Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd and Another

• Jurisdiction: Singapore
• Judge: Goh Joon Seng J
• Judgment Date: 25 October 1999
• Neutral Citation: [1999] SGHC 280
• Docket Number: Suit No 1509 of 1998
• Date: 25 October 1999
• Published date: 19 September 2003
• Year: 1999
• Plaintiff Counsel: Sarjit Singh Gill SC and Suhaimi Lazim (Shook Lin & Bok)
• Citation: [1999] SGHC 280
• Defendant Counsel: Jimmy Yim SC, Steven Seah and Jupiter Kong (Drew & Napier)
• Court: High Court (Singapore)
• Subject Matter: Descriptive mark,Rectification of register,Whether defendants used mark as a trade mark,Meaning of 'person aggrieved',Whether mark acquired secondary meaning as denoting plaintiffs' products and no other,Test of infringement,Whether defendants' mark confusingly similar to plaintiffs' mark,Infringement,Whether defendants person aggrieved,Passing off,Removal of trade mark from register,Trade Marks and Trade Names,Elements of passing off claim,s 39(1) Trade Marks Act (Cap 332, 1992 Ed)

: This is an action by the plaintiffs against the defendants for trade mark infringement and passing off in respect of their manufacture, importation and sale of 3-in-1 coffee mix bearing the mark `Coffeemix`.

The background

The plaintiffs and their goods

In early 1987, Teo Kee Bock (`Teo`), who is the Chairman and Managing Director of the plaintiffs, while on a business trip to China came across the Maxwell House brand of 3-in-1 coffee product on sale. He felt that such a product had potential in the Singapore market. On his return, he experimented and eventually formulated his own blend of 3-in-1 coffee mix comprising instant coffee, non-dairy creamer and sugar packed in 20-gm sachets.

A partnership Super Coffeemix Marketing Enterprise (`the firm`) comprising Teo`s wife, his brother-in-law and sister was formed to produce and market the product. Although Teo was not a partner, he ran the business on behalf of the firm.

Before Teo`s product came on the market, there was already another brand of 3-in-1 coffee mix in Singapore , namely, that of N-Rich. N-Rich`s trade mark was eventually registered on 4 June 1987 in Part B of the register for, inter alia, coffee mix.

The firm began marketing its 3-in-1 coffee mix in or about April 1987. Advertising and promoting of the products under its mark `SUPER COFFEEMIX` began in May 1987.

On 13 April 1991, a private limited company was incorporated to take over the firm`s business. Its name was `Super Coffeemix Manufacturing Pte Ltd`. On 20 July 1994, it became a public-listed company known as `Super Coffeemix Manufacturing Ltd`, the plaintiffs in this action.

Period	Sales (approximate)
1 April 1987 to 30 April 1988	$599,220.92;
1 May 1988 to 30 April 1989	$735,300.00;
1 May 1989 to 30 April 1990	$1,412,600.00;
1 May 1990 to 13 April 1991	$1,992,000.00;
14 April 1991 to 31 December 1991	$2,576,750.00;
1 January 1992 to 31 December 1992	$6,119,400.00; and
1 January 1993 to 31 December 1993	$6,202,445.76.

Year	Sales
1994	$8,873,345.75
1995	$8,196,702.79
1996	$7,643,756.09
1997	$8,267,930.62

From April 1987 to December 1997, the sales of 3-in-1 coffee mix achieved by the plaintiffs and their predecessors were:

Their advertising and promotion expenditure went up from $17,363.60 for 1 April 1987 to 30 April 1988 to $6,060,247.45 for 1997. It is however to be noted that these expenditure were for all `SUPER` products and not for their 3-in-1 coffee mix product only.

By reason of such sales, the plaintiffs claim that they have valuable goodwill in the mark `COFFEEMIX`.

On 17 April 1990, the plaintiffs applied to register their `SUPER & DEVICE COFFEEMIX` trade mark for `coffee` in Class 30. The application was allowed with a disclaimer over the word `SUPER`. The mark was registered in 1993 with effect from 17 April 1990.

The defendants and their products

The first defendants are the authorized distributors of the products of the second defendants. The second defendants are in the business of manufacturing, distributing and selling coffee, food and beverage products.

Since 1990, the first defendants have been selling coffee and coffee related products under the trade mark `INDOCAFE` in Singapore. They claim that their sales have been on average in excess of $1,000,000 a year. They also claim to have advertised their `INDOCAFE` coffee and coffee related products in Singapore . But no advertising figures have been produced. The first defendants also claim that by reason of their sales and advertising of their `INDOCAFE` coffee products in Singapore, they have acquired a goodwill and reputation in respect of their `INDOCAFE` trade mark.

