Tang Chay Seng v Tung Yang Wee Arthur

Tan Lee Meng J:

[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.

[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:

[11] Knowing that his uncle was displeased, Arthur sought to distance VivoCity 2 from TCS’s pork noodles stall by placing another advertisement for VivoCity 2 in the Lianhe Zaobao on 6 December 2008. In this advertisement, he stated “We are one and only. We have no branch.”

[12] TCS, who had placed an advertisement in the Lianhe Zaobao on 26 November 2008 to inform the public that he had only one pork noodles stall, instituted legal proceedings against Arthur for infringement of his trade marks and for passing off on 17 December 2008.

[13] It is evident from s 27 of the Trade Marks Act (Cap 332, 2005, Rev Ed) (“the Act”), which deals with the infringement of a trade mark, that an infringement arises only in relation to an act done without the consent of the proprietor of the mark.

[14] Arthur claimed that as he had planned to return to the place where VivoCity 1 had failed in 2006, he was advised to discuss his plan with his uncle, TCS, to avoid any misunderstanding. He stated in his affidavit of evidence-in-chief (“AEIC”) at para 124 that he had told TCS that his new pork noodles stall at the VivoCity food court (“VivoCity 2”) would be named “???” to make the “connection with my grandfather”. He added that TCS had consented and had told him that since he knew how to prepare his grandfather’s pork noodles dish, he should go ahead with his new business venture.

[15] TCH corroborated his son’s claim that they had both met TCS on 31 July 2008. When cross-examined, he testified that TCS had consented to the use by Arthur of the name “???” for VivoCity 2 even though this fact had not been stated in his AEIC.

[16] Although TCS denied that he had given his consent to the use by Arthur of “???”, it is rather telling that when VivoCity 2 began its operations in October 2008, TCS had wished Arthur well by sending him a pot of flowers, together with a congratulatory message in Chinese, which referred to Arthur’s sign “???”. The English translation of the congratulatory message is as follows:

[17] As TCS specifically mentioned “???” or “Lau Dai Hua” in his congratulatory message and had wished that this business would flourish, it may be assumed, and especially so in the context of the family ties between him and Arthur, that he had consented to the use of the Chinese characters “???” by Arthur for VivoCity 2.

[18] TCS’s counsel, Mr Deepak Natverlal (“Mr Natverlal”) argued that his client’s congratulatory message on the occasion of the opening of Arthur’s pork noodles stall must be viewed together with an earlier affidavit dated 7 August 2009 that his client had filed in relation to Arthur’s application to dismiss the present action. However, in that affidavit, TCS had merely stated at [9]:

[19] Nothing in the above paragraph suggests that TCS objected to the use of “???” or “Lau Dai Hua” by Arthur. In fact, TCS had reiterated that he had sent the congratulatory message with a “sincere and good intention”. As such, nothing in the said earlier affidavit undermines the effect of TCS’s congratulatory message.

[20] I thus find that it is more likely than not that TCS had consented to the use of “???” or “Lau Dai Hua” as the name for VivoCity 2. As such, his claim against Arthur for infringement of his trade marks may be dismissed on the ground of his consent.

[21] Although I have ruled that TCS had consented to the use by Arthur of “???”, I will, for the sake of completeness consider the position as to whether Arthur had infringed the marks if TCS had not given his consent.

[22] What must be proven to establish that a trade mark has been infringed depends to some extent on whether the registered mark and the defendant’s mark or sign are identical or similar. In the present case, TCS did not assert that Arthur’s sign is identical to his own marks. Instead, he claimed that Arthur’s sign is similar to his marks and sought to rely on s 27(2)(b) and s 27(3) of the Act.

[23] Section 27(2)(b) of the Act provides as follows:

[24] In his Statement of Claim, TCS pleaded in para 3:

[25] Arthur pleaded at para 2 of his Defence that para 3 of the Statement of Claim was denied and that TCS was put to strict proof of the contents therein.

[26] In The Polo/Lauren Co LP v Shop in Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo/Lauren”), the Court of Appeal adopted the test outlined in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 ("the British Sugar test") for determining whether or not there has been an infringement under s 27(2)(b) of the Act. Applying the British Sugar test, section 27(2)(b) will be infringed in the present case if:

[27] The tests for similarity of marks are trite. The registered mark and the allegedly infringing mark or sign are compared for visual, aural and conceptual similarities. Whether or not there is similarity is essentially a question of fact.

