Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd

• Jurisdiction: Singapore
• Judge: Goh Joon Seng J
• Judgment Date: 30 May 1991
• Neutral Citation: [1991] SGCA 12
• Date: 30 May 1991
• Subject Matter: Whether respondent's get-up bore such similarity to appellant's that public would be deceived or confused into believing respondent's goods to be that of appellant's,Tort,Goodwill,Whether appellant suffered damage on account of respondent's product,Damage,Whether respondent's product and get-up in direct competition with appellant's,Passing off
• Docket Number: Civil Appeal No 61 of 1990
• Published date: 19 September 2003
• Defendant Counsel: Aloysius Leng (Abraham Low & Partners)
• Court: Court of Appeal (Singapore)
• Plaintiff Counsel: Kan Ting Chiu (CP Lee & Co)

This is an appeal against the decision of the learned judicial commissioner who dismissed the appellant`s claim for passing-off. The counterclaim was stood down by consent and transferred to the subordinate courts. After the appeal was heard, we dismissed it and we now give our reasons.

The facts

The appellant is a company incorporated in Singapore in 1980. In the course of its business it markets and sells peanuts, cashew nuts and almond products under the brand name `Tong Garden`. It is a well established business, its predecessor Tong Guan Products having been set up in 1964. In 1975, Tong Guan Products had introduced clear plastic packs for its products. In 1978, Tong Guan Products had introduced dark blue and white aluminium foil packs for Tong Garden salted roasted peanuts in a narrow shape with arc colour separation. In 1983, after incorporation, the appellant changed the aluminium foil packs for Tong Garden roasted peanuts to the current broad shape and introduced similar aluminium foil packs for Tong Garden salted cashew nuts in dark blue and white with arc colour separation. This was extended to Tong Garden salted almonds in 1988. It is this dark blue packaging in respect of which the appellant alleges that there has been passing-off by the respondent.

The respondent is a company which is also incorporated in Singapore. Among its businesses it also sells the same products as the appellant. In 1985, the respondent marketed its `Deer Brand` salted cashew nuts in pale blue and white aluminium foil packs with wave colour separation. In October 1988 the respondent changed its packaging for Deer Brand salted cashew nuts to dark blue and white with arc colour separation. By November 1988 the respondent also marketed Deer Brand spicy almonds in aluminium foil packs of dark blue and white with arc colour separation.

In November 1988, the appellant took out an interim injunction restraining the respondent from packaging and marketing its cashew nuts and almonds on the ground that the packaging constituted passing-off. On 7 December 1988, the respondent successfully applied to have the interim injunction discharged.

The action was tried in the High Court in April and July 1990. The learned judicial commissioner held that the appellant had failed to prove any reputation in respect of its aluminium foil pack for its cashew nuts and almonds, and that there had been no misrepresentation by the respondent. He dismissed the appellant`s claim with costs, and the appellant appealed to this court.

The law

The law of passing-off is well established. The appellant must establish reputation in the get-up, misrepresentation and likelihood of damage. In this case, proof of likelihood of damage rather than damage is needed because the pleadings were amended to reflect this.

Reputation in the get-up

Get-up was defined by Fletcher Moulton LJ in JB Williams & Co v Bronnley & Co Ltd (1909) 26 RPC 765 as `a capricious addition to the article itself - the colour or shape it may be, of the wrapper or anything of that kind.` He added: `I strongly object to look at anything, that has a value in use, as part of the get-up of the article.` In Jarman & Platt Ltd v I Barget Ltd [1977] FSR 260 Megaw LJ was prepared to be less restrictive in considering what constituted get-up and considered the possibility of get-up consisting of `the characteristics of the product itself such as the shape or colour of the article itself`. He observed however that in such a case the necessary proof of reputation was not easy and held that in the case before him reputation was not proved.

The get-up of the appellant`s packaging for salted cashew nuts can be described as follows. The package is made of aluminium foil. It is rectangular in shape approximately 11cm by 9cm. Looking at it from the side which has the words `Tong Garden`, there is a dark blue arc that runs across the front from left to right with the thickest portion of the arc in the middle. This arc covers about one third of the total area. The words `Tong Garden` are written across the top of the arc in bold yellow letters. Beneath these words is written `Salted Cashewnuts` in white bold lettering of a smaller size than the words `Tong Garden`. Beneath the arc, the package is white in colour. This white portion covers the bottom two thirds of the package. There are photographs of cashew nuts superimposed on the lower half of the package where the white portion is. In 1983 when the package was introduced, 50g of cashew nuts were packed into each pack. At present 45g are packed into each pack.

