Robert John Powers School Inc. and Others v Tessensohn (trading as Clea Professional Image Consultants)

• Jurisdiction: Singapore
• Judgment Date: 30 July 1994
• Date: 30 July 1994
• Docket Number: Civil Appeal No 117 of 1993
• Court: Court of Appeal (Singapore)

Tessensohn Denyse Bernadette (trading as Clea Professional Image Consultants)

Plaintiff

and

John Robert Powers School Inc and others

Defendant

[1994] SGCA 28

Yong Pung How CJ

,

M Karthigesu JA

and

L P Thean JA

Civil Appeal No 117 of 1993

Court of Appeal

Tort–Passing off–Damage–Inverse passing off–Whether ex-franchisee passed off franchisor's achievements and materials and courses as her own–Whether actual damage sustained as result of inverse passing off–Whether damage likely to be caused by inverse passing off would warrant grant of quia timetinjunction

The first respondent, John Robert Powers School Inc (“JRP”), was a well-known American company which operated the John Robert Powers School in the US providing courses on social development and self-improvement. The second respondent, Ronver BV, was a Dutch company which had the exclusive rights to franchise the name “John Robert Powers” and to operate JRP schools in Singapore. In November 1983, the appellant became the second respondent's first JRP franchisee in Singapore. This franchise agreement was terminated on 14 February 1988 on less than amicable terms and, thereafter, the appellant set up her own school under the name Clea Professional Image Consultants (“Clea”). The third respondent was subsequently appointed as the new JRP franchisee on 1 March 1988.

On 13 May 1990, the respondents instituted an action against the appellant alleging copyright infringement and passing off. They alleged that the appellant had infringed the first respondent's copyright in the JRP manuals and the third respondent's copyright in a course syllabus called the “Executive Image Programme” and further alleged that the appellant had passed off her school as JRP and her courses as JRP courses. The respondents also alleged inverse passing off, ie that the appellant had passed off the achievements of JRP as her own in her resume for a seminar conducted in Kuala Lumpur in October 1988, and she had passed off JRP's materials and courses as her own. The trial judge dismissed the first and third respondents' claims for copyright infringement but allowed the respondents' claim for inverse passing off. She granted a permanent injunction restraining the appellant from passing off the courses she conducts as JRP courses, ordered the appellant to deliver up to the respondents all the JRP materials in her possession, directed an inquiry as to damages, and awarded to the respondents 40% of the costs with full disbursements except the travelling and incidental expenses of the first respondent's vice-president, Barbara Tyler, for coming to Singapore for the trial. The appellant appealed against the trial judge's decision on passing off and the respondents filed a respondent's notice in the form of a cross-appeal against her decision to exclude the travelling and incidental expenses of Barbara Tyler.

Held, dismissing the appeal and allowing the respondent's notice in part:

(1) The impression given by the appellant's resume may not be all that accurate; it certainly gave the impression that her grooming school was more experienced than it actually was. But it was very general, containing only an account of her achievements, and there was no reference to specific courses or programmes that had been conducted by her in her capacity as JRP franchisee. Without specific mention of particular courses or training programmes, no particular achievements could be identified as the appellant's. In that respect, she did not appropriate to herself any credit which rightly belonged to the first respondent. Hence, nothing of JRP's can be said to have been passed off as hers. The resume, although an exaggeration, did not amount to a passing off: at [10].

(2) The classic passing off occurs when one trader represents his goods to be those of another trader. Inverse passing off occurs when one trader represents the goods of another trader to be his own. Not only is it passing off to misrepresent that one's goods or services were those of another, but it is also passing off to misrepresent the inverse: that another person's goods or services are one's own. The three essential elements of passing off equally apply to such passing off as well. Therefore, to succeed in an action for inverse passing off, a plaintiff must prove that there is goodwill attached to their goods or services; that the defendants misrepresented themselves as the commercial source of the goods or services in question; and that the plaintiff's goodwill was damaged as a consequence: at [20], [22], [23] and [25].