[28] TCS’s two registered marks are composite marks with Chinese characters, English words and graphic depictions. TCS’s marks are as follows:

[29] The components of TCS’s composite marks are the following:

[30] Arthur’s signboard, which contains graphic depictions as well as Chinese, Japanese and Korean characters but no English words, is as follows:

[31] The components of Arthur’s signboard are as follows:

[32] For the purpose of determining whether a mark and an allegedly infringing mark or sign are similar, one must take into account the imperfect recollection of a mark by a consumer: see Nautical Concept Pte Ltd v Jeffery Mark Richard [2007] 1 SLR(R) 1071 at [30]. The average consumer usually has no opportunity to make a direct comparison between the marks in question and he must rely on the “imperfect picture of them that he has kept in his mind”: see Lloyd Schuhfabrik Meyer v Klijsen Handel BV, Case C-342/97 [1999] 2 CMLR 1343, 1358-9 (“Lloyd Schuhfabrik”). Furthermore, the European Court of Justice has stressed that for the purpose of determining whether marks that are being compared are similar, it is the overall impression created by them in the light of their distinctive and dominant components that matters: see Sabel BV v Puma AG, Rudolf Dassler Sport, Case C-251/95 [1997] ECR 1-6191 (“Sabel”) and Lloyd Schuhfabrik. This approach was recently adopted by Tay Yong Kwang J in Festina Lotus SA v Romanson Co Ltd SGHC [2010] 200. In the case of complex marks, it is also noteworthy that in Matratzen Concord GmbH v Office for Harmonisation in the Internal Market (OHIM) (Trademarks and Designs) (“Matratzen”) Case T-6/01 [2002] ECR II- 4335, the Court of First Instance, while adopting the approach in Sabel and Lloyd Schuhfabrik, added at [33] to [34] as follows:

[33] The approach adopted in Matratzen in relation to the comparison of a composite mark with another mark or sign was reiterated in Medion AG v Thomson Multimedia Sales Germany & Austria GmbH Case C-120/04 [2003] ECR I-8551. It follows that one cannot, without more, compare a single component of the marks with one part of Arthur’s sign. If TCS’s composite marks are viewed 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 Arthur’s sign are so obvious that they cannot be considered visually similar by a consumer with an imperfect recollection of the marks. After all, TCS’s marks have Chinese characters and English words whereas Arthur’s sign, which has no English words, has Chinese, Japanese and Korean characters. Furthermore, any overall impression of TCS’s marks must take into account the prominently placed graphic depictions of a suspension bridge and bowl of noodles with chopsticks, which are absent from Arthur’s sign, which has a graphic depiction of the mythical pi xiu. I thus find that there is no visual similarity between the marks and Arthur’s sign.

[34] As for the question of aural similarity, TCS’s complaint was summed up in his AEIC at para 11(iii) as follows:

[35] Apart from the fact that TCS did not prove that the words “Hill Street Tai Hwa Pork Noodle” or its translation in Chinese are the dominant component of his composite marks, “Lau Dai Hua” is not aurally similar to “Hill Street Tai Hwa Pork Noodle”. It has often been said that when comparing marks for aural similarity, “tribunals have tended to carry out a quantitative assessment: do the two signs have more syllables in common than not?”: see Bently & Sherman, Intellectual Property Law (Oxford University Press, 3 ed, 2009) at 865. In the present case, “Lau Dai Hua” has only 3 syllables while “Hill Street Tai Hwa Pork Noodles” has 6 syllables and the first two syllables in the marks “Hill Street” do not sound like “Lau” in Arthur’s sign. Furthermore, the two similar sounding words “Tai Hwa” in the marks and “Dai Hua” in Arthur’s sign, which are written in Chinese as “??”, are commonly used in the food industry and other businesses. For instance, “??” is extensively used in the food industry by Tai Hua Food Industries Pte Ltd (“Tai Hua Food”), a well known manufacturer of several types of sauces sold in Singapore in supermarkets and provision shops. Tai Hua Food is the registered proprietor of a large number of trade marks with the Chinese characters “??” and the English words “Tai Hua” in classes 29 and 30. In fact, in regard to TM No T8604338G, which had been registered by Tai Hua Food in 1986, long before the marks were registered in 2004, the only characters and words appearing in the mark are “??” and “Tai Hua”.