The exhibits include some photographs of the packaging where the words `Premium Quality` appear in a red circle near the bottom right hand corner. In these photographs, there is also a white rectangle at the bottom left hand corner. In the rectangle is a lion with four Chinese characters. Beneath the words `Salted Cashewnuts` in English are six Chinese characters which state the brand name. However, these markings appear in some photographs of the packages on display, but do not appear in other photographs. It is obvious that there have been some changes in the packaging. Furthermore, during the appeal, it was conceded that these markings are not consistently used. The packaging for the spicy almonds is similar except for the words `Almonds` in place of `Cashewnuts`.

From our overall impression of the packaging, it is clear to us that the appellant is entitled to rely on the packaging as a whole as a distinctive get-up, and that there is a capricious addition to the article itself. This is only one aspect however of what the appellant must establish. The appellant must also show that the get-up is well known in connection with its business, ie the reputation of the get-up must be established. The appellant must prove that the mark, name or other indicia on which it relies is well known in connection with a business in which it has goodwill, or with goods connected with that business, and is distinctive of those goods or that business. In this case, the appellant is relying on the get-up of the cashew nuts and salted almonds packaging. The only way in which a person can acquire reputation in a mark, name or other indicia is by using it in connection with his business or goods. The precise extent of use required depends on the nature of the particular mark, name or indicia used and of the business or goods concerned.

In the case of White Hudson & Co v Asian Organization Ltd [1965] MLJ 186 , the goods in question were `Hacks` sweets which were wrapped in red coloured cellophane paper on which the word `Hacks` was printed. Lord Guest said on p 188 that:

The essence of a passing-off action is that A is not entitled to represent his goods as the goods of B or enable someone else to do so. ( John Brinsmead & Sons Ltd v Brinsmead 30 RPC 493). The first matter which a plaintiff must prove in a passing-off action is that the get-up of his goods has become distinctive of these goods and that it was associated or identified with them. This is a question of fact and upon this the appellants have the finding of the trial judge in their favour. Their Lordships are satisfied that the trial judge was justified in so finding. The fact that non-English speaking customers were in the habit of asking for `red paper cough sweets` shows clearly that to these customers the get-up of the red coloured wrapper had become associated or identified with the appellants` goods [our emphasis]. An attempt was made by the respondents to show that the red coloured wrappers were common to the trade. This attempt failed, as it was clear on the evidence that prior to 1953 no wrapper similar to that used on the appellants` sweets had ever been used in Singapore, and from 1953-1958 the appellants` sweets were the only sweets so wrapped which were sold in Singapore.

In Hoffman-La Roche v DDSA Pharmaceuticals [1972] RPC 1, the plaintiffs manufactured and marketed the drug chlordiazepoxide under the registered mark `Librium` in distinctive black and green capsules bearing the word `Roche` on each capsule. The defendants proceeded to market and advertise the drug chlordiazepoxide in black and green 10 mg capsules which were identical to those of the plaintiffs except that they bore the letters `DDSA` instead of the plaintiffs` name. It was held that the public associated the green and black capsules with the plaintiffs even if they did not know the identity of the plaintiffs. Harman LJ said that goods of a particular get-up just as much proclaim their origin as if they had a particular name attached to them, and it is well-known that when goods are sold with a particular get-up for long enough to be recognized by the public as goods of a particular manufacturer it does not matter whether you know who the manufacturer is. It was further held that in spite of the fact that in this case the goods were not sold over the counter and the public had little or no choice, if the defendants were permitted to put an article on the market with an almost identical get-up to that of the plaintiffs` goods, the public would be misled into thinking that they were acquiring their medicine from the same original, reliable, albeit unknown, source as previously. It was significant in this case that the plaintiffs were the only persons who had produced the green and black capsule for the previous ten years, and that in 1968 alone 328 million such capsules were sold. The judges also placed emphasis on the evidence of repeat prescriptions and that patients would be resistant to taking something other than the green and black capsules.

Hoffman-La Roche v DDSA Pharmaceuticals was distinguished in Roche Products Ltd v Berk Pharmaceuticals [1973] RPC 473; [1973] FSR 3455 which also concerned colour schemes in get-up. The plaintiffs in a passing-off action had for several years marketed on a very large scale a tranquillizer...