Jumbo Seafood Pte Ltd and Another v Hong Kong Jumbo Seafood Restaurant Pte Ltd

• Jurisdiction: Singapore
• Judge: Goh Joon Seng J
• Judgment Date: 05 December 1997
• Neutral Citation: [1997] SGHC 328
• Docket Number: Suit No 1992 of 1996
• Date: 05 December 1997
• Published date: 19 September 2003
• Year: 1997
• Plaintiff Counsel: Dedar Singh Gill and Steven Seah (Drew & Napier)
• Citation: [1997] SGHC 328
• Defendant Counsel: G Radakrishnan (Heng & Rada)
• Court: High Court (Singapore)
• Subject Matter: Use of name "Jumbo" in plaintiffs' restaurants,Whether "Jumbo" descriptive or fancy word,Admissibility,Name of business,Whether plaintiffs had acquired goodwill and reputation in use of name "Jumbo" on relevant date,Evidence of public opinion,Whether defendant associated with Hong Kong restaurant -,Relevant date for determining acquisition of goodwill and reputation,Tort,Damage caused by confusion,Survey report,Whether defendant's use of name "Jumbo" caused and would continue to cause confusion,Whether survey report admissible without attendance of persons interviewed,Date of commencement of conduct complained of,Whether defendant suffered damage as a result of confusion,Passing off,Whether evidence of confusion caused,Whether "Jumbo" fancy word distinctive of plaintiffs' restaurants,Whether admission in violation of hearsay rule,Whether likelihood of damage due to confusion sufficient for passing off action,Whether likelihood of confusion sufficient,Evidence,Distinctiveness more easily acquired for fancy words,Confusion,Goodwill,Whether necessary to show intention to cause confusion or deceive in passing off action

Judgment:

GOH JOON SENG J

The first plaintiff is a company incorporated in Singapore on 7 August 1985 under the name `Golden Beach Seafood Restaurant (Lagoon) Pte Ltd`. The name was changed to `Mermaid Beach Seafood (Laguna) Pte Ltd` on 1 October 1985. When the present shareholders acquired the company, the name was changed to `Jumbo Seafood Pte Ltd` on 20 November 1987.

2.The second plaintiff is a company incorporated in Singapore on 24 May 1994. The first plaintiff holds substantial interest as a shareholder of the second plaintiff.

3.Jumbo Garden Restaurant Pte Ltd was a company incorporated in Singapore on 10 June 1985 under the name `Executive Development Programme Pte Ltd`. When the first plaintiff acquired a substantial interest in the company, it changed its name to `Jumbo Garden Restaurant Pte Ltd` (Jumbo Garden) on 17 May 1993. It was wound up on 27 September 1996. More will be said later on its winding-up.

4.The plaintiffs are in the seafood restaurant business. So was Jumbo Garden.

5.The first plaintiff carries on business at 1206 East Coast Parkway #01-08 UDMC Seafood Centre. The second plaintiff carries on business at the Serangoon Gardens Country Club, No 22 Kensington Park Road. Jumbo Garden operated at the East Coast Recreation Centre at 1000 East Coast Parkway, a distance of some two to three kilometres from the East Coast Parkway UDMC Seafood Centre.

6.The turnover of the first plaintiff for the period October 1987 to September 1996 was:

October 1987 - September 1988	1,723,805
October 1988 - September 1989	2,401,909
October 1989 - September 1990	3,185,278
October 1990 - September 1991	3,916,412
October 1991 - September 1992	5,177,869
October 1992 - September 1993	5,392,600
October 1993 - September 1994	6,005,187
October 1994 - September 1995	7,279,128
October 1995 - September 1996	8,693,872
Total	43, 776,060

7.The turnover of the second plaintiff for the period December 1994 to September 1996 was:

December 1994 - September 1995	3,192,757
October 1995 - September 1996	5,165,112
Total	8,357,869

8.The turnover of Jumbo Garden for the period May 1993 to September 1995 was:

May 1993 - September 1993	610,910
October 1993 - September 1994	3,210,081
October 1994 - September 1995	4,203,147
Total	8,024,138

9.The advertising expenditure of the first plaintiff for the period October 1987 to September 1996 was:

October 1987 - September 1988	39,536
October 1988 - September 1989	48,387
October 1989 - September 1990	46,012
October 1990 - September 1991	44,034
October 1991 - September 1992	35,580
October 1992 - September 1993	36,984
October 1993 - September 1994	50,306
October 1994 - September 1995	104,349
October 1995 - September 1996	106,791
Total	514,979

10.The advertising expenditure of the second plaintiff for the period December 1994 to September 1996 was:

December 1994 - September 1995	114,026
October 1995 - September 1996	118,896
Total	232,922

11.The advertising expenditure of Jumbo Garden for the period May 1993 to September 1995 was:

May 1993 - September 1993	43,217
October 1993 - September 1994	121,623
October 1994 - September 1995	119,767
Total	284,607

12.Often the plaintiffs and Jumbo Garden advertised jointly and promoted themselves as a group. The advertisements were in the English and Chinese press, and by way of calendars, red packets, vehicle stickers, name cards and VIP cards.

13.Jumbo Garden was a tenant of the East Coast Recreation Centre Pte Ltd (ECRC) paying $25,000 rent per month and occupying a land area of 1,189.16m2 out of a total land area of 21,516.10m2 leased to ECRC at $14,821.28 rent per month by the Land Office. When the Land Office revised the rent payable by ECRC by 5.6 times to $83,000 per month or $996,000 per annum, ECRC revised the rent payable by Jumbo Garden also by 5.6 times to $140,000 per month or $1,680,000 per annum.

