Tay Long Kee v Tan Beng Huwah: Passing-Off, Injunctions & Material Non-Disclosure in Trademark Dispute
Tay Long Kee Impex Pte Ltd, the plaintiff-appellants, appealed against the decision of the High Court of Singapore, which set aside an ex parte interlocutory injunction obtained against Tan Beng Huwah (trading as Sin Kwang Wah), the defendant-respondent, in a passing-off action. The Court of Appeal dismissed the appeal, finding material non-disclosure by the appellants in obtaining the initial injunction and determining that a fresh injunction was not warranted due to a lack of likelihood of confusion between the parties' products.
1. Case Overview
1.1 Court
Court of Appeal1.2 Outcome
Appeal dismissed.
1.3 Case Type
Civil
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Appeal over interlocutory injunction in a passing-off case. The court addressed material non-disclosure, ex parte applications, and trademark issues.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Tay Long Kee Impex Pte Ltd | Appellant, Plaintiff | Corporation | Appeal Dismissed | Lost | Adrian Tan |
| Tan Beng Huwah (trading as Sin Kwang Wah) | Respondent, Defendant | Individual | Injunction Set Aside | Won | N Sreenivasan, Toh Wee Jin |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chao Hick Tin | Justice of Appeal | Yes |
| L P Thean | Justice of Appeal | No |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Adrian Tan | Drew & Napier |
| N Sreenivasan | Anthony & Wee Jin |
| Toh Wee Jin | Anthony & Wee Jin |
4. Facts
- Tay Long Kee Impex Pte Ltd manufactures and distributes backpacks under the brand name `hayrer`.
- Tan Beng Huwah sells backpacks under the brand name `devico`.
- Tay Long Kee alleged that Tan Beng Huwah's `devico` bags copied features of the `hayrer` bags.
- Tay Long Kee claimed the respondent's bags bore a similar bar-code prefix number.
- Tay Long Kee alleged the design of the `devico` logo closely resembled that of the `hayrer` logo.
- Tay Long Kee claimed the general color and design of the respondent`s `devico` backpacks were visually the same as the colour and design of their `hayrer` bags.
- Tay Long Kee alleged that the respondent copied the wording of the lifetime warranty with only a change in the brand name.
5. Formal Citations
- Tay Long Kee Impex Pte Ltd v Tan Beng Huwah (trading as Sin Kwang Wah), CA 63/1999, [2000] SGCA 22
6. Timeline
| Date | Event |
|---|---|
| Tan Beng Huwah started selling backpacks under the brand name `devico`. | |
| Ex parte application came up before the court. | |
| Interim injunction granted restraining the defendant from dealing in bags bearing bar code prefix number `8887710`. | |
| Injunction order served on the respondent. | |
| GP Selvam J lifted the injunction. | |
| Decision Date |
7. Legal Issues
- Material Non-Disclosure
- Outcome: The court found that the appellants had engaged in material non-disclosure, which contributed to the decision to discharge the injunction.
- Category: Procedural
- Sub-Issues:
- Failure to make full and frank disclosure
- Deliberate suppression of material facts
- Related Cases:
- [1917] 1 KB 486
- [1988] 3 All ER 188
- [1992] 1 SLR 562
- Ex Parte Application for Interlocutory Injunction
- Outcome: The court determined that the initial judge had been satisfied with the explanation for the ex parte application, but the subsequent judge could still consider misrepresentations or suppression of facts.
- Category: Procedural
- Sub-Issues:
- Urgency
- Justification for ex parte application
- Related Cases:
- [1977] 80 DLR (3d) 634
- Passing-Off
- Outcome: The court found that there was no real likelihood of confusion between the backpacks of the appellants and the respondent.
