Doctor's Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE)
Judge | Judith Prakash J |
Judgment Date | 18 April 2012 |
Neutral Citation | [2012] SGHC 84 |
Defendant Counsel | Engelin Teh SC and Thomas Sim (Engeline Teh Practice LLC) |
Docket Number | Originating Summons No 462 of 2010 |
Plaintiff Counsel | Max Ng and David Wu (Gateway Law Corporation) |
Hearing Date | 27 October 2011,04 October 2011,05 October 2011 |
Subject Matter | Passing Off,Goodwill,Trademarks,Tort,Infringement,Well known marks,Defence of prior use |
Court | High Court (Singapore) |
Published date | 27 April 2012 |
This action was commenced by Doctor’s Associates Inc (“the plaintiff”) against Lim Eng Wah (“the defendant”) for trademark infringement under the Trade Marks Act (Cap 332, 2000 Rev Ed) (the “Act”) and passing off of the former’s registered “SUBWAY” trademarks through the latter’s use of the “SUBWAY niche” sign.
Parties to the dispute The plaintiff is an American corporation with its head office in Florida and owns and operates the franchise for the popular sandwich chain named “SUBWAY”. Through a series of license agreements, the plaintiff licensed a Netherlands company named Subway International B.V. to act as the franchisor of SUBWAY in countries outside the United States. The plaintiff opened its first Italian sandwich or “submarine” sandwich store in 1965 in the United States under the name “Pete’s Super Submarine” and in 1967 amended its name to “SUBWAY”. The first franchised SUBWAY outlet opened in Connecticut in 1974. The first SUBWAY outlet in Singapore opened in 1996. At present, there are 34,891 stores in 98 countries which operate under the SUBWAY mark; in particular, there are 92 SUBWAY outlets in Singapore. Each SUBWAY outlet sells,
The plaintiff is the registered proprietor of the “SUBWAY” word mark (“the SUBWAY mark”) in relation to the following classes in Singapore:
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The infringement complained of is in relation to the SUBWAY marks registered under classes 30 (T8903282C) and 30 (T0511829B)
The defendant operates a chain of stalls in Singapore under the name “Subway niche” which sell nonya kueh, bubble tea and other local snacks. The defendant first applied the alleged offending “SUBWAY NICHE” sign in relation to the sale of local snacks in 1987 at an outlet in Wisma Atria. The first Subway niche outlet opened in Singapore two years before the defendant registered its first two SUBWAY marks and nine years before the first SUBWAY outlet opened in Singapore. As at 15 December 2009, there were eight Subway niche outlets in Singapore – one of which was a restaurant-style cafe with seating facilities.
Background to the disputeThe defendant applied two versions of the Subway niche sign to the sale of its goods: first, the word mark “SUBWAY NICHE” (in various stylised forms) and second, a circular mark featuring the phrase “Subway niche”. The offending marks are reproduced below for convenience:
On 29 October 2007, the plaintiff sent the defendant a “cease and desist” letter which alleged that the defendant’s use of the offending mark constituted infringement of the plaintiff’s rights. In response, the defendant rejected the plaintiff’s demands and denied having infringed the plaintiff’s trade mark rights. The plaintiff began legal proceedings on 17 October 2008 but this action was struck off on 14 September 2009 due to the plaintiff’s failure to comply with an unless order to furnish S$19,000 as security for the defendant’s costs.
The present action was started on 12 May 2010. By the originating summons filed herein, the plaintiff asked for the following reliefs:
The defendant resisted the proceedings and several affidavits were filed by both sides. Thereafter, an application was made by the plaintiff to cross-examine the defendant and his employees, Mdm Chen Kim Eng (“Mdm Chen”) and Mdm Ong Fei Yan (“Mdm Ong”) on issues of fact that were raised in the defendant’s fifth affidavit and Mdms Ong and Chen’s respective affidavits. This application was granted by the Assistant Registrar. Although there was some very minor dispute about the scope of the cross-examination, essentially, it centred on one issue of fact: when the defendant began selling sandwiches under the SUBWAY NICHE mark. It is the plaintiff’s case that the defendant only started selling sandwiches in 2001 (
The plaintiff founds its claim for trademark infringement under s 27(2)(b) and s 27(3) of the Act. It also avers that the defendant is liable under the tort of passing off. The defendant’s position is that the requirements mandated by ss 27(2)(b) and 27(3) have not been made out. Further, he asserts that he has a complete defence under s 28(2) of the Act. As for the tort of passing off, the defendant avers that this has not been made out and in any case he has a positive defence of antecedent/concurrent user. The defendant also contends that the plaintiff is estopped from receiving the relief sought or any relief at all by reason of either the doctrine of laches or estoppel by acquiescence.
Issues before this Court There are three issues that fall for consideration:
Section s 27(2)(b) of the Act provides:
Acts amounting to infringement of registered trade mark 27. —(1)
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Following
First, the alleged offending...
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