Tang Chay Seng v Tung Yang Wee Arthur

JurisdictionSingapore
Judgment Date10 August 2010
Date10 August 2010
Docket NumberSuit No 953 of 2008
CourtHigh Court (Singapore)
Tang Chay Seng
Plaintiff
and
Tung Yang Wee Arthur
Defendant

[2010] SGHC 228

Tan Lee Meng J

Suit No 953 of 2008

High Court

Trade Marks and Trade Names–Infringement–Consent–Plaintiff and defendant both owning pork noodle stalls–Plaintiff sending congratulatory message when defendant launched his stall–Whether plaintiff consented to defendant's use of plaintiff's trade marks–Whether defendant infringed plaintiff's trade marks–Section 27 (2) (b) Trade Marks Act (Cap 332, 2005 Rev Ed)

Trade Marks and Trade Names–Passing off–Plaintiff and defendant both owning pork noodle stalls–Defendant displaying plaintiff's culinary awards in newspaper advertisements publicising defendant's stall–Whether defendant passed off his pork noodles as plaintiff's pork noodles

The plaintiff uncle and the defendant nephew both owned pork noodle stalls. The uncle was the registered proprietor of two trade marks, which consisted of a number of English words and Chinese characters, including the characters ?? , while the nephew's pork noodle stall had a signboard displaying the Chinese characters ??? . The uncle sued the nephew for trade mark infringement and for passing off, alleging that the latter had placed two newspaper advertisements which reproduced culinary awards belonging to him.

Held, allowing the plaintiff's claim in part:

(1) As the uncle had, on the opening of the nephew's stall, sent the nephew a pot of flowers and a congratulatory message which specifically mentioned ??? and expressed the wish that the nephew's business would flourish, it was more likely than not that the uncle had consented to the nephew's use of the characters ??? : at [17] and [19].

(2) The uncle's trademarks were composite marks, and for the purpose of determining whether a mark and an allegedly infringing mark were similar, one had to take into account the imperfect recollection of a mark by a consumer, and the average consumer usually had no opportunity to make a direct comparison between the marks: at [28] and [32].

(3) For the purpose of determining whether a composite mark and an allegedly infringing mark were similar, it was the overall impression created by them in the light of their distinctive and dominant components that mattered: at [32].

(4) Viewing the uncle's marks as a whole and on the basis of their overall impression in the light of their distinctive and dominant components, the differences between them and the nephew's sign were so obvious that they could not be considered visually similar by a consumer with an imperfect recollection of the marks: at [33].

(5) There was no aural or conceptual similarity between the uncle's marks and the nephew's sign: at [35], [36] and [37].

(6) Some goodwill was attached to the uncle's pork noodle business, and the nephew had passed off his pork noodles as the uncle's by including the latter's culinary awards in newspaper advertisements, and there was a likelihood of confusion as a result of this: at [46] and [52].

(7) However, in the absence of evidence of loss suffered or likely to be suffered, nominal damages were to be awarded for loss of goodwill: at [53].

British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (refd)

CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR (R) 975; [1998] 2 SLR 550 (refd)

Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 (refd)

CIR v Muller & Co's Margarine Ltd [1901] AC 217 (refd)

Lloyd Schuhfabrik Meyer v Klijsen Handel BV (Case C-342/97) [1999] 2 CMLR 1343 (refd)

Matratzen Concord GmbH v Office for Harmonisation in the Internal Market (Trademarks and Designs) (Case T-6/01) [2002] ECR II-4335 (refd)

Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (Case C-120/04) [2003] ECR I-8551 (refd)

Nautical Concept Pte Ltd v Jeffery Mark Richard [2007] 1 SLR (R) 1071; [2007] 1 SLR 1071 (folld)

Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR (R) 216; [2009] 3 SLR 216 (refd)

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2006] 2 SLR (R) 690; [2006] 2 SLR 690 (folld)

Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (refd)

Sabel BV v Puma AG, Rudolf Dassler Sport (Case C-251/95) [1997] ECR 1-6191 (folld)

Trade Marks Act (Cap 332,2005 Rev Ed) s 27 (2) (b) (consd) ;ss 27,27 (3)

Deepak Natverlal (Yong Koh & Partners) for the plaintiff

Defendant in person.

Judgment reserved.

Tan Lee Meng J

Introduction

1 The plaintiff, Mr Tang Chay Seng ( TCS ), is the sole proprietor of a pork noodles stall at Apt Blk 465 Crawford Lane #01-12, Singapore 190465. He is also the registered proprietor of two composite trade marks ( the marks ) in relation to his business, namely TO418607C in Class 29 and TO418608A in Class 30. The defendant is TCS's nephew, Mr Tung Yang Wee, Arthur ( Arthur ), who operates a pork noodles stall at VivoCity Food Court. TCS sued Arthur for infringing the marks and passing off. Arthur denied that he had infringed the marks or had passed off his pork noodles business as that of TCS.

