Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd and Another and Another Appeal

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 27 June 2000
• Neutral Citation: [2000] SGCA 29
• Docket Number: Civil Appeals Nos 184 and 185 of 1999
• Date: 27 June 2000
• Year: 2000
• Published date: 19 September 2003
• Plaintiff Counsel: Sarjit Singh Gill SC and Suhaimi Lazim (Shook Lin & Bok)
• Citation: [2000] SGCA 29
• Defendant Counsel: Jimmy Yim SC and Steven Seah (Drew & Napier)
• Court: Court of Appeal (Singapore)
• Subject Matter: Infringement,Passing off,Tort,s 46(2) Trade Marks Act (Cap 332),Whether descriptive mark had become distinctive of the plaintiffs' product,Whether defendants infringed plaintiffs' mark,Whether plaintiffs' mark should be expunged or the term "COFFEEMIX" disclaimed,Expunging mark or imposing disclaimer over descriptive part of mark,Whether descriptive word be used as trade mark,Whether defendants' products likely to be confused as plaintiffs' products,Injunctive or other relief,s 39(1) (a) Trade Marks Act,Whether defendants use essential feature of mark,Elements of tort,Whether elements established by plaintiffs,Whether defendants "aggrieved" persons,Whether court has discretion not to expunge or order disclaimer,Trade Marks and Trade Names,Rectification of register

(delivering the judgment of the court): These are two appeals brought against a decision of the High Court [reported at [2000] 1 SLR 587] in an action for infringement of trade mark and/or passing off where the learned trial judge dismissed the action and also dismissed the defendants` counterclaim that the plaintiffs` trade mark `SUPER COFFEEMIX` be expunged under s 39(1) of the Trade Marks Act or that the word `COFFEEMIX` in the trade mark should be disclaimed.

The first appeal, CA 184/99, is lodged by the plaintiffs against the dismissal of the action. The second appeal, CA 185/99, is brought by the defendants against the dismissal of their counterclaim. To avoid confusion, we shall hereinafter continue to refer to the parties as `plaintiffs` and `defendants` (where necessary, either as the first or second defendant as the circumstances may require).

The plaintiffs, a Singapore registered company, are the registered proprietors of the trade mark `SUPER & DEVICE COFFEEMIX` bearing registration number B2734/90 in respect of `coffee`. The plaintiffs were incorporated as a private limited company in 1991. Before the incorporation, the shareholders were operating as a partnership under the name Super Coffeemix Enterprises (the partnership). In 1994, the plaintiffs became a public listed company and its shares were traded on the Stock Exchange of Singapore.

The plaintiffs (including their predecessor, the partnership) were and are in the business of manufacturing and selling convenient food products, particularly coffee and cereal products. One of their main products is a 3-in-1 instant coffee mix, comprising a mixture of coffee, sugar and non-dairy creamer. This product, when mixed with hot water, produces an instant coffee drink. It was first introduced by the partnership in 1987. The product was sold to the public under the mark `SUPER COFFEEMIX`.

Since its first introduction, the demand for the product grew, so much so that in 1989, the partnership had to acquire new premises and machinery to cope with the increased orders. The plaintiffs (and their predecessor, the partnership) also expended considerable sums of money in promotion and advertising. Sales grew even more significantly. In 1993 the plaintiffs acquired a new and bigger factory.

The revenues from the sales of the product grew from $599,220.92 in 1987 to $8,267,930.62 in 1997. Their promotional and advertising expenses (covering all the plaintiffs` products and not just this product of 3-in-1 coffeemix) shot up from $17,363 to $6,060,247.45 during the corresponding period. Their advertisements appeared in print as well as on the television.

In the meantime, on 17 April 1990, the partnership applied to register in Part B of the Trade Marks Register their `SUPER & DEVICE COFFEEMIX` trade mark for `coffee` in Class 30. The application was allowed with a disclaimer over the word `SUPER`. In 1993, the mark was eventually registered in Part B and the registration backdated to 1990.

The first defendants are a Singapore incorporated company, while the second defendants, an Indonesian company, have their business address at Desa Tanjung Morawa B, Kabupaten Deli Serdang, Indonesia. The second defendants are the manufacturers of INDOCAFE coffee products in Indonesia while the first defendants are the distributors of those products in Singapore.

The second defendants registered their trade mark `INDOCAFE` in Part B of the Register on 23 November 1990 in respect of, inter alia, coffee. The first defendants have been selling INDOCAFE coffee products in Singapore since 1990. In July 1993, the first defendants began marketing a 3-in-1 mixture of coffee, sugar and non-dairy creamer under the `INDOCAFE` trade mark and which also bore the additional style `Coffeemix`.

We should add that when the plaintiffs first launched their `SUPER COFFEEMIX` into the market in 1987, there were other brands of coffee mix in the market. One such brand was `N-Rich` which in 1987 registered its trade mark `N-Rich` in Part B of the Register for, inter alia, `coffee mix`.

