 The bottles have white labels, and the one on the bottle, P157, has a green border. From the photographs in the agreed bundle, it is seen that the colours of the borders of labels differ for the different formulations. The trade name “Clairol” is on the label, and there are descriptive words on it. On the label also is a trade mark, a graphic design of a young woman in a pool surrounded by green leaves and coloured flowers.

4 The defendant, Too Dit Co, is a sole proprietorship. Ho Yen Sen registered it under the Business Names Act in 1973. It manufactures shampoo under a trade name “Backer” and a trade mark which Ho Yen Sen registered, in his own name, under the Trade Marks Act as early as 1963. In 1976 the defendant went into herbal essence shampoo. The shampoo is sold in...