[36] The Chinese characters “??” are also used by other types of businesses. For instance, in the banking industry, the Chinese translation of “United Overseas Bank”, a major local bank, includes the characters “??”. I thus find that there is no aural similarity between the marks and Arthur’s sign merely because they both have two commonly used Chinese characters.

[37] As for conceptual similarity, no attempt was made to prove that the marks and Arthur’s sign are conceptually similar and in my view, they are not.

[38] In Polo/Lauren, the Court of Appeal made it clear (at [8]) that if a registered mark and the allegedly infringing sign are not similar, there is no “need to go into the third question of determining whether there exists a likelihood of confusion”. In any case, TCS did not submit any credible evidence of the likelihood of confusion and if it had been necessary to determine the issue, I would, after considering the marks and Arthur’s sign, have found that there was no likelihood of confusion. I thus dismiss TCS’s claim against Arthur under s 27(2) of the Act for infringement of his marks.

[39] As has been mentioned, TCS also relied on s 27(3) of the Act, which provides as follows:

[40] As I have found that TCS’s marks and Arthur’s sign are not similar, TCS cannot rely on s 27(3) of the Act to assert his claim against Arthur with respect to the signboard for VivoCity 2. As has been mentioned, there was, in any case, no evidence of a likelihood of confusion because of the usage of Arthur’s sign other than TCS’s uncorroborated and self-serving assertion to that effect.

[41] Depending on the circumstances, a plaintiff who fails to prove an infringement of his registered trade mark may yet succeed in an action for passing off. The authors of Kerly’s Law of Trade Marks and Trade Names, Sweet & Maxwell, 14 ed, 2005, stated at para 15-033:

[42] In Reckitt & Colman Products Ltd v Borden Inc and others [1990] 1WLR 491 at 499 (“Reckitt”), Lord Oliver of Aylmerton explained the meaning of “passing off” as follows:

[43] TCS alleged that Arthur had been passing off his pork noodles as those sold by “Hill Street Tai Hwa Pork Noodle”. As proof of this, he pointed to the use of the Chinese characters “???” in Arthur’s sign and two advertisements by Arthur in the Lianhe Zaobao and Lianhe Wanbao in November 2008.

[44] For TCS’s passing off action to succeed, the following must be established:

[45] In regard to goodwill, what is relevant in a passing off action is the goodwill between a trader and his customers. In Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217, Lord Macnaghten explained at 223-224:

[46] In his Defence and Counterclaim, Arthur admitted at [13] that TCS’s pork noodles business is “well known”. While reputation does not necessary mean that there is goodwill, I accept that there is some goodwill attached to TCS’s pork noodles business, and especially so since he has won quite a number of culinary awards.

[47] As for the requirement of misrepresentation, in Reckitt, Lord Oliver explained at p 499 that the plaintiff “must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or service of the plaintiff”. This statement was endorsed in CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR(R) 975 at [44] by the Court of Appeal. In Novelty Pte Ltd v Amanresort Ltd and another [2009] 3 SLR(R) 216, the Court of Appeal reiterated (at [69]) that the elements of misrepresentation and damage are very closely linked and must relate to the plaintiff’s goodwill. The Court also reiterated (at [77]) that a misrepresentation is actionable under the law of passing off only if it gives rise to confusion and added that it is open to the court to infer a likelihood of confusion from the surrounding facts since evidence of actual confusion is not a requirement for an action for passing off to succeed.

[48] In so far as the allegation of passing off relates only to the use of “???” or “Lau Dai Hua” by Arthur, it has no leg to stand on as I have found that TCS had consented to the use of this name by Arthur for the latter’s pork noodles business. In any case, for reasons stated earlier, “Hill Street Tai Hwa Pork Noodle” is not similar to “Lau Dai Hua”.

