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

• Jurisdiction: Singapore
• Judgment Date: 25 March 1974
• Date: 25 March 1974
• Docket Number: Civil Appeal No 15 of 1973
• Court: Court of Appeal (Singapore)

Star Industrial Co Ltd

Plaintiff

and

Yap Kwee Kor (trading as New Star Industrial Co)

Defendant

[1974] SGCA 12

F A Chua J

Civil Appeal No 15 of 1973

Court of Appeal

Trade Marks and Trade Names–Passing Off–Nature of right protected by action in passing off–Failure to assign goodwill or proprietary right arising from trade mark at the same time as assigning mark–Failure to label product under own name–Consequences of abandonment of business in Singapore

From 1953, J H 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 appellant/plaintiff. Leung remained the sole proprietor of Star Brush Manufacturing Co but it no longer manufactured any toothbrushes. It was the appellant who manufactured the toothbrushes and sold them with the same get-up and the goods continued to be packed and exported in packets labelled “Star Brush Manufacturing Co”. However, it did not register the characteristic get-up of its goods or any part of it as a trade mark in Singapore. The appellant stopped selling the toothbrushes in Singapore in 1965. In 1968, Leung assigned the “ACE Brand” trade mark which he registered in Hong Kong to the appellant. In 1968, the respondent/defendant adopted for his products a get-up that was virtually indistinguishable from that formerly used by the appellant, which he sold under the brand name of “AGE”, which he registered as a trade mark with the Registry of Trade Marks in Singapore. The appellant commenced proceedings to restrain the respondent from passing off his toothbrushes as that of the appellant and the removal of the respondent's trade mark from the register. The trial judge dismissed its claim and it appealed against the decision.

Held, dismissing the appeal:

(1) Any goodwill or proprietary right in Singapore that Leung, as sole proprietor, had in toothbrushes bearing the ACE brand mark and get-up, was never assigned by Leung to the appellant. From 1961 Star Brush Manufacturing Co, of which Leung then was and continued to remain the sole proprietor, ceased manufacturing and ceased exporting to Singapore ACE brand toothbrushes. When the appellant from 1961 started manufacturing and exporting to Singapore until 1965 toothbrushes bearing the ACE brand mark and get-up in packets labelled “Star Brush Manufacturing Co” and not labelled under its own name, albeit presumably with Leung's...