Excelsior Pte Ltd v Excelsior Sport (S) Pte Ltd

• Jurisdiction: Singapore
• Judge: Chua F A J
• Judgment Date: 19 March 1985
• Neutral Citation: [1985] SGHC 6
• Date: 19 March 1985
• Subject Matter: Injunction,Use of particular word in trade name,Trade Marks and Trade Names,Same or similar business activities,'Excelsior' used by plaintiffs for 34 years,Defendants' use of the word,Confusion,Passing off,Damages,Fancy word
• Docket Number: Suit No 991 of 1982
• Published date: 19 September 2003
• Defendant Counsel: Aloysius Leng (Netto Low & Partners)
• Court: High Court (Singapore)
• Plaintiff Counsel: Joseph Grimberg and Loo Choon Hiaw (Drew & Napier)

The plaintiffs, Excelsior Pte Ltd, claim an injunction to restrain the defendants, Excelsior Sport (S) Pte Ltd, from using the word `Excelsior` in the name of the business known as Excelsior Sport (S) Pte Ltd carried on by them in Singapore.

The plaintiff company was incorporated in Singapore on 17 January 1947, and continuously carried on business in Singapore as a supplier of a variety of swimwear, sportswear and other clothing and they trade at No 66, High Street.

The defendant company was incorporated in Singapore on 18 April 1981 and carried on business as a supplier of sportswear and other clothing and they trade at Peninsula Plaza, at the corner of Coleman Street and North Bridge Road.

The plaintiff company has been for about 22 years the sole agents of `Munsingwear`, a popular brand of American sportswear in Singapore and Malaysia.

Some 34 years after the incorporation of the plaintiff company, the plaintiffs found that the defendant company had been set up in Singapore, doing business in essentially the same merchandise, not far away, and with a name that closely resembled the plaintiffs` name.

The plaintiffs say that in the course of their business and for the purpose of identifying and promoting the same, they have made extensive use of the name `Excelsior Pte Ltd`. They further say that the plaintiff company has acquired goodwill and reputation in the name or word `Excelsior` and that members of the public have, during the course of 35 years since the plaintiffs` incorporation, identified the name or word `Excelsior` with that of the undertaking and business of the plaintiff company and for 22 years with the supply by the plaintiff company of `Munsingwear` garments.

In the course of its business and for the purpose of identifying and promoting the same, the defendant company makes use of the name `Excelsior Sport (S) Pte Ltd` The plaintiffs say that the defendant company`s use and continued use of the name `Excelsior` represents and/or holds out to the public in Singapore that its business is associated or connected with the plaintiff company and/or that the defendant company is the duly authorized agent of the plaintiff company. Such representation, or holding out, the plaintiffs say, does, and/or is calculated to annex to the defendant company`s business some part of the goodwill and reputation which has become annexed to the plaintiffs` business in Singapore or to pass off the defendant company`s business as and for the business of the plaintiff company, and has led to the defendant company`s business being confused with the Plaintiff Company`s business and to members of the public acquiring the goods and/or services of the defendant company in the belief that they are the goods and/or services of the plaintiff company.

The plaintiffs say that by reason of the matters aforesaid they have suffered and continue to suffer loss and damage.

We are here not dealing with a case of passing-off in respect of goods, but are concerned with passing-off involving the use of a particular word in a trade name. The law relating to passing-off in relation to goods and to the passing-off of trade names is the same.

It is an actionable wrong for a defendant to represent, for trading purposes, that his goods are those or that his...