Momentum Creations Pte Ltd v Tan Eng Koon trading as De Angeli

• Jurisdiction: Singapore
• Judge: Woo Bih Li JC
• Judgment Date: 20 June 2001
• Neutral Citation: [2001] SGHC 142
• Docket Number: Suit No 787 of 2000
• Date: 20 June 2001
• Published date: 19 September 2003
• Year: 2001
• Plaintiff Counsel: Samuel Chacko (Colin Ng & Partners)
• Citation: [2001] SGHC 142
• Defendant Counsel: Foo Soon Yien (Arthur Loke Bernard Rada & Lee)
• Court: High Court (Singapore)
• Subject Matter: Whether plaintiffs have goodwill in brand name and names of items of furniture,Requirements to establish an action in passing off,Passing off,Goodwill,Whether exclusivity in trade name or monopoly of design a requirement,Tort

Judgment

GROUNDS OF DECISION

BACKGROUND

1. The Plaintiffs’ claim was essentially that the Defendant had sold and passed off four items of furniture as and for the Plaintiffs’ furniture.

2. On 29 May 2001, after trial, I granted judgment against the Defendant. On 8 June 2001, the Defendant filed a Notice of Appeal against my decision.

FACTS AND ALLEGATIONS

3. The Plaintiffs Momentum Creations Pte Ltd (‘Momentum Creations’) were incorporated on 18 March 1999 and are in the business of manufacturing and selling furniture. Momentum Creations is a company which is a subsidiary of Nobel Design Holdings Ltd, a public listed company, and has showrooms at 6 Raffles Boulevard #03-128, Marina Square, Singapore and also at 290 Orchard Road #04-03/04, Paragon, Singapore.

4. Momentum Creations said that, since incorporation, they have been extensively advertising for sale furniture bearing the OM mark. This is a logo in which the OM name is part of the logo. However, the OM name is also used and referred to separately from the logo.

5. The advertisements were placed in magazines and newspapers and were also in the form of brochures and leaflets.

6. I used August 2000 as the cut-off date for the purpose of considering the extent of the advertisements as that was the month which Momentum Creations said they had received complaints.

7. The details of the advertisements in magazines and newspapers as at August 2000 were:

	Publication	Magazines Dates	Circulation
(a)	Home & Dcor Inspirational Home	July 1999	10,000
(b)	Space	October / November 1999	unknown
(c)	Home Concepts	March / April 2000	30,000
(d)	Home Concepts	July / August 2000	30,000
		Newspapers
(a)	The Straits Times	5 August 1999
(b)	The Straits Times	15 October 1999
(c)	The Straits Times	18 November 1999
(d)	The Straits Times	19 December 1999
(e)	The Straits Times	25 February 2000
(f)	The Straits Times	3 March 2000
(g)	The Straits Times	7 April 2000
(h)	The Straits Times	19 May 2000
(i)	The Straits Times	20 May 2000
(j)	The Straits Times	1 July 2000
(k)	The Straits Times	21 July 2000
(l)	The Straits Times	25 August 2000

8. The details of the brochures and leaflets produced as at August 2000 were:

	Exhibit No.	Number Produced	Date
(a)	P8 (leaflet)	3,000	29 June 2000
(b)	P9 (leaflet)	7,000	30 June 2000
(c)	P10 (brochure)	-	20 February 2001
(d)	P11 (brochure)	1,000	24 July 2000
(e)	P28 (leaflet)	-	In or before August 2000

9. Exhibits P8, P9 and P28 were the leaflets found in the folders used by the sales representatives of the Defendant Mr Tan Eng Koon (NE 144 line 10 to 18). The various persons who had referred to them during conversations and in their evidence had described these leaflets as brochures.

10. Momentum Creations also participated in furniture fairs and exhibitions.

11. According to Mr Lam Chee Wai, the Retail Manager of Momentum Creations, they had incurred at least $239,000 for their advertisements since 1999 up to the date of his Affidavit of Evidence-in-Chief (‘AEIC’) filed 19 February 2001. This sum was not just for the cost of the advertisements but included other expenses like photography fees and graphics. It appeared to me that most of the expenses were incurred from March 1999 to August 2000.

12. The amount spent by Momentum Creations on furniture fairs and exhibitions since 1999 up to the date of his AEIC filed 19 February 2001 was at least $164,000. Again it appeared to me that most of these expenses were incurred from June 1999 to August 2000.

13. On 7 October 2000, Momentum Creations filed a trade-mark application in respect of the OM mark with the Intellectual Property Office of Singapore.

14. Momentum Creations also gave names to individual items of furniture which they sold under the OM mark.

15. The case before me involves four items of furniture which were sold by them under the following names:

	Item	Name
(a)	An L-shape sofa	‘Case’
(b)	Another L-shape sofa of a different design	‘Globe’
(c)	A sideboard	‘Catena’
(d)	A coffee table	‘Graves’

There is no application to register these four names as part of trade-marks.

