Mainfreight (S) Pte Ltd v Mainfreight International Logistics Pte Ltd
| Jurisdiction | Singapore |
| Judgment Date | 15 August 2012 |
| Date | 15 August 2012 |
| Docket Number | Suit No 24 of 2011 |
| Court | High Court (Singapore) |
Judith Prakash J
Suit No 24 of 2011
High Court
Civil Procedure—Pleadings—New entrant not admitting entire paragraph in statement of claim—Whether traverse as set out in defence sufficient
Tort—Passing off—Goodwill—New entrant carrying out freight forwarding business with same trade name as existing freight forwarding company—Whether existing freight forwarding company likely to suffer damage or loss
Tort—Passing off—Goodwill—New entrant carrying out freight forwarding business with same trade name as existing freight forwarding company—Whether existing freight forwarding company possessed goodwill in business before relevant date
Tort—Passing off—Goodwill—New entrant carrying out freight forwarding business with same trade name as existing freight forwarding company—Whether existing freight forwarding company's goodwill was limited to specific trade lanes
Tort—Passing off—Goodwill—New entrant carrying out freight forwarding business with same trade name as existing freight forwarding company—Whether new entrant's use of name or mark amounted to actionable misrepresentation to relevant sector of public
Tort—Passing off—Goodwill—New entrant carrying out freight forwarding business with same trade name as existing freight forwarding company—Whether party entitled to rely on defence of prior/concurrent user
The plaintiff was incorporated in Singapore on 12 November 1988. It provided shipping, freight forwarding and warehousing services to customers in Singapore and overseas.
The defendant was incorporated in Singapore on 20 August 2010. It provided freight forwarding, packing and crating services. The defendant was also a wholly owned subsidiary of Mainfreight Ltd, a company incorporated in New Zealand in 1978 under the name ‘Mainfreight Transport Ltd’. Mainfreight Ltd was a global supply chain logistics provider and had offices, branches and subsidiaries in New Zealand, Australia, the United States and Asia. The defendant referred to Mainfreight Ltd and its subsidiaries and branches as ‘the Mainfreight Group’.
The plaintiff sought injunctive relief to restrain the defendant from passing off by using for the defendant's services the trade name MAINFREIGHT or any other name colourably similar to MAINFREIGHT as the defendant's trade name. It also sought to restrain the defendant from passing off by providing or offering to provide or advertising the defendant's services as the services of the plaintiff or as being connected to the plaintiff by using the trade name MAINFREIGHT. In addition, the plaintiff sought an inquiry as to damages, payment of any damages found due, delivery up of articles bearing the word MAINFREIGHT, and for the defendant to change its name. The plaintiff argued, inter alia, that it had goodwill amongst those in Singapore who did business with the plaintiff, which it argued was a very wide constituency, that the defendant had been or would be misrepresenting itself to the very same sector of the public that the plaintiff dealt with, and that it was sufficient if it could show that there was likelihood of damage.
The defendant did not admit that the plaintiff had valuable goodwill in Singapore save for goodwill in three trade lanes, namely, Singapore - Malaysia, Singapore - Borneo, and Singapore - Myanmar. It also pleaded that the plaintiff did not have exclusive rights to the name MAINFREIGHT in Singapore and that Mainfreight Ltd or the Mainfreight Group was a prior and/or concurrent user of the MAINFREIGHT name and mark (s) in Singapore. The defendant argued that the scope of the plaintiff's goodwill should be limited to the trade lanes it could lay claim to. The defendant also argued that it was not in competition with the plaintiff and had not and would not make any misrepresentations to the plaintiff's customers. In addition, the defendant argued that the plaintiff had not produced any evidence of actual damage.
While both parties agreed that the relevant time at which goodwill was to be determined was the date at which the defendant commenced the activities complained of, they differed in their identification of the actual date.
Lastly, in relation to the issue of pleadings, the plaintiff argued that the defendant's contention that the plaintiff's goodwill was limited to the three trade lanes was a contention that was arbitrary and one that was never pleaded.
Held, allowing the claim:
(1) The relevant time at which goodwill was to be determined was the date at which the defendant commenced the activities complained of. In the present case, the relevant date for determining whether the plaintiff had established any goodwill was when the defendant actually commenced business: at [10] and [14].
(2) The effect of the traverse was to compel the party making the allegation to prove it. The traverse as set out in the defence was sufficient as far as the defendant's pleadings were concerned. The defendant was entitled to put the plaintiff to proof of its assertion and was not required to indicate that it accepted a limited goodwill: at [27].
