Saga Foodstuffs Manufacturing (Pte) Ltd v Best Food Pte Ltd

• Jurisdiction: Singapore
• Judge: Warren Khoo L H J
• Judgment Date: 05 December 1994
• Neutral Citation: [1994] SGHC 281
• Date: 05 December 1994
• Subject Matter: Market survey results,Evidence,Hearsay,Whether admitting results without calling respondents and interviewers as witnesses offend hearsay rule,Goodwill,Tort,Passing off,Relevance of intention to deceive,Whether such similarity between plaintiffs' get-up and that of defendants as to confuse public,Admissibility of evidence,ss 5 & 32(h) Evidence Act (Cap 97, 1990 Ed)
• Docket Number: Suit No 2435 of 1991
• Published date: 19 September 2003
• Defendant Counsel: Steven Seah, Foo Mau Peng and Adrian Tan (Chan Kam Foo & Associates)
• Court: High Court (Singapore)
• Plaintiff Counsel: Lok Vi-Ming and Tan Joo Thye (Rodyk & Davidson)

Cur Adv Vult

By this action, the plaintiffs seek to restrain the defendants from passing off the defendants` goods as the plaintiffs` by the use of a get-up similar to that of the plaintiffs.

The goods in question are beehoon , which, for those who do not know, is a vermicelli made of rice. The get-up which the plaintiffs seek to protect consists of a packaging in transparent polythene with a red and green wreathlike design and other words and features arranged in the manner shown in exh AB-1.

The plaintiffs manufacture beehoon and other products. They started manufacturing beehoon in 1980. They had used in succession two forms of packaging before settling down to using AB-1 in 1985. In that year, they embarked on a marketing campaign for all their products, including beehoon . This helped to boost sales. They sell to wholesalers and retailers like provision shops. They also sell to the armed forces, hospitals, prisons and schools. Hawkers and canteen operators are important end-users of the plaintiffs` beehoon . The plaintiffs` beehoon enjoys a dominant market share in Singapore.

The defendants were incorporated in 1981. They are also in the business of manufacturing and marketing beehoon . The family business started in the 1960s by the grandfather. There are two entities which are related to them in the sense that they are controlled by some or other of the members of the Soh family. These are People Bee Hoon Factory Pte Ltd (People) and Soh`s Foodstuff Agency, a partnership. The defendants and these related concerns have used a succession of packagings for the beehoon marketed by them.

In 1991, when it was found that the `Golden Axe Brand` which they had been using was not doing well, the defendants decided to use the packaging AB-2, which is the packaging the plaintiffs complain of in these proceedings. The plaintiffs discovered this in late October 1991. They issued the writ in this action on 27 November 1991. They applied for an interim injunction, and this was granted on 5 December 1991 after an inter partes hearing by LP Thean J (as he then was).

There are two main issues in this case. First, the plaintiffs` goodwill in AB-1 and, secondly, the likelihood of confusion between AB-1 and AB-2.

Market survey report: admissibility

Before I deal with these issues, I have to deal with the question of the admissibility of the market survey report which the plaintiffs seek to rely upon. Both parties had in fact agreed to the admission in evidence of the market survey reports which they had each commissioned, and there was a note in the agreed bundle of documents that the agreement was to the extent of the authenticity of the reports, which I understood to mean that the parties had agreed to the admission of the reports but subject to challenge as to their contents. On the first day of the trial, however, defendants` counsel applied to exclude the evidence. He himself offered to exclude the defendants` report. He contended that the reports were hearsay upon hearsay, and that they were in any event not admissible without a representative sample of the respondents in the survey being called. He also submitted that there was nothing in the Evidence Act (Cap 97, 1990 Ed) that allowed such evidence to be admitted.

I told counsel that I was not prepared to rule on the admissibility question right away, without having a full grasp of the contents of the evidence. I made a pragmatic but perhaps unorthodox ruling that the evidence should be adduced, and that I would decide the question of admissibility after the trial.

