Nippon Paint v ICI Paint: Passing Off Dispute over '3 in 1' Paint
Nippon Paint (Singapore) Co Pte Ltd sued ICI Paint (Singapore) Pte Ltd in the High Court of Singapore, alleging that ICI Paint's 'Supreme 3 in 1' interior wall paint was a passing off of Nippon Paint's '3 in 1' interior wall paint. Nippon Paint claimed that the '3 in 1' mark had acquired a secondary meaning and goodwill. The court, presided over by Justice Amarjeet Singh, dismissed Nippon Paint's claim, finding that '3 in 1' was a descriptive term and that Nippon Paint had not established that the term had acquired a secondary meaning or that ICI Paint's use of 'Supreme 3 in 1' caused confusion.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Plaintiffs' claim dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Nippon Paint sued ICI Paint for passing off, alleging ICI's 'Supreme 3 in 1' paint infringed on Nippon's '3 in 1' paint. The court dismissed Nippon's claim.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Nippon Paint (Singapore) Co Pte Ltd | Plaintiff | Corporation | Claim Dismissed | Lost | Alban Kang, Leonard Hazra, William Chan |
| ICI Paint (Singapore) Pte Ltd | Defendant | Corporation | Claim Dismissed | Won | Low Chai Chong, Lee Ai Ming, Ian Fok |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Amarjeet Singh | Judicial Commissioner | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Alban Kang | David Lim & Partners |
| Leonard Hazra | David Lim & Partners |
| William Chan | David Lim & Partners |
| Low Chai Chong | Rodyk & Davidson |
| Lee Ai Ming | Rodyk & Davidson |
| Ian Fok | Rodyk & Davidson |
4. Facts
- Nippon Paint introduced '3 in 1' interior wall paint in February 1995.
- ICI Paint introduced 'Supreme 3 in 1' interior wall paint in October 1999.
- Nippon Paint claimed ICI Paint was passing off its product as Nippon Paint's.
- The Registry of Trade Marks objected to Nippon Paint's application to register 'Nippon 3 in 1' mark.
- Nippon Paint disclaimed exclusivity to the mark '3 in 1' and the letter 'n'.
- ICI Paint registered their 'Supreme 3 in 1' mark.
- Paint contractors constitute 80% of paint purchasers.
5. Formal Citations
- Nippon Paint (Singapore) Co Pte Ltd v ICI Paint (Singapore) Pte Ltd, Suit 600104/2000, [2000] SGHC 218
6. Timeline
| Date | Event |
|---|---|
| ICI Dulux Wash & Wear paint introduced. | |
| Nippon Paint 3 in 1 paint introduced. | |
| Nippon Paint filed application to register 'Nippon 3 in 1' mark. | |
| ICI Dulux Wash & Wear with Roundel 3 in 1 paint introduced. | |
| ICI Dulux Wash & Wear with 3 in 1 Soft Sheen Wall Finish paint introduced. | |
| Nippon Paint renewed application to register its 'Nippon 3 in 1' mark. | |
| ICI Dulux Supreme 3 in 1 paint introduced. | |
| Nippon Paint 3 in 1 MEDIfresh paint introduced. | |
| Plaintiffs filed proceedings against the defendants. | |
| Defendants registered their 'Supreme 3 in 1' mark. | |
| Judgment delivered. |
7. Legal Issues
- Passing Off
- Outcome: The court held that the plaintiffs failed to establish a claim of passing off.
- Category: Substantive
- Sub-Issues:
- Misrepresentation
- Goodwill
- Secondary Meaning
- Acquiescence
- Disclaimer
- Estoppel
- Confusion
- Related Cases:
- [1896] AC 199
- [2000] 3 SLR 145
- Whether '3 in 1' is a descriptive term
- Outcome: The court found that the mark '3 in 1' was a descriptive term of ordinary usage.
- Category: Substantive
- Whether '3 in 1' acquired a secondary meaning
- Outcome: The court found that the plaintiffs had not shown that the mark '3 in 1' had acquired a secondary meaning.
- Category: Substantive
- Whether goodwill was acquired in the term '3 in 1'
- Outcome: The court found that the plaintiffs had not acquired goodwill in the term '3 in 1'.
- Category: Substantive
- Whether there was misrepresentation
- Outcome: The court found that there was no misrepresentation on the part of the defendants.
- Category: Substantive
8. Remedies Sought
- Injunction
- Delivery and destruction of offending paint product
- Obliteration of offending name or mark
- Damages
- Account of profits
9. Cause of Actions
- Passing Off
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Manufacturing
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Frank Reddaway & Co v George Banham & Co | House of Lords | Yes | [1896] AC 199 | United Kingdom | Cited for the principle that a descriptive name can become associated with a particular maker's goods to the extent that its use by another manufacturer would deceive a purchaser. |
| Super Coffeemix Manufacturing Ltd v Unico Trading Pte & Anor | Court of Appeal | No | [2000] 3 SLR 145 | Singapore | Cited for the principle that a plaintiff must show that the descriptive part of a mark has become distinctive of the plaintiff's product. |
| Office Cleaning Services Ltd v Westminster Office Cleaning Association | N/A | Yes | 63 RPC 39 | N/A | Cited for the principle that where a mark is descriptive, a minor difference is sufficient to distinguish one mark from another. |
| Horlicks Malted Milk Co v Summerkill | N/A | Yes | 34 RPC 63 | N/A | Cited for the principle that a descriptive term cannot be monopolized, even if the manufacturer has extensively advertised the product. |
| Canadian Shredded Wheat Co Ltd v Kellog Co of Canada, Ltd | N/A | Yes | [1938] 1 All ER 618 | N/A | Cited as an example of a case where a product name was held to be descriptive despite the manufacturer's intention. |
| McCain International Ltd v Country Fair Foods Ltd & Anor | N/A | Yes | [1981] RPC 69 | N/A | Cited as an example of a case where a product name was held to be descriptive despite the manufacturer's intention. |
| Woodward's TM; Woodward v Boulton Macro Ltd | N/A | Yes | [1915] 87 LJ Ch 27 | N/A | Cited as an example of a case where a product name was held to be descriptive despite the manufacturer's intention. |
| Schweppes v Gibbens | N/A | Yes | [1905] 22 RPC 601 | N/A | Cited for the principle that careless buyers may be disregarded when assessing the likelihood of confusion. |
| CDL Hotels International Ltd v Pontiac Marina | N/A | Yes | [1998] 2SLR 550 | Singapore | Cited for the principle that it would not be impossible to establish distinctiveness in relation to a descriptive word. |
| Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd | N/A | Yes | [2000] 2 SLR 766 | Singapore | Cited for the principle that it would not be impossible to establish distinctiveness in relation to a descriptive word. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Passing off
- Goodwill
- Descriptive mark
- Secondary meaning
- Distinctiveness
- Misrepresentation
- Confusion
- Acquiescence
- Disclaimer
- Estoppel
15.2 Keywords
- Nippon Paint
- ICI Paint
- 3 in 1 paint
- Supreme 3 in 1
- Passing off
- Singapore
- Intellectual Property
- Trade Mark
16. Subjects
- Intellectual Property
- Trade Marks
- Passing Off
17. Areas of Law
- Tort
- Passing Off
- Intellectual Property Law
- Trade Mark Law