On 25 September 1995, the plaintiffs, through their solicitors, wrote to the first defendants informing the latter of the plaintiffs` rights in the trade mark, `SUPER & DEVICE COFFEEMIX`. In the letter, the plaintiffs requested the defendants to refrain from advertising, exporting, importing, distributing and selling products bearing the trade mark `Coffeemix`. However, the letter also expressly stated that there would be no objection if the first defendants were to use `Coffee Mix`as two words. After some exchanges of correspondence, the plaintiffs` request was rejected by the defendants.

The plaintiffs commenced these proceedings on 1 September 1998 against the defendants for trade mark infringement and for passing off of their goods as plaintiffs` product, SUPER COFFEEMIX. The plaintiffs sought, inter alia, an injunction restraining further infringement and passing off and an inquiry as to damages or alternatively an account of profits. They also claimed goodwill in the name `COFFEEMIX`. In their defence, the defendants denied any infringement or passing off, and counterclaimed to expunge the plaintiffs` registered trade mark or to impose a disclaimer over the word `COFFEEMIX` on the ground, inter alia, that it is descriptive of the nature of the product.

On the plaintiffs` product the mark is presented in this manner: the word `SUPER` is enclosed in a laurel device and below that is the word `COFFEEMIX` in big bold capital letters. The defendants` mark consists of `INDOCAFE` with the words `FROM THE HOUSE OF` in the form of an arch over it and the word `Coffeemix` below it in bigger print but not capital letters.

The decision below

The learned trial judge held that `to constitute infringement of a registered trade mark, the infringing mark must be used as a trade mark indicative of the origin or identity of the goods.` Furthermore, its use must be likely to deceive or cause confusion.

While the defendants conceded that their mark `INDOCAFE Coffeemix` is used in a trade mark sense, the trial judge nevertheless held that the word `Coffeemix` on the packaging of the defendants was not used in a trade mark sense. He referred to the fact that the plaintiffs do not object to the defendants using the word `coffeemix` in two words and said, if `coffeemix` in two words are descriptive, they must be so even when joined together as one word.

The trial judge also referred to the fact that the plaintiffs themselves did not use the word `Coffeemix` in the trade mark sense in their promotional materials and advertisements. He did not think the defendants` mark is confusingly similar to the plaintiffs` registered trade mark and, relying upon s 46(2) of the Act, he ruled that there was no infringement.

As regards the claim in passing off, the trial judge felt that in order for the plaintiffs to succeed they must prove that the word `COFFEEMIX` is distinctive of their product and none others as at the date of the alleged infringement, ie July 1993. Relying upon the results of a survey carried out on behalf of the plaintiffs where

(i) the vast majority of the interviewees who were aware of `SUPER` and `SUPER COFFEEMIX` did not regard `COFFEEMIX` as a brand;

(ii) they did not regard the word `coffeemix` to refer only to the plaintiffs` products, and none others; and

(iii) the plaintiffs` products were known either as `SUPER` or `SUPER COFFEEMIX` and not `COFFEEMIX` alone,

as well as the results of a survey carried out on behalf of the defendants which were to a similar effect, the trial judge decided that the plaintiffs had not established that the word `COFFEEMIX` had acquired a secondary meaning, indicating that that word mark had become distinctive of the plaintiffs` product. He also held that the survey results showed that there was really no confusion.

The learned trial judge dismissed the defendants` counterclaim to have the trade mark expunged or to have the word `COFFEEMIX` disclaimed on the ground that the defendants were not `aggrieved` persons within the meaning of s 39(1) of the Act. He did not go into the merits of the counterclaim.

Issues on appeal

Before us the plaintiffs contend that the trial judge was in error in the following main respects:

(i) that the word `Coffeemix` on the defendants product, `INDOCAFE Coffeemix`, is not used in the trade mark sense;

(ii) that the defendants` mark `INDOCAFE Coffeemix` is not likely to deceive or cause confusion and that the proviso to s 46(2) is applicable to the case.

The plaintiffs also submit that the trial judge was wrong to have found that the defendants had not committed the tort of passing off.

In relation to CA 185/99, the defendants` contention is that the trial judge was wrong to have held that the defendants were not an aggrieved party and that the counterclaim should not have been dismissed.

Trade mark

The plaintiffs do not dispute that `COFFEEMIX` has a descriptive quality. They concede that they have been using the word `Coffeemix` in a descriptive context together with other words like `3-in-1 instant` or `3-in-1` to connote that the product is a mixture of coffee, sugar and creamer. But they argue it does not follow that just because a mark is descriptive it cannot be a trade mark: see Crosfield & Sons` Application [1909] 26 RPC 837 at 857 and Thermawear v Vedonis [1982] RPC 44. Or that it cannot become distinctive: see Reddaway v Banham [1896] AC 199. Part B of the Register caters specifically for such descriptive marks. If a mark is an inventive one, it would have come under Part A of the Register.

We should mention that when the plaintiffs first applied for registration of the mark `SUPER & DEVICE COFFEEMIX` they sought registration under Part A of the Register and were willing to disclaim the use of the words `SUPER` and `COFFEE` separately. The Registrar refused registration in Part A on the ground that the mark had a direct and...