The second defendants also own a trade mark registration for `INDOCAFE` under No B8086/90 registered in Part B on 23 November 1990 in respect of, inter alia, `coffee`.

The first defendants began dealing in 3-in-1 mixture of coffee, non-dairy creamer and sugar under the `INDOCAFE` trade mark in Singapore in July 1993.

Events preceding commencement of this action

On 25 September 1995, the plaintiffs through their solicitors, Messrs Shook Lin & Bok, wrote to the first defendants:

We act for Super Coffeemix Manufacturing Ltd of 26 Senoko Way, Singapore 2775.

Our clients are the registered proprietors in Singapore of the trade mark as depicted above. Further, our clients have, through long and extensive use, advertising, promotions, sales and distribution of amongst other goods, coffee, have [sic] built up and nurtured a strong reputation and goodwill in their trade marks whereupon the mark `COFFEEMIX` is immediately associated with Super Coffeemix Manufacturing Ltd exclusively and none other and would denote the high quality of such products manufactured by our clients.

It has just come to the attention of our clients that you are exporting, importing, distributing, offering for sale and/or selling coffee products bearing the trade mark `COFFEEMIX`.

Our clients trust that you may not be aware of our clients` rights in the said trade marks.

We await your reply within seven (7) days from the date of this letter that you would agree to immediately refrain from advertising, exporting, importing, distribution and sale of products bearing the trade mark `COFFEEMIX`. You will appreciate that our clients are compelled to protect their corporate name, trade marks and tremendous goodwill in the business and market. Our clients have no objections if you wish to use `COFFEE MIX` as two words.

Kindly note that our clients reserve all their rights in this matter.

On 27 September 1995, the first defendants replied through their solicitors, Messrs Drew & Napier, requesting evidence of the plaintiffs` trade mark registration and information on the plaintiffs` claim of long and extensive use of the plaintiffs` trade mark.

Receiving no response, Messrs Drew & Napier on 27 October 1995 informed Messrs Shook Lin & Bok that they treated the matter as closed.

On 6 November 1995, Messrs Shook Lin & Bok responded enclosing a copy of the plaintiffs` trade mark registration certificate. The letter also threatened to commence proceedings if the defendants did not comply with their demand to refrain from using `COFFEEMIX` for their coffee products.

The plaintiffs` demand was rejected on 10 November 1995.

The proceedings

On 1 September 1998, the plaintiffs commenced these proceedings. The claim is that the defendants have infringed their registered trade mark and passed off their coffee products as and for the plaintiffs` products by the manufacture importation and sale of coffee products bearing the mark `COFFEEMIX`. Accordingly, the plaintiffs seek an injunction to restrain further infringement and passing off, an order for delivering up of the infringing goods and materials, an enquiry as to damages or alternatively an account of profits.

On the plaintiffs` claim for trade mark infringement, the defendants deny the plaintiffs` claim contending that the plaintiffs` registered trade mark should be expunged or a disclaimer imposed over the word `COFFEEMIX` on the ground that it is descriptive of the character of 3-in-1 instant coffee mix and is commonly used as a descriptive term for coffee mix.

On the claim on passing off, the defendants deny any passing off because neither the plaintiffs nor the defendants use `COFFEEMIX` or `Coffeemix` by itself. The defendants have not misrepresented their coffee products as and for the plaintiffs` coffee products by the use of the mark `INDOCAFE Coffeemix` and there is no evidence of likelihood of confusion.

My decision

The plaintiffs` mark comprises `SUPER` in a laurel device with `COFFEEMIX` below it. The defendants` mark consists of ``INDOCAFE` with `Coffeemix` below it.

As the alleged infringement first occurred in July 1993, the pertinent statute is the Trade Marks Act (Cap 332, 1992 Ed) (`the Act`). Section 45(1) of the Act provides:

Subject to this section, and sections 48 and 52, the registration of a person in Part A of the register as proprietor of a trade mark (other than a certification trade mark) shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses in the course of trade a mark identical with or nearly resembling it in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either -

(a) as being use as a trade mark in relation to the goods or services in respect of which it is registered; or

(b) in a case in which the use is use upon the goods or in physical relation thereto or is use at or near the place where the services are available for acceptance, or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods or services with which such a person as aforesaid is connected in the course of trade.

The same protection is given to a trade mark registered in Part B by s 46 subject to sub-s 2. Section 46 reads:

(1) Except as provided by subsection (2), the registration of a person in Part B of the register as proprietor of a trade mark shall, if valid, give or be deemed to have given to that person the like right as if the registration had been in Part A of the register, and section 45 shall have effect in like manner in relation to a trade mark registered in Part B of the register as it has effect in...