16. The advertisements and the leaflets did not feature the same four items of furniture all the time.

17. The Defendant Mr Tan Eng Koon has been in the furniture business since 11 March 1991 under the name of St Louis Furniture and since 1 November 1995 under the name of De Angeli i.e even before Momentum Creations was incorporated.

18. I will refer to the Defendant as Mr Tan or De Angeli. I would add that the main evidence for him came from his wife Mdm Tang Lee Lee.

19. She claimed to be the sales manager for De Angeli and to be in charge of the day to day running of the business and dealings with the manufacturers and salesgirls. She also claimed that her knowledge of the business was more extensive than Mr Tan’s.

20. Mr Tan has a showroom at Block 201 Henderson Road #02-01 NTUC Income Henderson Industrial, Singapore and also at 1 Maritime Square #00-61, World Trade Centre, Singapore.

21. Mr Tan also participates in furniture fairs and exhibitions.

22. Among the items of furniture sold by De Angeli were four items which were the subject of the action before me, i.e two L-shape sofas, a sideboard and a coffee table.

23. Each of these items was visually strikingly similar to the items sold by Momentum Creations.

24. According to Mr Lam, the unique features were:

‘Q What are unique features of Case, Globe, Catena and Graves?

A ….

For Globe it is 3 modular, you can have it as one or two. The fabric is detachable. The legs are stainless steel. The sitting cushions use high density foam. The back cushions we use fibre fill and not cotton.

For Case sofa, fabric is detachable. The sitting cushions are high density foam. The legs are stainless steel. The back cushions are fibre fill. There are at least 2 locks to lock the modules.

For Graves, we use stainless steel for the legs. The top uses medium density fibre board and not chip board.

For Catena, we use medium density fibre board and not chip board. There is a variety of 3 colours. The legs, the handle, the sliding door are made of stainless steel. It is full veneer wood.’

(see NE 73 line 10 to line 22)

25. On the other hand, the evidence of Mdm Tang was that the greatest difference between the De Angeli sofa and the OM ‘Case’ sofa was in the measurement although she did not know the measurement of the OM ‘Case’ sofa.

August 2000 - Mr Raymond Cheong

26. Mr Lam of Momentum Creations said that in August 2000 he received two complaints.

27. One was from a Mr Raymond Cheong who said that at an exhibition held at the Singapore Expo, a De Angeli’s sales representative had furnished him with catalogues and brochures and represented to him that De Angeli is the distributor of the brand of sofas known as OM. Representations were also made to Mr Cheong to the effect that De Angeli is a wholesaler and was able to offer sofas at much lower prices and of better quality (see Mr Lam’s AEIC at paras 13 and 14).

28. Mr Cheong eventually agreed to give evidence for Momentum Creations.

29. In Mr Cheong’s AEIC signed on 26 February 2001 (about five months later) he said:

(a) He had come to know about OM and their range of furniture through advertisements placed in newspaper and magazines. He had been to the OM showroom at Marina Square. He had noticed a tag bearing the OM mark sewn onto the upholstery of their sofas (para 3 of AEIC).

(b) In August 2000, his wife and he decided to visit a furniture exhibition at the Singapore Expo, located at 1 Expo Drive, with the intention of looking for sofas (para 4 of AEIC).

(c) De Angeli’s booth at the exhibition was located near the entrance of the exhibition hall. It had the words ‘De Angeli’ prominently displayed (para 6 of AEIC).

(d) As they were walking by the booth, one of De Angeli’s female sales representatives approached them. She was carrying a plastic folder and invited them to look at their furniture (para 7 of AEIC).

(e) His wife and he spotted an L-shape sofa similar to the ‘Case’ sofa being sold by OM. The sales representative told them the price of the sofa which was much lower than OM’s price (para 8 of AEIC).

(f) The sales representative showed them some fabric samples, lifted up a cushion on the sofa and showed a special lining on the sofa. Mr Cheong sat on the sofa to feel its quality (para 9 of AEIC).

(g) The sales representative opened the plastic folder which had clear plastic sleeves and flipped to a page containing OM’s brochure. Mr Cheong examined a brochure (actually a leaflet) identical to Exhibit P9. Mr Cheong claimed that the sales representative pointed to the ‘Case’ sofa depicted in the leaflet and told his wife and him that that was what they were looking at. She then showed him a newspaper cutting of OM’s advertisement in the same plastic folder and pointed to the ‘Case’ sofa depicted in that advertisement. The copy of the newspaper advertisement exhibited in Mr Cheong’s AEIC was similar to the one as the leaflet (para 10 of AEIC).

(h) The sales representative said they were the sofa manufacturers for OM and explained why they could sell at a lower price. She also showed him some invoices of sales already concluded (para 11 of AEIC).

(i) Mr Cheong said that he continued sitting on the sofa and noticed that the cushions were thinner, softer and not as dense as the ones he had seen in the OM showroom. He also noticed that the fabric upholstery was of an inferior quality (para 12 of AEIC).

(j) He walked around the sofa to see if it had the OM tag but could not find any (para 13 of AEIC).

(k) He became doubtful as to whether De Angeli was the sofa manufacturer...