Super Coffeemix v Unico Trading: Trade Mark Infringement & Passing Off of 'Coffeemix' Brand

Super Coffeemix Manufacturing Ltd sued Unico Trading Pte Ltd for trade mark infringement and passing off, alleging that Unico's use of 'Coffeemix' with their 'INDOCAFE' product infringed Super Coffeemix's registered 'SUPER & DEVICE COFFEEMIX' trade mark. The High Court dismissed the action and Unico's counterclaim to expunge the trade mark or disclaim 'COFFEEMIX'. The Court of Appeal dismissed Super Coffeemix's appeal, finding no likelihood of confusion, but allowed Unico's appeal, ordering a disclaimer for 'COFFEEMIX' in Super Coffeemix's trade mark.

1. Case Overview

1.1 Court

Court of Appeal

1.2 Outcome

Appeal in CA 184/99 dismissed; appeal in CA 185/99 allowed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Singapore Court of Appeal case regarding trade mark infringement and passing off, focusing on the use of 'Coffeemix' in coffee products.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Super Coffeemix Manufacturing LtdAppellant, RespondentCorporationAppeal dismissedLost
Unico Trading Pte LtdRespondent, AppellantCorporationAppeal allowedWon

3. Judges

Judge NameTitleDelivered Judgment
Chao Hick TinJustice of AppealYes
L P TheanJustice of AppealNo
Yong Pung HowChief JusticeNo

4. Counsels

Counsel NameOrganization
Sarjit Singh GillShook Lin & Bok
Suhaimi LazimShook Lin & Bok
Steven SeahDrew & Napier
Jimmy YimDrew & Napier

4. Facts

  1. The plaintiffs are the registered proprietors of the trade mark `SUPER & DEVICE COFFEEMIX`.
  2. The plaintiffs manufacture and sell convenient food products, particularly coffee and cereal products.
  3. The plaintiffs' main product is a 3-in-1 instant coffee mix, comprising a mixture of coffee, sugar and non-dairy creamer.
  4. The defendants are the distributors of INDOCAFE coffee products in Singapore.
  5. The defendants market a 3-in-1 mixture of coffee, sugar and non-dairy creamer under the `INDOCAFE` trade mark and which also bore the additional style `Coffeemix`.
  6. The plaintiffs commenced proceedings against the defendants for trade mark infringement and for passing off of their goods.
  7. The defendants counterclaimed to expunge the plaintiffs` registered trade mark or to impose a disclaimer over the word `COFFEEMIX`.

5. Formal Citations

  1. Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd and Another and Another Appeal, CA 184/1999,185/1999, [2000] SGCA 29

6. Timeline

DateEvent
Super Coffeemix Enterprises (partnership) first introduced 3-in-1 instant coffee mix under the mark `SUPER COFFEEMIX`.
`N-Rich` registered its trade mark `N-Rich` in Part B of the Register for, inter alia, `coffee mix`.
The partnership acquired new premises and machinery to cope with the increased orders.
The partnership applied to register in Part B of the Trade Marks Register their `SUPER & DEVICE COFFEEMIX` trade mark for `coffee` in Class 30.
The second defendants registered their trade mark `INDOCAFE` in Part B of the Register in respect of, inter alia, coffee.
The first defendants have been selling INDOCAFE coffee products in Singapore since 1990.
The plaintiffs were incorporated as a private limited company in 1991.
The plaintiffs acquired a new and bigger factory.
The mark was eventually registered in Part B and the registration backdated to 1990.
The first defendants began marketing a 3-in-1 mixture of coffee, sugar and non-dairy creamer under the `INDOCAFE` trade mark and which also bore the additional style `Coffeemix`.
The plaintiffs, through their solicitors, wrote to the first defendants informing the latter of the plaintiffs` rights in the trade mark, `SUPER & DEVICE COFFEEMIX`.
The plaintiffs commenced these proceedings against the defendants for trade mark infringement and for passing off of their goods as plaintiffs` product, SUPER COFFEEMIX.
Decision Date

7. Legal Issues

  1. Trade Mark Infringement
    • Outcome: The court found that the defendants had used the word 'Coffeemix' in the trade mark sense, but relief was granted to the defendants under s 46(2) of the Act because the use of the mark was not likely to deceive or cause confusion.
    • Category: Substantive
    • Sub-Issues:
      • Use of essential feature of mark
      • Likelihood of confusion
      • Use of mark in trade mark sense
  2. Passing Off
    • Outcome: The court held that the plaintiffs failed to establish a claim in passing off because they did not prove that the word 'COFFEEMIX' was distinctive of their goods alone at the relevant date.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage
  3. Rectification of Register
    • Outcome: The court allowed the appeal and ordered that the word 'coffeemix' in the registered mark of the plaintiffs be disclaimed.
    • Category: Procedural
    • Sub-Issues:
      • Expunging mark
      • Imposing disclaimer
      • Aggrieved persons

8. Remedies Sought

  1. Injunction
  2. Damages
  3. Account of Profits

9. Cause of Actions

  • Trade Mark Infringement
  • Passing Off

10. Practice Areas

  • Intellectual Property Litigation
  • Trade Mark Infringement
  • Commercial Litigation