[49] TCS had another string in his bow with respect to passing off. He complained that on 5 November 2008 and 12 November 2008, Arthur placed advertisements in two Chinese newspapers, Lianhe Zaobao and Lianhe Wanbao respectively, in which he related the history of VivoCity in a manner that suggested a link between his business and VivoCity 2. Furthermore, in the 5 November 2008 advertisement (“the Lianhe Zaobao advertisement”), Arthur reproduced the culinary awards garnered by TCS.

[50] Arthur claimed that his historical account of his business in both the said advertisements was intended to link his stall to his grandfather’s pork noodles business at Hill Street and not to TCS’s business. Regardless of whether this is true, TCS’s culinary awards were included in the Lianhe Zaobao advertisement. Read as a whole, that advertisement linked VivoCity 2 to TCS’s business.

[51] Arthur had obviously made a mistake in using the wrong uncle’s culinary awards in the said advertisement. While his other uncle, TCC, who has also won many culinary awards, testified that he would have allowed Arthur to make use of his awards to advertise the latter’s pork noodles business, TCS objected to the use by Arthur of his culinary awards. Arthur claimed that he had TCS’s “general consent” to use the latter’s culinary awards to advertise his business at VivoCity 2 because the latter’s children had no interest in the pork noodles business. It may be recalled that the culinary awards had been handed over to Arthur for the purpose of promoting the failed VivoCity 1 business in 2006 and that Arthur had scanned the said awards for use in relation to that failed business. Arthur stated in his AEIC at paras 69, 71, 73, 74 and 81 as follows:

[52] I do not accept that TCS had agreed to allow Arthur to make use his culinary awards to promote VivoCity 2. As such, I find that Arthur had passed off his pork noodles as TCS’s pork noodles by including the latter’s culinary awards in the Lianhe Zaobao advertisement and that there is a likelihood of confusion as a result of this.

[53] TCS asserted that there had been a dilution of his goodwill as a result of the advertisement and he made a bald assertion that some customers who had tasted Arthur’s pork noodles found that it was inferior to his pork noodles. While I accept that there is a likelihood of some damage to TCS’s goodwill as a result of the misrepresentation in the Lianhe Zaobao advertisement, quantification of his loss is not easy as he has only one pork noodles stall with a limited seating capacity and he had conceded that his profits had not been affected by the opening of VivoCity 2. While damage to goodwill is a different matter, TCS did not furnish any credible evidence on the damage to his goodwill. In fact, he conceded that he did not know how to calculate his loss in goodwill and that he left this to the court. There being no evidence of the loss suffered or likely to be suffered, I award TCS nominal damages of $1,000 for loss of goodwill arising from the Lianhe Zaobao advertisement.

[54] TCS is also entitled to an order restraining Arthur from using his culinary awards without his authority and from attempting to connect his business with TCS’s business. Furthermore, Arthur is required to return to TCS all copies, including digital copies, of the latter’s culinary awards that are still in his possession.

[55] As for Arthur’s counterclaim, he pleaded in his Defence and Counterclaim as follows at [20]:

[56] Section 35(2) of the Act provides as follows:

[57] Arthur made it quite clear during the trial that he did not plead in his counterclaim that he had suffered any loss. When he cross-examined TCS’s son, Kang, he put his case to the latter as follows:

[58] Arthur altered his position in his closing submissions by asserting that he was entitled to compensation for preparing for the trial and learning the law on trade marks and passing off. He also claimed that as he was listed as a defendant in the present action in bank records, he could not get a bank loan to buy a new house after he sold his HDB flat last year. He added that had he obtained a bank loan to buy a property last year, he would have made a gain in the property market of around $461,538.46 by the end of 2009. He also sought compensation for his failure to obtain bank loans to expand his business because he was a defendant in the present action.

[59] Evidently, Arthur cannot expect the court to award him damages for the time spent in defending himself in the present action. In any case, TCS succeeded in establishing that Arthur had tried to pass off his pork noodles in the Lianhe Zaobao advertisement on 5 November 2008.

[60] As for Arthur’s claim in relation to his failure to make a gain in the property market or for his failure to obtain bank loans to expand his business, Arthur furnished no evidence of his alleged losses. More importantly, as these are really fanciful, they need not be considered any further.

[61] Arthur’s counterclaim is thus dismissed.