Nippon Paint (Singapore) Co Pte Ltd v ICI Paint (Singapore) Pte Ltd
| Jurisdiction | Singapore |
| Judge | Amarjeet Singh JC |
| Judgment Date | 31 October 2000 |
| Neutral Citation | [2000] SGHC 218 |
| Date | 31 October 2000 |
| Subject Matter | Whether expression "3 in 1" generic or descriptor,Goodwill,Whether expression had secondary meaning with goodwill attached to it,Whether distinctive or having a reputation attached,Passing off,Whether expression caused confusion,Tort |
| Docket Number | Suit No 600104 of 2000 |
| Published date | 19 September 2003 |
| Defendant Counsel | Low Chai Chong; Lee Ai Ming and Ian Fok (Rodyk & Davidson) |
| Court | High Court (Singapore) |
| Plaintiff Counsel | Alban Kang (instructed); Leonard Hazra and William Chan (David Lim & Partners) |
: Introduction
The plaintiffs and defendants are both Singapore incorporated companies of well known pedigree. They have at all material times been carrying on business in the manufacturing, distributing and sale of paints.
Both companies have been manufacturing and marketing a range of paints under their corporate name in Singapore. They have been and are by far the dominant players in the Singapore retail paint market.
The plaintiffs filed proceedings in March 2000 claiming that the defendants were passing off or attempting to pass off or assisting others to pass off one of a range of the plaintiffs` wall paints, namely, an interior wall paint which the defendants introduced and began marketing in October 1999 which they called `Supreme 3 in 1` for the plaintiffs` interior wall paint introduced in February 1995 which the plaintiffs were successfully marketing under the name or mark `3 in 1`. The plaintiffs consequently prayed for an injunction for delivery and destruction of the offending paint product of the defendants or an order for the obliteration of the offending name or mark `Supreme 3 in 1` from the defendants` product and damages suffered or at the plaintiffs` option an account of profits.
The undisputed facts
The plaintiffs and defendants have been manufacturing and selling various brand names of paints under their corporate names directly or through a limited number of specially appointed wholesalers to retailers and retailers to customers. On divers dates after 1994 the plaintiffs and the defendants introduced new interior wall paints which had as far as it is relevant the get-up and livery in the following form and impression on their cans.
(a) In May 1994 defendants introduced:
Paint Can: `D2`
| ----------------------------------- | ||
| ICI Dulux | ||
| ----------------------------------- | ||
| WASH & WEAR | ||
| ----------------------------------- | ||
| LOW SHEEN ACRYLIC | ||
| ----------------------------------- | ||
| SINGAPORE`S | ||
| MOST WASHABLE | ||
| LOW SHEEN PAINT | ||
| [These words `Singapore`s Most Washable Low Sheen Paint` are in a red roundel with yellow lettering] |
[`ICI Dulux` are in white letters on a dark blue band. `Wash & Wear` are in white letters on a yellow band. `Low Sheen Acrylic` are in white letters on a blue band. One half of the can is multi-coloured where above letterings appear and light blue in colour with white letterings in English, Chinese and Malay in three columns concerning instructions on use of paint, on the other half of the can.]
(b) In February 1995 plaintiffs introduced:
Paint Can: `P1`
| NIPPON PAINT 3 IN 1nNIPPON PAINT | Covers CracksWashableWaterproof | ||
| Covers Cracks | Covers Cracks | ||
| Washable | Washable | ||
| Waterproof | Waterproof |
[The `3 in 1` can is in hues of colours of dark and light blue, green and yellow on black background with raindrops wavy horizontal lines and crooked vertical lines within the figure 1 (representing each of the three above qualities). The instructions in English and Chinese on use appear in two columns on the other half of the can on a light blue colour. The general appearance of the can is pastel.]
(c) In September 1996 defendants introduced:
Paint Can: `D3`
| ---------------------------- | ||
| ICI Dulux | ||
| ---------------------------- | ||
| WASH & WEAR | ||
| ---------------------------- | ||
| LOW SHEEN ACRYLIC | ||
| ---------------------------- | ||
| 3-in-1 | ||
| 1 | ||
| The most washable | ||
| 2 | ||
| Covers more wall area per can | ||
| 3 | ||
| Covers hairline cracks | ||
| (The above sentences appear within a ) |
roundel
[The rest of the get-up or livery is as described in para 4(a) as previously described.]
(d) In October 1997 defendants introduced:
Paint Can: `D4`
| ----------------------------------------------------- | |
| ICI Dulux | |
| ----------------------------------------------------- | |
| WASH & WEAR | |
| ----------------------------------------------------- | |
| 3-in-1 SOFT SHEEN WALL FINISH | |
| ----------------------------------------------------- | |
| CONTAINS PROTECTIVE | |
| ICI POLYSCRUB BEADS | |
| FOR THAT FRESHLY | |
| PAINTED LOOK THAT LASTS | |
| AND LASTS AND LASTS |
[drawing of a white paint roller]
| Most washable |
| Covers Hairline Cracks |
| Covers Twice The Wall Area |
| [The above sentences are in black letters on a yellow band background] |
[The name `ICI Dulux` and words below that appear against the background of a scene of a living room with furniture all within the outline of a large stylised `D`. `Dulux` is in purple. `Wash and Wear` and `3 in 1` in white with purple outline and the words `Soft Sheen Wall Finish` in white against a purple band. The can is colourfully vibrant. Useful information are printed on the other half of the can.]