11. Industries

  • Food and Beverage
  • Manufacturing

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Super Coffeemix Manufacturing Ltd v Unico Trading Pte LtdHigh CourtYes[2000] 1 SLR 587SingaporeThe case was appealed from the High Court, and the Court of Appeal reviewed the High Court's decision.
Crosfield & Sons` ApplicationN/AYes[1909] 26 RPC 837United KingdomCited for the principle that a descriptive mark can be a trade mark.
Reddaway v BanhamN/AYes[1896] AC 199United KingdomCited for the principle that a descriptive mark can become distinctive.
COFFEEMIX TMN/AYes[1998] RPC 717United KingdomCited as an example where the Appointed Person dismissed an appeal against the Registrar`s refusal to register `COFFEEMIX` for coffee preparations, coffee based beverages, etc, indicating that `Coffeemix` is descriptive.
De Cordova & Ors v Vick Chemical CoN/AYes[1951] 68 RPC 103United KingdomCited for the principle that the court decides what the essential feature of a mark is.
Associated Rediffusion v Scottish TelevisionN/AYes[1957] RPC 409United KingdomCited to illustrate that inserting one's own name to the word mark of the plaintiffs does not necessarily mean that the defendants have not infringed the mark of the plaintiffs.
Coca Cola Co (Canada) v Pepsi-Cola Co (Canada)N/AYes[1942] 59 RPC 127CanadaCited for the principle that where two marks have common elements, the court would pay more regard to the parts that are not common.
Broadhead`s ApplicationN/AYes[1950] 67 RPC 209United KingdomCited for the principle that where two marks have common elements, the court would pay more regard to the parts that are not common.
Harrods` ApplicationN/AYes[1935] 52 RPC 65United KingdomCited for the principle that where two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features.
Seixo v ProzendeN/AYes[1866] LR 1 Ch 192United KingdomCited for the principle that the degree of resemblance necessary to constitute infringement is incapable of definition a priori.
Harker Stagg`s TMN/AYes[1953] 70 RPC 205United KingdomCited to indicate that where pharmaceutical products were involved, the court would be more inclined to protect the public from the consequences of deception and confusion.
Morecambe & Heysham Corp v MeccaN/AYes[1966] RPC 423United KingdomCited for the principle that the law expects the consumers to use ordinary care and intelligence.
Eno v Dunn & CoN/AYes[1893] 10 RPC 261United KingdomCited as a passing off case where the court granted an injunction to restrain the defendant from using the word `Fruit Salts` on their product `Dunn`s Fruit Salts`.
Perry v TruefittN/AYes[1862] 6 Beav 66United KingdomCited as a passing off case which was concerned with the `Medicated Mexican Balm`.
Reckitt & Colman Products v BordenN/AYes[1990] 1 All ER 873United KingdomCited for the elements required to succeed in a passing off claim.
CDL Hotels International Ltd v Pontiac MarinaCourt of AppealYes[1998] 2 SLR 550SingaporeCited for the principle that it would be harder to acquire distinctiveness in relation to a descriptive word.
Lifestyle 1.99 Pte Ltd v S$1.99 Pte LtdCourt of AppealYes[2000] 2 SLR 766SingaporeCited for the principle that it would be harder to acquire distinctiveness in relation to a descriptive word.
Office Cleaning Services Ltd v Westminster Window and General CleanersN/AYes[1946] 63 RPC 39United KingdomCited for the principle that where a mark is descriptive, minor differences would be held to be sufficient to distinguish.
Cheng Kang Pte Ltd v Sze JishianHigh CourtYes[1992] 2 SLR 214SingaporeThe trial judge relied upon this case to dismiss the counterclaim on the technical ground that the defendants were not an `aggrieved` person within the meaning of s 39(1)(a).
Appollinaris Co`s TMN/AYes[1891] 2 Ch 186United KingdomCited for the explanation of the scope of the equivalent English provision of `aggrieved` parties.
Appollinaris Co`s TMN/AYes[1891] 8 RPC 137United KingdomCited for the explanation of the scope of the equivalent English provision of `aggrieved` parties.
Re Powell`s TMN/AYes[1894] 11 RPC 4United KingdomCited for the principle that it is a public mischief that there should remain upon the Register a mark which ought not to be there, and by which many persons may be affected.
Daiquiri Rum TMN/AYes[1969] RPC 600United KingdomCited for the philosophy behind the Trade Marks Act and why the word `aggrieved` should be given a broad sense.
Davidoff Extension SA v Davidoff Commercio e Industria LtdHigh CourtYes[1987] SLR 462SingaporeCited for the principle that the court always has a discretion under s 39 to rectify or not in the light of all the circumstances of the case.
Continental Liqueurs Pty Ltd v GF Heublein & Bro IncoHigh CourtYes[1960] 103 CLR 422AustraliaCited for the principle that the primary consideration to the question of expunging was public interest rather than the unmeritorious conduct of the applicant and that such public interest would generally be better served by rectifying the register.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332) s 46(2)Singapore
Trade Marks Act s 39(1)(a)Singapore
Trade Marks Act s 16Singapore
Trade Marks Act s 20Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Coffeemix
  • Trade mark infringement
  • Passing off
  • Disclaimer
  • Aggrieved party
  • Distinctiveness
  • Likelihood of confusion
  • Essential feature
  • 3-in-1 coffee mix

15.2 Keywords

  • trade mark
  • infringement
  • passing off
  • coffeemix
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Trademarks90
Passing Off90
Contract Law10
Commercial Disputes5

16. Subjects

  • Trade Mark Law
  • Intellectual Property Law
  • Passing Off