Jordache Enterprises Inc v Millennium Pte Ltd

• Jurisdiction: Singapore
• Judge: L P Thean J
• Judgment Date: 10 January 1985
• Neutral Citation: [1985] SGHC 3
• Docket Number: Suit No 5430 of 1982
• Date: 10 January 1985
• Year: 1985
• Published date: 19 September 2003
• Plaintiff Counsel: Harry Elias (Drew & Napier)
• Citation: [1985] SGHC 3
• Defendant Counsel: Sia Moon Joon (Chor Pee & Co)
• Court: High Court (Singapore)
• Subject Matter: Get-up,Infringement,Whether get-up distinctive to plaintiff's goods,Passing off,Injunction,Get-up so similar to plaintiff's goods as to cause deception or confusion,Trade Marks and Trade Names

The plaintiffs, a corporation established in the State of New York, United States of America, are registered proprietors of a trade mark, `Jordache`, in Class 25 in respect of, inter alia, men`s and women`s jeans. The trade mark was registered in Singapore on 3 October 1979 and at that time jeans bearing that trade mark had already become a well known brand in the United States of America. It was, however, not used by the plaintiffs in Singapore until November 1982. On 10 May 1982, the plaintiffs entered into an agreement with FJ Benjamin & Sons (Pte) Ltd (FJB) appointing the latter as the sole agent for distribution and sale of jeans bearing the trade mark, `Jordache`, in Singapore. Arrangements were then made to launch their products on the market. FJB showed the said trade mark (and presumably the plaintiffs` jeans) to dealers in Singapore in September 1982 and obtained `free bookings` from departmental stores and jeaneries for the plaintiffs` jeans. The term `free booking` is understood in the jean trade to mean a commitment by dealers to purchase jeans for sales in consideration of the manufacturer agreeing to support such sales by advertisements. The first advertisement of Jordache jeans appeared in the local newspaper, the Straits Times

, on 17 August 1982. That, however, was only an advertisement for appointments of a product manager and sales representative in FJB and the actual advertisement of Jordache jeans appeared in the issue of the Straits Times on 18 November 1982. FJB started delivery of Jordache jeans to their dealers in November 1982; the first sale of jeans bearing the `Jordache` trade mark by FJB in Singapore was made on 18 November 1982.

Rather curiously, at or about the time when the plaintiffs were finalizing their agreement with FJB and making preparation for a launch of their jeans, the defendants, a company incorporated in Singapore, were also preparing to launch on the market, their jeans bearing the trade mark, `Jordane`. Originally, they planned to launch their jeans in time for the Hari Raya which was on 22 July 1982. Having failed to do so they made preparation for a launch just before Christmas or around that time. They arranged for mobiles bearing the trade mark, `Jordane`, to be prepared and these were placed in certain shops in August or September 1982 and the light boxes exhibiting such trade mark for installation in shops selling Jordane jeans were ready in October or November 1982. The first advertisement of Jordane jeans appeared over the television on 14 November 1982, though at that time, such jeans were not available in the market; the jeans came on to the market only on 18 November 1982.

Upon discovering that the defendants had used the trade mark, `Jordane`, in respect of jeans, the plaintiffs immediately took out a writ against the defendants on 14 December 1982. The plaintiffs claim that the defendants` trade mark so nearly resembles the plaintiffs` trade mark as to be likely to deceive or cause confusion in the course of trade in relation to jeans and further, or in the alternative, that the trade mark, `Jordane`, is nearly identical to and closely resembles the distinctive trade mark, `Jordache`, and the use of it by the defendants is likely to deceive and is intended and calculated to deceive the trade and the public into believing that the defendants` jeans are those of the plaintiffs and by using their trade mark, `Jordane`, the defendants are passing off the defendants` jeans as and for the plaintiffs` jeans or as having some connections with the plaintiffs` jeans. Both these claims are resisted by the defendants. There are therefore two issues before me, namely:

(a) First, whether the defendants by their use of their trade mark, `Jordane`, have infringed the plaintiffs` registered trade mark, `Jordache`.

(b) Secondly, whether the defendants` trade mark is so identical to and so closely resembles the plaintiffs` trade mark that by the use thereof the defendants have passed off and enabled others to pass off their jeans as and for the jeans of the plaintiffs or as having some connections with the plaintiffs` jeans.

DW 1, the Managing Director of the defendants, said that he conceived the trade mark, `Jordane`, after one or two trips to the Middle East and particularly to the country Jordan in 1981. He was impressed by that country and the name. He therefore decided to adopt the name Jordan but was advised that the name of a country could not be registered as a trade mark. Hence he gave it a slight variation by adding an alphabet `e` at the end thereof. At that time he was also advised that there might be possible objection from owners of the trade marks `Charles Jourdan` and `Pierre Jourdan`. He was further advised to try to have the trade mark `Jordane` with a logo registered in London, and as it would take a long time to obtain an answer on the results of such...