14.Jumbo Garden found it commercially not viable to continue business with the revised rent. It refused to pay the revised rent and was eventually wound up by ECRC on 27 September 1996.

15.The majority shareholders of ECRC are related to or are members of the Grande group of companies of Hong Kong.

16.On 28 May 1996, the defendant was incorporated in Singapore. It is a wholly owned subsidiary of the Grande Entertainment Group Pte Ltd which was incorporated in Singapore on 27 January 1995. The latter is a member of the Grande group of companies of Hong Kong. The Grande group is ultimately owned by the Grande Holdings Ltd of Hong Kong.

17.On 18 October 1996, the defendant`s restaurant commenced business under the name `Hong Kong Jumbo Seafood Restaurant` at the same premises previously occupied by Jumbo Garden.

18.On 4 November 1996, the plaintiffs commenced these passing off proceedings for an injunction to restrain the defendant from using the name `Hong Kong Jumbo Seafood Restaurant Pte Ltd` and for damages. They then applied for an interim injunction. The application went before S Rajendran J who ordered an early trial in lieu of an interim injunction.

19.The proceedings came before me for hearing, at the end of which, I found for the plaintiffs and granted the injunction applied for, restraining the defendant, its servants or agents, from using the name `Jumbo` with a stay for 60 days to allow the defendant to change its name. I also ordered an enquiry to be held before the registrar to ascertain damages. The plaintiffs were also awarded costs. Thee defendant has appealed against my decision. I now give my reasons.

20.The defence principally contended that: (i) the plaintiffs are not entitled to the reliefs claimed because the plaintiffs did not enjoy any goodwill or reputation in the name `Jumbo`; (ii) the word `Jumbo` is descriptive for which no monopoly could be claimed; and (iii) the plaintiffs appropriated the name `Jumbo` from the internationally renowned Jumbo Floating Restaurant of Hong Kong, with which the defendant is associated, and its use of the name `Jumbo` is with the consent of the owners of the Jumbo Floating Restaurant of Hong Kong.

21.On what constitutes goodwill, Lord Macnaghten in Inland Revenue Commissioners v Muller & Co`s Margarine Ltd [1901] AC 217 at pp 223-224 stated:

What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start.

22.The relevant date to determine whether a plaintiff has acquired the necessary goodwill or reputation is the date of commencement of the conduct complained of. See Cadbury Schweppes Pty Ltd & Ors v Pub Squash Co Pty Ltd [1981] 1 All ER 213 at p 221 where Lord Scarman stated:

The judge, it is conceded, misdirected himself in holding that the relevant date for determining whether a plaintiff has established the necessary goodwill or reputation of his product is the date of the commencement of the proceedings (ie 1 June 1977). The relevant date is, in law, the date of the commencement of the conduct complained of, ie 8 April 1975, when the respondent began to market `Pub Squash`.

23.Applying the dicta of Lord Scarman the relevant date at which to determine if the plaintiffs have the goodwill and/or reputation to entitle them to an order restraining the defendant from using the name `Jumbo` is 18 October 1996.

24.By that date, the first plaintiff had been operating its restaurant under the name `Jumbo Seafood Pte Ltd` for about nine years and the second plaintiff under the name `Jumbo Serangoon Restaurant Pte Ltd` for about two years and five months. Jumbo Garden had operated for about two years and seven months. An awareness level survey conducted by Frank Small & Associates between 20 and 27 December 1996 showed that 46% out of 300 persons interviewed had heard of Jumbo Seafood, 19% had heard of Jumbo Serangoon Restaurant, 52% of those who were aware of Jumbo Seafood knew that it is situated somewhere in East Coast. 48% of those who were aware of Jumbo Serangoon Restaurant knew that it is in the Serangoon Gardens Country Club or in Serangoon.

25.The results of this awareness level survey are supported by the turnover of the Jumbo group. From date of commencement of its business to September 1996, the first plaintiff had a turnover of $43,700,000, and the second plaintiff $8,357,869. In the case of Jumbo Garden for the period May 1993 to September 1995, it had a turnover of $8,024,138. All in, the group had a total turnover of over $60,000,000. It had expended about $1,000,000 on advertising and had received favourable write ups in the media on the quality of its seafood. I was therefore of the view that the plaintiffs had acquired, individually and as a group, the goodwill and reputation in the name `Jumbo` in relation to their seafood restaurants in Singapore as of 18 October 1996 when the defendant`s restaurant opened for business.

26.Is `Jumbo` a descriptive or fancy word? While `Jumbo` means `large` or `big` like `jumbo jet`, it is not synonymous with `large` or `big`. For example, one does not describe a large lake as a `jumbo lake`. So, also one does not describe a big restaurant as a `jumbo restaurant`. On whether a word is fancy or descriptive, see Pontiac Marina Pte Ltd v CDL Hotels International Ltd [1997] 3 SLR 726 at p 741 where Chao Hick Tin J stated:

A fancy word is one which has no obvious relevance to the character or quality of the goods or business in relation to which it is used. Of course whether a word is fancy or descriptive may depend on how it is used. Whether a word is termed descriptive or fancy, the significance lies in the fact that distinctiveness is very much more easily acquired for fancy words. Whatever it is, at the end of the day, the crucial question is still this, and I can do no better than quote Wadlow on the Law of Passing Off (at p 392):

`However, the decision to categorise a word as fancy or descriptive is only one

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