(3) On the facts of the case, there was no difficulty in finding that the first two elements of passing off have been made out. JRP was a well-known name associated with self-improvement and social development courses and the appellant did not seriously contend that JRP lacked goodwill and reputation in Singapore. There was also misrepresentation made by the appellant that the JRP notes were those of the appellant's. Copies of the JRP notes had been left on shelves for all to take without the notes containing any acknowledgement of their source. Anyone who took them would naturally have thought that they were the work of the appellant. Although the appellant did not distribute these notes to the students, they were left on the open shelves and were easily accessible to the students. The inference was that they were left there deliberately for certain purpose, ie to render them accessible to the students. Thus, by making the notes available in that manner, she was in fact holding out to her students and customers that the notes were the product of her own efforts. That clearly was a misrepresentation: at [26].

(4) On the question of whether the respondents had suffered any damage caused by the passing off, no sufficient evidence had been adduced before the trial judge to show that actual damage had been sustained by the respondents. That, of course, was not the end of matter: at [27] and [28].

(5) It remained to be considered whether damage would be likely to be caused by the appellant's passing off which would warrant an injunction to be grantedquia timet. In connection with this question, the respondents “must shew a strong case of probability that the apprehended mischief will, in fact, arise”: see Attorney-General v Corporation of Manchester [1893] 2 Ch 87 at 92. In the present case, if the appellant was allowed to continue making JRP notes available in the passive but nonetheless extensive way within Clea's premises, damage to the respondents would likely be caused. All it would take was for one or more students of the appellant to take the JRP notes from the shelves and circulate or distribute them and they would then become freely and illegitimately available to many under the mistaken impression that they were Clea's notes. Therefore, “the apprehended mischief” will arise. The appellant clearly cannot be permitted to continue holding out that these notes were the appellant's by leaving them on shelves easily accessible to all and sundry: at [29].

(6) The trial judge granted a permanent injunction restraining the appellant from passing off her courses as JRP courses. That injunction was not correct. It was therefore set aside and, in lieu thereof, the appellant was ordered to be restrained from passing JRP notes as her own. The mandatory injunction granted directing delivery to the respondents of all materials originated from JRP remained unaffected. Since no actual damage had been proved by the respondents, the trial judge's order directing an inquiry as to damages was discharged: at [29].

(7) The appellant failed to admit the respondents' ownership of the copyright within the stipulated 14 days, as required by O 59 r 3 (5) of the Rules of the Supreme Court (Cap 322, R 5, 1990 Ed), after being served the notice to admit facts, and actually waited about a year and eight months before doing so on the first day of trial. This necessitated Barbara Tyler's flight to Singapore to give evidence of JRP's ownership of the copyright. The travelling costs (to and from Singapore) should clearly be the respondents' in any event. However, the respondents chose to call Barbara Tyler to give evidence on the second day of the trial where there was no need to do so since the appellant had already admitted the respondents' ownership of the copyright on the first day. Neither was there a need to call her to show that she had made a pointless trip. In fact, there was no reason for her to have stayed in Singapore for any significant length of time after the appellant's admission on the first day of trial. Therefore, the costs of her stay in Singapore beyond two days after her arrival in Singapore were excluded from the disbursements: at [30] and [31].

Attorney-General v Corporation of Manchester [1893] 2 Ch 87 (folld)

Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 (folld)

Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731; [1979] 2 All ER 927 (refd)

Hooper v Rogers [1975] Ch 43 (refd)

John Henderson & Sons v Alexander Munro & Co (1905) 7 F 636 (refd)

Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491; [1990] 1 All ER 873 (refd)

Rules of the Supreme Court (Cap 322, R 5, 1990 Ed)O 59r 3 (5)

G Raman (G Raman & Pnrs) for the appellant

Alban Kang and Anthony Soh (Arthur Loke & Pnrs) for the respondents.

Judgment reserved.

L P Thean JA

(delivering the judgment of the court):

1 The first respondent, John...