Background

2 More than 70 years ago, TCS's father and Arthur's grandfather, Mr Tang Joo Teo ( TJT ), started a pork noodles stall in a coffeeshop known as Tai Hwa Tea House in Hill Street.

3 At Tai Hwa Tea House, TJT cooked the noodles while his three children, Mr Tung Chye Hong ( TCH ), Mr Tang Chai Chye ( TCC ) and TCS, served customers who patronised the stall. In 1964, ill health prevented TJT from cooking at his noodles stall. TCS claimed that his father handed over the pork noodles business to him in 1964 and that his brothers had been his assistants. However, according to his brothers, TCH and TCC, their father took charge of the business again after he got better and all the takings from the business were handed over to him. Whatever may have been the case, TJT eventually withdrew from the family business due to old age.

4 At present, TCS has only one pork noodles stall. In contrast, TCC and his son operate four pork noodles stalls. The pork noodles stalls run by TCS and TCC were regularly featured together in advertisements in Singapore and both brothers won numerous local awards and certificates ( the culinary awards ) for their pork noodles. These included the Singapore Food & Entertainment Guide Award for culinary excellence in 1992/93, the Makansutra Food Oscars 2003 and the Green Book Best Food Awards 2005/06 and 2009/10.

5 In 1995, TCS changed the name of his business from Tai Hwa Pork Kwei Teow Mee Keow to Hill Street Tai Hwa Pork Noodle . On 27 October 2004, he became the registered proprietor of the marks in Class 29 and Class 30.

6 In 2006, TCS, his son, Mr Tang Yiang Kang ( Kang ) and Arthur pooled their resources to set up a pork noodles stall at the VivoCity food court under the name Hill Street Tai Hwa (VivoCity) Pork Noodle ( VivoCity 1 ). For the purpose of publicising this new stall, TCS handed over his culinary awards to Arthur, who had the said awards digitally scanned. Thus, when Arthur returned the original awards to TCS, he had copies of the awards in his possession.

7 VivoCity 1 turned out to be a dismal failure. It closed down under rather acrimonious circumstances within two weeks after it started business on 14 October 2006. TCS blamed Arthur for the failure of the business. However, Arthur said that there had been problems from the very start because Kang and TCS could not get along. Kang had preferred a production line system of cooking while TCS had insisted on having each bowl of pork noodles cooked slowly to ensure quality control. Furthermore, VivoCity 1's defective kitchen equipment produced inferior pork noodles soup that smelt of burnt flesh. The closure of VivoCity 1 led to a deterioration of Arthur's relationship with TCS.

8 Arthur claimed that in 2008, the operators of the food court at VivoCity invited him to take over the space occupied by the stall that had replaced VivoCity 1. On 31 July 2008, Arthur and his father visited TCS to inform him of this development. According to them, at this meeting, TCS gave his blessing to the opening of VivoCity 2 and to the use of the name ??? , pronounced in dialect as Lau Dai Hua , for this new pork noodles stall, which opened for business on 4 October 2008. However, TCS contended that he had not given his consent to the use of this name. All the same, it is noteworthy that when VivoCity 2 was opened, TCS sent Arthur a pot of flowers accompanied by a congratulatory message. In his message, TCS referred to ??? and went so far as to say May your business flourish .

9 Around a month later, on 5 November 2008, Arthur placed an advertisement for VivoCity 2 in the Lianhe Zaobao, a Chinese newspaper. The translation for the said advertisement is as follows:

Famous Hill Street Tai Hwa Pork Kway-teow and Noodle.

...

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2 cases
  • Doctor's Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE)
    • Singapore
    • High Court (Singapore)
    • 18 Abril 2012
    ...slight variation in pronunciation or length can render marks different (as observed by Tan Lee Meng J in Tung Chay Seng v Tung Yang Wee [2010] SGHC 228 at [35]), in this case, the common feature of the word “SUBWAY” in both marks renders the marks aurally similar. In any case, even on a qua......
  • Doctor's Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE)
    • Singapore
    • High Court (Singapore)
    • 18 Abril 2012
    ...slight variation in pronunciation or length can render marks different (as observed by Tan Lee Meng J in Tung Chay Seng v Tung Yang Wee [2010] SGHC 228 at [35]), in this case, the common feature of the word “SUBWAY” in both marks renders the marks aurally similar. In any case, even on a qua......
1 books & journal articles
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review No. 2010, December 2010
    • 1 Diciembre 2010
    ...was an economic link or collaborative marketing between the plaintiff and the defendants. (g) Tang Chay Seng v Tung Yang Wee Arthur [2010] 4 SLR 1004 (‘Tang Chay Seng case’) concerned trade mark infringement and passing off actions by an uncle who was the registered proprietor of the follow......

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