Econlite Manufacturing Pte Ltd v Technochem Holdings Pte Ltd and Another

• Jurisdiction: Singapore
• Judgment Date: 03 March 1994
• Date: 03 March 1994
• Docket Number: Suit No 505 of 1991
• Court: High Court (Singapore)

Econlite Manufacturing Pte Ltd

Plaintiff

and

Technochem Holdings Pte Ltd and another

Defendant

[1994] SGHC 56

L P Thean JA

Suit No 505 of 1991

High Court

Trade Marks and Trade Names–Passing off–Trade name–Whether word descriptive of product–Whether likely to cause confusion or deception–Remedies–Action for damages–Whether enquiry as to damages should be ordered where damage suffered not substantial–Whether injunction the principal remedy for quia timet action

The plaintiff, Econlite Manufacturing Pte Ltd (“EMPL”), manufactured and sold lighting equipment and components under the trade name “Econlite” since 1985. Sometime in or around 1990, the first defendant, Technochem Holdings Pte Ltd (“Technochem”), started selling a lighting component called electronic ballast also under the trade name “Econlite”.

EMPL sued Technochem for passing off the latter's electronic ballasts as EMPL's products. Technochem argued that the word “Econlite” was a word descriptive of EMPL's products, and as such there was no passing-off on Technochem's part when it used the same word to describe its products.

Technochem further argued that its sales of electronic ballasts under the trade name “Econlite” were not likely to cause any confusion or deception to the trade or members of the public as its product was essentially a specialist product, totally different from those of EMPL and the latter's clientele were professionals and specialists in the trade who would be able to distinguish Technochem's products from EMPL's products.

Held, allowing the plaintiff's claim against the first defendant:

(1)“Econlite” was not a descriptive word but a combination of a part of the word “economy” or “economics”, namely “econ” and the word “lite” which phonetically sounded like “light”. “Econlite” was a word coined by the plaintiff as a trade name for its products: at [17].

(2) On the evidence adduced, the plaintiff had established its goodwill and reputation in the trade name “Econlite” in relation to its products. Since 1985 or 1986, “Econlite” had also been part of the plaintiff's corporate name and the plaintiff had been selling lighting equipment and other products under that trade name. The plaintiff had extensively advertised and promoted through various means “Econlite” products and propagated the corporate name “Econlite”. Sales of “Econlite” products had also increased over recent years: at [18].

(3) Although the first defendant's electronic ballasts were not in competition with and were dissimilar to the plaintiff's products, its respective products were used in the electric and lighting industries. As such, there was a sufficient overlap in the respective fields of activity of the plaintiff and the first defendant: at [22].

(4) Customers or potential customers would be led to believe that the electronic ballasts bearing the trade name “Econlite” were the plaintiff's products or that the business of the first defendant was in some way connected with that of the plaintiff and based on the evidence adduced by the plaintiff's witness, damage was occasioned to the plaintiff. Such confusion was likely to be caused to those in the electrical trade and other relevant sections of the public: at [20] and [25].

(5) The parties had agreed at the commencement of the hearing that if liability were established, the quantum of damages was to be assessed by the Registrar. Nonetheless, an order that damages be assessed was not made as the amount of damages which would be awarded cannot be significant or meaningful. Apart from the confusion that had been occasioned, there was no evidence that the plaintiff had suffered any substantial or serious loss or damage. As such the prospect of recovering damages of a significant amount was too slight to justify the ordering of an enquiry: at [28] and [31].

(6) After the commencement of the action and service of the injunction, all the electronic ballasts bearing “Econlite” in the possession of the first defendant had been removed, and the first defendant had observed the terms of the injunction. Although the plaintiff claimed damages, this was essentially a quia timet action and the injunction sought was really the principal remedy. Accordingly, a permanent injunction in terms of the claim was granted: at [25] and [31].

Chelsea Man Menswear Ltd v Chelsea Girl Ltd [1987] RPC 189 (folld)

Computervision Corporation v Computer Vision Limited [1975] RPC 171; [1974] FSR 206 (folld)

Draper v Trist and Tristbestos Brake Linings, Ld (1939) 56 RPC 429; [1939] 3 All ER 513 (folld)

Electromobile Company Ld v British Electromobile Company Ld (1907) 25 RPC 149 (distd)

Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155 (folld)

McDonald's Hamburgers Limited v Burgerking (UK) Limited [1987] FSR 112 (distd)

Newsweek Inc v British Broadcasting Corporation [1979] RPC 441 (distd)

Tan Tee Jim and Leonard Goh (Allen & Gledhill) for the plaintiff

Ravindran (Chan & Ravindran) for the defendants.

Judgment reserved.

L P Thean JA

1 The plaintiffs are engaged in the business of manufacturing and selling lighting equipment and components, and since the commencement of their business they have been selling their products or some of them under the trade name “Econlite”. The first defendants have developed a lighting component called electronic ballast and since September 1990 or thereabout have been selling the product also under the trade name “Econlite”. An electronic ballast is a component connected to a fluorescent tube and lights up the tube, and the first defendants' product provides a “ballast” in that it gives a brighter and more stable lighting. In February 1991, the plaintiffs through their agents found that the defendants were selling electronic ballasts under that trade name. On 25 February 1991, they made a purchase of five pieces of the first defendants' electronic ballasts and all of them bore the trade name “Econlite”. They complain that the defendants have passed off their electronic ballasts as products of the plaintiffs.

2 Accordingly, on 13 March 1991, the plaintiffs instituted this action against both the first and second defendants claiming that they have passed off their electronic ballasts as products of the plaintiffs. On the same day, they applied ex parte and obtained an injunction restraining the defendants from selling or offering to sell their products under the trade name “Econlite” and also an Anton Piller order requiring the defendants to allow the plaintiffs' representatives to enter the premises of the defendants to search, inspect, photograph and remove into the custody of the plaintiffs electronic ballasts bearing the name “Econlite” and all invoices, bills and other documents relating to the sale of such products. The orders obtained were served on the defendants, and the Anton Piller order was executed on 18 March 1991 on the defendants' premises at Block 2, Defu Lane, #02-527 and #02-529 and at 5001 Beach Road, #01-58, Golden Mile Complex where the plaintiffs removed all the electronic ballasts bearing the trade name “Econlite” and all documents relating to such products.

3 The action came on for trial before me and on the basis of the pleadings only the following issues arose for determination:

(a) whether the plaintiffs have acquired any goodwill and reputation in the trade name “Econlite” in respect of their products;

(b) if they have, whether the first defendants have passed off the electronic ballasts as and for the plaintiffs' products; and

(c) whether the plaintiffs have acquiesced to the first defendants' use of the name “Econlite” in relation to the latter's electronic ballasts.

4 Inow turn to the evidence adduced by the parties respectively. The managing director of the plaintiffs, Kong Chee Hoong (“Kong”), gave evidence in support of the plaintiffs' claim. His evidence, in so far as relevant, was this. The plaintiff company were incorporated on 28 March 1980 under the name PR Industries Pte Ltd; that name was changed to Econlite Manufacturing Pte Ltd in 1985. The company were formed for the purpose of designing, manufacturing and selling emergency and other lighting equipment and components. They have been using the trade name or mark “Econlite” for their products. Their products have been tested by Singapore Institute of Standards & Industrial Research (“SISIR”). He produced brochures and catalogues of the products made by the plaintiff company and most of these brochures and catalogues have a logo containing the word “Econlite”.

5...