(e) In October 1999 defendants introduced:
Paint Can: `D1`
| ----------------------- | ||
| ICI Dulux | ||
| ----------------------- | ||
| Supreme 3 in 1 | ||
| ----------------------- | ||
| 1. | Most washable | |
| 2. | Covers Hairline Cracks | |
| 3. | Better Coverage |
Plus
| 4. | Pleasant Fragrance |
| 5. | Improved Opacity |
| 6. | Fast Drying |
| 7. | Less Splattering |
| 8. | Smoother Finish |
| [These smaller words are within a yellow box against a dark blue background] |
[The wordings `ICI Dulux` and `Supreme 3 in 1` are within the same colourful large stylised `D` covering about half the can as earlier mentioned. `Dulux` is in dark blue. `Supreme` is in white and `3 in 1` is in red on a dark blue bank or background. Below, the wording and numerals the can has green, orange and yellow colours with colourful drawings of a TV, hanging light, a chair etc. The can is colourfully vibrant.]
(f) In October 1999 plaintiffs introduced:
Paint Can: `P2`
| n NIPPON PAINT | NIPPON PAINT | ||
| 3 IN 1 | |||
| 1. | Covers hairline | ||
| cracks | MEDI fresh | ||
| 2. | Washable | Anti-Baterial Formula | |
| 3. | Waterproof | ||
| LUXURY LOW SHEEN WALL FINISH |
[Words `Nippon Paint` are on black band with broad red line underneath.
Words `3 in 1` are in white against light purple background.
Appearance of can is generally light coloured with coloured area and words and numerals as described above centred below a curved white and red band. Instructions on use appear on the other half of the can in black on a light blue background.]
The annual sales since 1994 in respect of each type of interior wall paint referred to hereinbefore sold by the plaintiffs and defendants with the percentage sales derived from total sales figures may be summarised as follows:
| Annual Sales | ||||||
| 1994 | Sales | Market Share | ||||
| ICI Dulux Wash & Wear | ||||||
| (launched on 22 May 1994) | - | $2,436,534 | ||||
| 1995 | ||||||
| ICI Dulux Wash & Wear | - | $2,409,795 | - | 27.9% | ||
| Nippon 3 in 1 | ||||||
| (launched in February 1995) | - | $6,292,000 | - | 72.09% | ||
| 1996 | ||||||
| ICI Dulux Wash & Wear with | ||||||
| Roundel 3 in 1 | - | $2,409,795 | - | 25.76% | ||
| Nippon 3 in 1 | - | $6,946,000 | - | 74.24% | ||
| 1997 | ||||||
| ICI Dulux Wash & Wear with | $4,007,704 | - | 36.32% | |||
| word and numerals 3 in 1 | ||||||
| appearing below and to the | ||||||
| side of Wash & Wear instead | ||||||
| of in a roundel | - | |||||
| Nippon 3 in 1 | - | $7,027,000 | - | 63.68% | ||
| 1998 | ||||||
| ICI Dulux Wash & Wear | - | $4,439,732 | - | 38.94% | ||
| Nippon 3 in 1 | - | $6,963,000 | - | 61.06% | ||
| 1999 | ||||||
| ICI Dulux Wash & Wear | - | $5,310,045 | - | 30.47% | ) | |
| ) | ||||||
| ICI Dulux Supreme 3 in 1 | ) | 39.24% | ||||
| (launched in October 1999) | - | $1,528,940 | - | 8.77% | ) | |
| Nippon 3 in 1 | - | $6,128,064 | - | 25.60% | ) | |
| ) | 60.76% | |||||
| Nippon 3 in 1 MEDIfresh | ) | |||||
| (launched in October 1999) | - | $4,462,736 | - | 35.16% | ) | |
| January to August 2000 | ||||||
| ICI Dulux Wash & Wear | - | $1,927,904 | - | 28.87% | ) | |
| ) | ||||||
| ICI Dulux Supreme | ) | 57.84% | ||||
| 3 in 1 | - | $1,934,555 | - | 28.97% | ) | |
| Nippon 3 in 1 | - | $697,499 | - | 31.72% | ) | |
| ) | ||||||
| Nippon 3 in 1 | ) | 42.16% | ||||
| MEDIfresh | - | $2,118,368 | - | 10.44% | ) |
On 7 February 1995, the plaintiffs had filed an application with the Registry of Trade Marks to register its `Nippon 3 in 1` mark, ie at about the time the said mark was launched. The Registry objected to the application on the grounds that the mark contained numerals. The application was renewed by the plaintiffs and filed on 5 February 1997. This time the Registry of Trade Marks was only prepared to accept the application subject to a disclaimer to the words and numerals `3 in 1` and the letter `n`. The plaintiffs` solicitors wrote to the Registry stating that the plaintiffs were agreeable to having the disclaimer imposed on (i) a word and numerals `3 in 1` and (ii) a letter `n`. The Trade Marks Act (Cap 332) was amended in 1998 (Act 46 of 1998). The amended Act permitted the plaintiffs if they had made an application after the amendments were instituted to register the mark `Nippon 3 in 1` without a disclaimer. However, the plaintiffs had still not attempted to register such a mark when these proceedings came up to be heard. However, the defendants had proceeded and registered their `Supreme 3 in 1` mark under the amended Act as appears in the Trade Mark Journal , Journal No 69 dated 18 August 2000. Plaintiffs` counsel stated in court that the plaintiffs would in due course be raising an objection to the registration of the said mark `Supreme 3 in 1`.
It was common ground established by the...
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