In brief, the market survey was conducted by the use of a questionnaire and colour photographs of the mark in AB-1 and AB-2 and of the `Chilli Pineapple Brand` (AB-7) and the `Golden Axe Brand` (AB-4). The survey covered 207 provision shop owners and cooked food hawkers at 20 pre-selected HDB estates. The questions were designed or intended to establish, among other things, the level of awareness of AB-1 and its association with the product beehoon , the degree of confusion between AB-1 and AB-2, the importance of the `chilli` element in the mark and with whom or whose product the `chilli` is associated. The answers of the respondents were recorded by the interviewers on the questionnaires, and these were processed after the field survey and the results analyzed.

The hearsay element which defence counsel says exists, as I understand it, lies in the fact that the respondents gave their answers to the questions out of court. They were not called, nor were the interviewers. Hence, defence counsel says, the double hearsay.

I should therefore start by saying a word about the rule of hearsay and in what circumstances it may be said to be offended. It is simply this. When evidence is sought to be given of what someone said to the testifying witness, whether such evidence offends the rule against hearsay depends on the purpose for which the evidence is sought to be tendered. If it is sought to be tendered for the purpose of establishing the truth of what was said to the testifying witness, its introduction will offend the rule. On the other hand, if the purpose of tendering the evidence is merely to show that such a statement was made, and not that the statement is true, then the rule is not offended. Prof Peter Murphy, in his excellent book Practical Approach to Evidence, has this to say:

[T]he rule against hearsay does not exclude statements made by others on prior occasions for all purposes, but only when tendered for the purpose of proving that some fact so stated is true. For any other relevant purpose, for example to prove that the statement was in fact made, was made on a given occasion or in a certain way, or had a certain legal effect, such evidence may be freely admitted, if necessary with a limited admissibility direction to the jury.

In , it fell upon Mahon J in the Supreme Court of New Zealand to consider this very question in the context of a market survey report. After analyzing English and American authorities, including , (Graham J, CA and HL), , as well as US academic writers, the learned judge held as follows:

A properly drawn market research questionnaire, carefully framed so as to elicit opinions or beliefs held by persons adequately informed, can only reveal, in my opinion, the existence or otherwise, in a defined proportion of the persons interviewed, of the relevant opinion or belief, and I do not think it can be right in cases involving trade mark infringement or passing off where evidence of reputation is relevant, and especially in a passing off action where affidavit evidence is not receivable, to compel a party to produce in the courtroom an interminable parade of witnesses to depose individually as to their knowledge and understanding of the trade association involved in a particular trade mark or design, so long as there are followed the cautionary procedures recommended in the article in the New York University Law Review above cited. The evidence obtained by research survey is in my view legitimate proof of the fact the opinions obtained had in fact existed, whether rightly held or not, and on that view of the matter it is my opinion that such evidence is not hearsay at all and that, even if it did fall within the technical concept of hearsay or representing a collation of individual statements made out of court, then the evidence would still be admissible by way of exception to the hearsay rule because it exhibits the existence of a state of mind shared in common by a designated class of persons.

The article in the which the learned judge referred to suggested as a condition of its admissibility that the evidence must have been obtained by research scientifically conducted `under circumstances where a sincere and accurate statement naturally would be uttered so that there exists at least a circumstantial probability of the reliability of such evidence.`

The learned judge himself suggested the following requirements:

There must be a formulation of questions cast in such a way as to preclude a weighted or conditioned response, there must be clear proof that the answers were faithfully and accurately recorded, and there must be evidence that the answers were drawn from a true cross-section of that class of the public or trade whose impression or opinion is relevant to the matter in issue.

In , Falconer J accepted the primary view of Mahon J that such evidence is not hearsay but is evidence proving an external fact, namely, that a particular opinion is held by the public or a section of the public.

I respectfully agree with this view. It seems to me that evidence of the results of a market survey research of the kind in question in this suit is evidence of the existence of the belief or opinion held by the respondents to the survey. The purpose...