(3) Goodwill was not an all or nothing attribute, and could be limited to particular sections of the public. These sections could be small so long as they were not negligible. In the present case, the plaintiff had goodwill among a section of the public in Singapore which was a small section but not a negligible one. It was the section of the public that dealt with shipping goods out of Singapore, shipping goods through Singapore and receiving and distributing goods which had been shipped to Singapore from abroad. The plaintiff enjoyed goodwill with customers in the freight forwarding, logistics and shipping industries in Singapore: at [42] and [43].
(4) The plaintiff's goodwill was not limited to the specific trade lanes of Singapore-Malaysia, Singapore-Borneo, and Singapore-Myanmar as contended by the defendant. The plaintiff had goodwill in various other trade lanes as well: at [43] and [44].
(5) There was potential for misrepresentation by the defendant to the relevant sector of the public. Here, the defendant was more than a simple destination agent for the Mainfreight Group. It was capable of and prepared to do all sorts of freight forwarding business, bringing it into competition with the plaintiff in the plaintiff's area of activity: at [51] and [52].
(6) The evidence of confusion that was given was sufficient for the inference to be made that the defendant had misrepresented itself to people having goodwill to the plaintiff. Actual confusion was established: at [66] and [67].
(7) There was also a likelihood of confusion given that both parties used MAINFREIGHT as their business name: at [67].
(8) The claimant did not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage was sufficient. Here, an inference was drawn from the facts that there was every likelihood of damage to the plaintiff if the defendant continued trading in Singapore under the trade name MAINFREIGHT: at [68] and [74].
(9) If a party proved that it was a concurrent user of a trade mark, the court might have denied the plaintiff's claim for passing off. Here, the defendant recognised that it itself had no concurrent goodwill because it was only established in 2010: at [75].
(10) As to the submission that the defendant was entitled to rely on the goodwill established by its holding company and/or the Mainfreight Group, the only company that had used the name MAINFREIGHT for as long as the plaintiff was Mainfreight NZ. The defendant had not established that Mainfreight NZ (another company in the Mainfreight Group) had enough customers in Singapore to generate more than a negligible goodwill during the period in question bearing in mind that all that time the plaintiff was in business and using the MAINFREIGHT name among the relevant sector of the public: at [75], [84] and [95].
Anheuser-Busch Inc v Budejovicky Budvar NP [1984] FSR 413 (refd)
Caterpillar Inc v Ong Eng Peng [2006] 2 SLR (R) 669; [2006] 2 SLR 669 (refd)
CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR (R) 975; [1998] 2 SLR 550 (folld)
Future Enterprises Pte Ltd v Tong Seng Produce Pte Ltd [1997] 3 SLR (R) 797; [1998] 1 SLR 1012 (refd)
Hart v Relentless Records Ltd [2003] FSR 36 (refd)
HFC Bank plc v Midland Bank plc [2000] FSR 176 (refd)
Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] Bus LR 1465; [2010] RPC 16 (refd)
Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR (R) 216; [2009] 3 SLR 216 (folld)
QB Net Co Ltd v Earnson Management (S) Pte Ltd [2007] 1 SLR (R) 1; [2007] 1 SLR 1 (refd)
G Radakrishnan and Prithipal Singh s/o Seva Singh (Infinitus Law Corporation) for the plaintiff
Gill Dedar Singh (instructed) and Regina Quek (One Legal LLC) for the defendant.
Judgment reserved.
Judith Prakash JIntroduction
1 This case involves an action by the plaintiff against the defendant for passing off of the trade name and service mark MAINFREIGHT.
2 The plaintiff, Mainfreight (S) Pte Ltd, was incorporated in Singapore on 12 November 1988. At the time of trial, it had been in business for 22 years. It provides shipping, freight forwarding, and warehousing services to customers in Singapore and overseas. According to the plaintiff, it brings in and delivers goods to consignees and importers in Singapore. It also collects and ships out goods for consignors and exporters in Singapore. It argued that its business is international and spans many countries.
3 The defendant, Mainfreight International Logistics Pte Ltd, was incorporated in Singapore on 20 August 2010. It provides freight forwarding, packing and crating services.
4 The defendant is a wholly owned subsidiary of Mainfreight Ltd, a company incorporated in New Zealand in 1978 under the name...
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