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

• Jurisdiction: Singapore
• Judge: Lai Siu Chiu JC
• Judgment Date: 25 February 1994
• Neutral Citation: [1994] SGHC 43
• Citation: [1994] SGHC 43
• Published date: 19 September 2003
• Year: 1994
• Docket Number: Suit No 2435 of 1991
• Date: 25 February 1994
• Plaintiff Counsel: Lok Vi Ming and Tan Joo Thye (Rodyk & Davidson)
• Defendant Counsel: Steven Seah (Chan Kam Foo & Associates)
• Court: High Court (Singapore)

The claim

The plaintiffs (according to their statement of claim) have, for over 22 years, carried on the business of manufacturing food products which include rice vermicelli (`the product`). Since 1985, they have manufactured and marketed the product in specially designed and distinctive packaging. As a consequence of long and extensive usage, advertisement and promotion, the plaintiffs said they had acquired a substantial and valuable reputation in respect of the get-up and design of the product in Singapore, which same has become closely associated and or identified with the plaintiffs. They alleged that shortly before the issue of their writ (27 November 1991), the defendants had passed off their rice vermicelli as the product by using packaging which was confusingly and deceptively similar to the plaintiffs` get-up, thereby misappropriating the plaintiffs` goodwill. They claimed, inter alia, an injunction against the defendants.

By their amended defence, the defendants, inter alia:

(1) neither admitted that the plaintiffs had continuously manufactured and marketed the product in distinctive packaging nor that the plaintiffs had extensively used, advertised or promoted the get-up of the packaging;

(2) denied that the plaintiffs had acquired any reputation and or goodwill in the get-up of the packaging of the product;

(3) denied that they had passed off their rice vermicelli as the product, their packaging was similar to that of the product and that they had misappropriated the plaintiffs` goodwill;

(4) denied that their choice of packaging was designed to cause confusion or to pass off their rice vermicelli as the product;

(5) admitted that, by an agreement dated 26 February 1988, they undertook not to pass off their goods as and for the plaintiffs` goods by the use of a packaging similar to that of the plaintiffs, but denied that they had breached the agreement.

The application

After pleadings had closed, the plaintiffs applied by notice under the summons for directions for leave to amend their statement of claim to add to the existing para 11 an allegation that the defendants had adopted a get-up bearing design and words similar to that of the product with the fraudulent intent, and or with the deliberate object, of causing deception and confusion. In giving particulars of fraudulent intent the plaintiffs alleged the following:

(a) prior to 26 January 1988, the defendants had used and passed off the plaintiffs` packaging and or design and get-up;

(b) as a result of the plaintiffs taking the defendants to court, the defendants, in an out-of-court settlement, agreed with the plaintiffs in an agreement dated 26 February 1988 not to `pass-off or use such packaging ...`;

(c) at all material times, the defendants knew that the get-up and the design belonged to the plaintiffs and that all customers associated the product with the get-up and the design;

(d) after the 26 February 1988 agreement, the defendants repackaged and redesigned their get-up on their goods, but their attempts were commercially unsuccessful;

(e) as a result, the defendants repackaged and redesigned their get-up and design on their goods so that it was almost identical with the plaintiffs` get-up and design for the product.

The defendants opposed the plaintiffs` application, in which regard their solicitor, Foo Mau Peng, filed an affidavit in which he stated:

(1) on 5 November 1993 he was served with the agreed bundle of documents for the coming trial. He noted therefrom that an application had been filed by two persons, Goh Eng Hock and Goh Eng Kean, trading as Tai Sun Noodles Manufacturers (`the first partnership`) on or about 9 July 1985 in trade mark application No 3163/85 (`the application`) for class 30;

(2) on or about 12 February 1992, the first partnership assigned the benefit of the application to Goh Eng Hoe, Goh Eng Kean, Goh Eng Hock, Goh Hock Hoe and Goh Hock Wah trading as Tai Sun Noodles Manufacturers (`the second partnership`);

(3) in turn, the second partnership assigned the benefit of the application to the plaintiffs, after the writ in this action was issued on 27 November 1991;

(4) the application was eventually registered on 30 November 1992;

(5) the plaintiffs` application to amend the statement of claim to add a cause of action based on infringement of TM 3163/85 should not be allowed as they were not the holders thereof as at the date of the writ in this action.

The plaintiffs had stated in their notice that they were making the application as they felt it was necessary `for the sake of completeness of pleadings`. I dismissed the plaintiffs` application with costs when it first came up for hearing before me. At the request of counsel for the plaintiffs, I heard further arguments subsequently, after which I affirmed my previous order. The plaintiffs have appealed against my decision and I now give my reasons.

The decision

Before...