Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd: Passing Off & Goodwill in Retail Business

Lifestyle 1.99 Pte Ltd appealed against the High Court's decision to grant an injunction restraining them from using the name `Lifestyle 1.99`, arguing it constituted passing off the business of S$1.99 Pte Ltd (trading as ONE.99 SHOP). The Court of Appeal of Singapore, on 12 April 2000, allowed the appeal, finding that the name `ONE.99` is descriptive rather than fanciful and that Lifestyle 1.99's use of the name did not amount to misrepresentation. The court dismissed the respondent's claim.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeal allowed.

1.3 Case Type

Civil

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Appeal regarding passing off. Court held 'ONE.99' is descriptive, not fancy, and Lifestyle 1.99's use didn't misrepresent connection, dismissing the claim.

1.7 Decision Date

11 April 2000

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Lifestyle 1.99 Pte Ltd	Appellant	Corporation	Appeal allowed	Won	Hee Theng Fong of Hee Theng Fong & Co Chua Ai Chun of Hee Theng Fong & Co
S$1.99 Pte Ltd (trading as ONE.99 SHOP)	Respondent	Corporation	Claim Dismissed	Lost	Yvonne Tang of Drew & Napier Morris John of Drew & Napier Jupiter Kong of Drew & Napier

3. Judges

Judge Name	Title	Delivered Judgment
Chao Hick Tin	Justice of the Court of Appeal	No
L P Thean	Justice of the Court of Appeal	No
Yong Pung How	Chief Justice	Yes

4. Counsels

Counsel Name	Organization
Hee Theng Fong	Hee Theng Fong & Co
Chua Ai Chun	Hee Theng Fong & Co
Yvonne Tang	Drew & Napier
Morris John	Drew & Napier
Jupiter Kong	Drew & Napier

4. Facts

S$1.99 Pte Ltd operated a chain of retail shops under the style `ONE.99 Shop`.
ONE.99 Shop opened its first retail outlet on 6 April 1997.
All goods sold in ONE.99 Shop were priced at a fixed price of $1.99.
Lifestyle 1.99 Pte Ltd was incorporated on 8 September 1998.
Lifestyle 1.99 sold goods at $1.99, but also had 'Premium Counters' with other prices.
Respondents alleged Lifestyle 1.99's name was confusingly similar to ONE.99.

5. Formal Citations

Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd (trading as ONE.99 SHOP), CA 160/1999, [2000] SGCA 19

6. Timeline

Date	Event
1995-12-01	ONE.99 Shop name registered with the Registry of Businesses.
1997-04-06	ONE.99 Shop opened first retail outlet.
1997-09-01	Rubber Band started selling Sanrio products at various department stores at $1.99.
1998-02-01	Rubber Band adopted strategy of holding joint promotional sales with Watson's retail chain.
1998-07-31	Joint promotion held at Takashimaya’s `Talking Hall`.
1998-09-08	Lifestyle 1.99 Pte Ltd incorporated.
1998-09-09	Lifestyle 1.99 commenced trading.
1999-02-18	Drew & Napier sent a letter to Lifestyle 1.99 stating that S$1.99 Pte Ltd had acquired goodwill in the name `ONE.99`.
2000-04-12	Court of Appeal delivered judgment allowing the appeal.

7. Legal Issues

Passing Off
- Outcome: The court held that the elements of passing off were not established.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage
- Related Cases:
  - [1990] 1 All ER 873
Goodwill
- Outcome: The court found that the respondents had acquired goodwill in their business.
- Category: Substantive
- Related Cases:
  - [1901] AC 217
  - [1998] 2 SLR 550
Misrepresentation
- Outcome: The court held that the use of 'Lifestyle 1.99' was not a misrepresentation.
- Category: Substantive
- Sub-Issues:
  - Descriptive name
  - Secondary meaning
  - Distinctiveness
- Related Cases:
  - [1907] 2 Ch 312
  - [1981] RPC 69
  - [1916] 33 RPC 108
  - [1973] CPR (2d) 122
  - [1896] AC 199
  - [1899] AC 326
  - [1946] 63 RPC 39
Unfair Competition
- Outcome: The court held that there is no tort of unfair competition.
- Category: Substantive
- Related Cases:
  - [1981] 1 All ER 213