- Category: Substantive
- Sub-Issues:
- Likelihood of confusion
- Damage to goodwill
8. Remedies Sought
- Interlocutory Injunction
9. Cause of Actions
- Passing-Off
- Copyright Infringement
10. Practice Areas
- Commercial Litigation
- Intellectual Property Law
11. Industries
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Griffin Steel Founderies Ltd v Canadian Association of Industrial, Mechanical & Allied Workers | N/A | Yes | [1977] 80 DLR (3d) 634 | Canada | Cited regarding the circumstances under which an injunction should be granted ex parte. |
| R v Kensington Income Tax Commissioners | N/A | Yes | [1917] 1 KB 486 | England and Wales | Cited for the principle that an applicant for an ex parte interlocutory injunction has a duty to make a full and frank disclosure. |
| Brinks-MAT Ltd v Elcombe | N/A | Yes | [1988] 3 All ER 188 | England and Wales | Cited for the definition of 'material facts' in the context of the duty of full and frank disclosure and the court's discretion when non-disclosure is established. |
| Poon Kng Siang v Tan Ah Keng | N/A | Yes | [1992] 1 SLR 562 | Singapore | Cited for the principle that material facts need not be decisive or conclusive. |
| QBE Insurance Ltd v Sim Lim Finance Ltd | N/A | Yes | [1987] SLR 15 | Singapore | Cited for the principle that an appellate tribunal should not disturb the discretion exercised by the judge below unless it is shown that the latter had erred in law or principle. |
| Wright Norman & Anor v Oversea-Chinese Banking Corp Ltd | N/A | Yes | [1992] 2 SLR 710 | Singapore | Cited for the principle that an appellate tribunal should not disturb the discretion exercised by the judge below unless it is shown that the latter had erred in law or principle. |
| Tang Siew Choy & Ors v Certact Pte Ltd | N/A | Yes | [1993] 3 SLR 44 | Singapore | Cited for the principle that an appellate tribunal should not disturb the discretion exercised by the judge below unless it is shown that the latter had erred in law or principle. |
| Bank Mellat v Nikpour | N/A | Yes | [1985] FSR 87 | N/A | Cited for the principle that the court has a discretion, notwithstanding proof of material non-disclosure which justifies or requires the immediate discharge of the ex parte order, nevertheless to continue the order, or to make a new order on terms. |
| Lloyds Bowmaker Ltd v Britannia Arrow Holdings plc (Lavens, third party) | N/A | Yes | [1988] 3 All ER 178 | England and Wales | Cited for the principle that the court has a discretion to continue the injunction, or to grant a fresh injunction in its place, notwithstanding that there may have been non-disclosure when the original ex parte injunction was obtained. |
| Yardley & Co & Ors v Higsons & Ors | N/A | Yes | [1984] FSR 304 | N/A | Cited to illustrate the application of a less rigid approach towards material non-disclosures in the context of an ordinary interlocutory injunction. |
| Lloyds Bowmaker Ltd v Britannia Arrow Holdings | N/A | Yes | [1988] 3 All ER 178 | England and Wales | Cited for the principle that even though a first injunction is discharged because of material non-disclosure, the court has a discretion whether to grant a second Mareva injunction at a stage when the whole of the facts, including that of the original non-disclosure, are before it. |
| Havana House Cigar & Tobacco Merchants Ltd v Naeini | N/A | Yes | [1998] 79 CPR (3d) 496 | Canada | Cited for the principle that the court will take a dim view of a second interlocutory injunction application when a plaintiff has not aggressively been advancing the case toward trial. |
| Newsgroup Newspapers Ltd v Mirror Group Newspaper (1986) Ltd | N/A | Yes | [1991] FSR 487 | N/A | Cited for the principle that it is incumbent upon a plaintiff whose position has been protected by an interlocutory injunction to proceed with the action with due diligence. |
| Chuan Hong Petrol Station Pte Ltd v Shell Singapore (Pte) Ltd | N/A | Yes | [1992] 2 SLR 729 | Singapore | Cited for the test of the 'lower risk of injustice' in determining whether to grant an injunction. |
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
- Interlocutory injunction
- Ex parte application
- Material non-disclosure
- Goodwill
- Bar-code prefix number
- Lifetime warranty
- Brand name
- Likelihood of confusion
15.2 Keywords
- passing off
- injunction
- trademark
- copyright
- Singapore
16. Subjects
- Intellectual Property
- Civil Procedure
- Trademark Law
17. Areas of Law
- Civil Procedure
- Injunctions
- Passing-Off
- Trademark Law