Star Industrial Company Ltd v Yap Kwee Kor trading as New Star Industrial Company

• Judgment Date: 19 April 1973
• Date: 19 April 1973
• Docket Number: Suit No 102 of 1971
• Court: High Court (Singapore)

Star Industrial Co Ltd

Plaintiff

and

Yap Kwee Kor (trading as New Star Industrial Co)

Defendant

[1973] SGHC 29

Choor Singh J

Suit No 102 of 1971

High Court

Trade Marks and Trade Names–Passing off–Effect of deceptive use of mark by plaintiff–Trade Marks and Trade Names–Passing Off–Goodwill–Proof through quantity of goods sold–Trade Marks and Trade Names–Passing Off–Nature of right protected by action in passing off–Consequences of plaintiff's abandonment of business in Singapore–Trade Marks and Trade Names–Passing Off–Unregistered trade marks -- Assignment of unregistered trade mark–Whether mark can be assigned without assigning goodwill at the same time

From 1953, J H Leung (“Leung”) trading under the name of “Star Brush Manufacturing Co” sold toothbrushes with the “ACE Brand” mark in a characteristic get-up in Singapore. In 1961, his business was taken over by the plaintiff. The plaintiff manufactured the toothbrushes and sold them with the same get-up. The goods were still packed and exported in packets labelled “Star Brush Manufacturing Co” rather than the name of the plaintiff. It did not register the characteristic get up of its goods or any part of it as a trade mark in Singapore. The plaintiff stopped selling the toothbrushes in Singapore in 1965. In 1968, the plaintiff company planned to begin manufacturing toothbrushes in Singapore and Leung assigned the “ACE Brand” trade mark which he had registered in Hong Kong to the plaintiff. In 1968, the defendant adopted for his products a get-up that was virtually indistinguishable from that formerly used by the plaintiff. The plaintiff commenced the present proceedings to restrain the defendant from passing off his toothbrushes as that of the plaintiff.

Held, dismissing the claim:

(1) The basis of the proceedings in a passing-off action is the protection of rights of property affecting a plaintiff's trade for there is no right of action where there is no interference with a plaintiff's trade. It must be shown at the time of the writ that there is a trade or goodwill by the plaintiff in the article in question currently in existence to be protected. The plaintiff's claim therefore failed for the following reasons. First, the plaintiff was not trading using the get-up in question at the material time and had not been trading since 1965. Second, the plaintiff failed to prove that a sufficiently large quantity of the goods bearing the mark had been sold in Singapore to establish goodwill or property in the mark. Finally, the toothbrushes sold by the plaintiff in Singapore were in packets labelled “Star Brush Manufacturing Co” rather than the name of the plaintiff. If there was any property or goodwill in Singapore up to 1965 in respect of the “ACE Brand” toothbrushes, it was distinctive of and belonged to the Star Brush Manufacturing Co and not the plaintiff: at [14], [19], [25], [26] and [32].

(2) An unregistered trade mark cannot be validly assigned unless the whole of the goodwill in the business in which the mark is used is assigned at the same time. Leung's purported assignment of the mark to the plaintiff was invalid because he did not assign at the same time the whole of the goodwill in the manufactory or business concerned in the goods to which the mark had been fixed. In 1968 Leung had no manufactory or business in “ACE Brand” toothbrushes which he could assign. His Star Brush Manufacturing Co had stopped manufacturing toothbrushes as far back as 1961 and any goodwill or property rights that he had in Singapore in respect of the “ACE Brand” toothbrushes had been destroyed when he allowed the plaintiff company to use this mark on its toothbrushes: at [21], [22] and [29].

(3) The use of the “ACE Brand” mark on the plaintiff company's toothbrushes imported into Singapore was clearly deceptive. This unregistered mark was being used not in connection with the goods of Leung, the proprietor of this mark, but on goods of someone else. By selling its “ACE Brand” toothbrushes in Singapore in packets labelled “Star Brush Manufacturing Co” the plaintiff was making a false representation that its toothbrushes were the toothbrushes of the Star Brush Manufacturing Co which they were not. The plaintiff company by using the “ACE Brand” on its toothbrushes in the manner in which it did, was passing off its toothbrushes as those of the Star Brush Manufacturing Co. This deceptive action which was quite clearly contrary to public policy gave it no rights of property or goodwill in respect of the “ACE Brand” mark in Singapore: at [27].

(4) Leung's Star Brush Manufacturing Co had been using the “ACE Brand” mark on toothbrushes manufactured in Hong Kong. The essential function of a trade mark is that it indicates the origin of the goods. The Star Brush Manufacturing Co had never manufactured toothbrushes in Singapore. In 1968 when Leung assigned the mark registered in Hong Kong to the plaintiff it could only be assigned for use on toothbrushes manufactured in Hong Kong. Therefore the assignment, even if it was a valid one, did not give the plaintiff a right to use the “ACE Brand” mark on toothbrushes to be manufactured in Singapore. It did not give it any proprietary rights in Singapore. The “ACE Brand” mark meant or indicated in Singapore a toothbrush manufactured in Hong Kong. The plaintiff had not claimed that it intended to resume the manufacture in Hong Kong of “ACE Brand” toothbrushes for export to Singapore. There had been no such business since 1965 and there was no evidence that it was going to be resumed: at [30].

A G Spalding & Bros v A W Gamage Ltd (1915) 32 RPC 273 (folld)

Burberrys v Cording (1900) 26 RPC 693 (refd)

Commissioners of Inland Revenue v Muller & Co's Margarine Ltd [1901] AC 217 (folld)

Draper v Trist [1939] 3 All ER 513 (folld)

John Sinclair Ltd's Trade Mark [1932] 1 Ch 598; (1932) 49 RPC 123 (refd)

Lacteosote Ltd v Alberman [1927] 2 Ch 117 (folld)

Leather Cloth Co Ltd v American Leather Cloth Co Ltd (1865) 11 HLC 524; 11 ER 1435 (refd)

R J Reuter Co Ltd v Mulhens [1954] Ch 50; [1953] 2 All ER 1160; (1953) 70 RPC 235 (folld)

Samuelson v Producers Distributing Co Ltd [1932] 1 Ch 201; [1931] 3 All ER Rep 74 (refd)

T Oertli AG v Bowman (London) Ltd [1957] RPC 388 (refd)

Trade Marks Act (Cap 206,1970 Rev Ed)

A C Fergusson for the plaintiff

L A J Smith for the defendant.

Choor Singh J

1 This action is brought to restrain the defendants from passing off toothbrushes not of the manufacture of the plaintiffs as and for the toothbrushes of the plaintiffs.

2 The circumstances giving rise to the action are these. In the year 1953 one J H Leung residing in Hong Kong and trading there under the name of “Star Brush Manufacturing Co” started...