8. Remedies Sought

Injunction
Restraining the appellants from passing off their business

9. Cause of Actions

Passing Off

10. Practice Areas

Intellectual Property
Commercial Litigation

11. Industries

Retail

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Reckitt & Colman Products Ltd v Borden Inc & Ors	N/A	No	[1990] 1 All ER 873	N/A	Cited for the three elements that must be proved in an action for passing off: goodwill, misrepresentation, and damage.
IRC v Muller & Co`s Margarine Ltd	N/A	Yes	[1901] AC 217	N/A	Cited for the definition of goodwill as the benefit and advantage of the good name, reputation, and connection of a business.
CDL Hotels International Ltd v Pontiac Marina Pte Ltd	Court of Appeal	Yes	[1998] 2 SLR 550	Singapore	Cited for the principle that advertising and media publication can help a business to acquire goodwill.
British Vacuum Cleaner Co v New Vacuum Cleaner Co	N/A	No	[1907] 2 Ch 312	N/A	Cited for the distinction between descriptive and fancy names in passing off actions.
McCain International Ltd v Country Fair Foods Ltd	Court of Appeal	Yes	[1981] RPC 69	N/A	Cited to support the argument that the name 'oven chips' was descriptive of the product and not a fancy name.
Horlick`s Malted Milk Co v Summerskill	N/A	Yes	[1916] 33 RPC 108	N/A	Cited to support the argument that descriptive words cannot be monopolized.
Ancona Printing Ltd v Kwik-Kopy Corp	High Court	Yes	[1973] CPR (2d) 122	Ontario	Cited to show that the court would treat words as descriptive notwithstanding deliberate alterations made to them.
Frank Reddaway & Co v George Banham & Co	N/A	Yes	[1896] AC 199	N/A	Cited as an example of a case where a descriptive term acquired a secondary meaning.
Cellular Clothing Co Ltd v Maxton and Murray	N/A	Yes	[1899] AC 326	N/A	Cited to show the difficulty of proving secondary meaning for a descriptive name.
Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd	N/A	Yes	[1946] 63 RPC 39	N/A	Cited to illustrate that when descriptive words are used, a slight difference between the names would suffice to distinguish them.
Burberrys v JC Cording & Co Ltd	N/A	Yes	[1909] 26 RPC 693	N/A	Cited as another case where the principle of slight differences sufficing to distinguish descriptive names was applied.
Deane v Schofield	N/A	Yes	[1962] RPC 179	N/A	Cited as another case where the principle of slight differences sufficing to distinguish descriptive names was applied.
Joseph v Lee	County Court of Frontenne	No	[1984] 78 CPR (2d) 159	Ontario	Cited by the respondents to argue that a name or mark in figures could acquire distinctiveness, but distinguished by the court.
Hymac Ltd v Priestman Brothers Ltd	N/A	No	[1978] RPC 495	N/A	Cited to show that figures could be distinctive, but distinguished on the facts.
PC Products Ltd v Wilfred Doulton	N/A	No	[1957] RPC 199	N/A	Cited as a case where the mark was clearly fanciful and an injunction was granted.
Slazenger & Sons v Feltham & Co	N/A	No	[1889] 6 RPC 531	N/A	Cited as a case where the use of the words `The Demon` on a tennis racquet was clearly fanciful.
Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd	N/A	Yes	[1981] 1 All ER 213	N/A	Cited to illustrate that there is no tort of unfair competition.
Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd	N/A	Yes	[1981] 1 WLR 193	N/A	Cited to illustrate that there is no tort of unfair competition.
Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd	N/A	Yes	[1981] RPC 429	N/A	Cited to illustrate that there is no tort of unfair competition.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
No applicable statutes

15. Key Terms and Keywords

15.1 Key Terms

Passing off
Goodwill
Misrepresentation
Descriptive name
Fancy name
Secondary meaning
Distinctiveness
Unfair competition

15.2 Keywords

Passing off
Goodwill
Retail
Singapore
Trademark
Trade name

17. Areas of Law

Area Name	Relevance Score
Passing Off	95
Unfair Competition	30
Commercial Law	10
Contract Law	10

16. Subjects

Intellectual Property
Tort Law
Retail Business