Lam Soon v Whang: Trade Mark Trust Dispute & Amendment Application

In Lam Soon Oil and Soap Manufacturing Sdn Bhd & Another v Whang Tar Choung & Another, the High Court of Singapore addressed a trade mark dispute where Lam Soon Oil and Soap Manufacturing Sdn Bhd and Lam Soon (M) Bhd claimed that Whang Tar Choung held certain trade marks on trust for them. The plaintiffs sought the transfer of these trade marks. The court heard an application by Whang Tar Choung to amend his defence, which was partially dismissed due to undue delay and potential prejudice to the plaintiffs. The court allowed the amendment in respect of one paragraph but dismissed it in respect of the other two paragraphs. Whang Tar Choung appealed against the dismissal.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Application to amend the Defence was allowed in part and dismissed in part.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

High Court decision regarding trade mark ownership dispute and defendant's late application to amend defence. Application partially dismissed due to delay.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Lam Soon Oil and Soap Manufacturing Sdn BhdPlaintiffCorporationApplication to amend Defence allowed in partPartialDavinder Singh, Philip Jeyaretnam, Harpreet Singh Nehal, Jamie Yip, Tan Kok Peng
Lam Soon (M) BhdPlaintiffCorporationApplication to amend Defence allowed in partPartialDavinder Singh, Philip Jeyaretnam, Harpreet Singh Nehal, Jamie Yip, Tan Kok Peng
Whang Tar ChoungDefendantIndividualApplication to amend Defence dismissed in partLostKenneth Tan, Kevin Kwek
Forward Supreme Sdn BhdDefendantCorporationApplication to amend Defence dismissed in partLostKenneth Tan, Kevin Kwek

3. Judges

Judge NameTitleDelivered Judgment
Lee Seiu KinJudicial CommissionerYes

4. Counsels

Counsel NameOrganization
Davinder SinghHelen Yeo & Partners
Philip JeyaretnamHelen Yeo & Partners
Harpreet Singh NehalHelen Yeo & Partners
Jamie YipHelen Yeo & Partners
Tan Kok PengHelen Yeo & Partners
Kenneth TanKenneth Tan Partnership
Kevin KwekKenneth Tan Partnership

4. Facts

  1. WTC registered certain trade marks in his name.
  2. WTC assigned the trade marks to Forward Supreme on 2000-11-15.
  3. LSOS and LSMB claimed WTC held the trade marks on trust for them.
  4. Plaintiffs sought transfer of trade marks to LSMB.
  5. WTC refused to execute a Deed of Assignment in 1987.
  6. Plaintiffs commenced a similar action in Malaysia, which was dismissed.
  7. WTC raised issues of laches and time bar in the Malaysian suit.

5. Formal Citations

  1. Lam Soon Oil and Soap Manufacturing Sdn Bhd & Another v Whang Tar Choung & Another, Suit No 974 of 2000/T, SIC No 2097 of 2001, [2001] SGHC 318

6. Timeline

DateEvent
Plaintiffs filed writ and statement of claim.
Plaintiffs obtained interim injunction.
WTC applied for stay or dismissal of action.
WTC's application for stay or dismissal was dismissed.
WTC applied to stay proceedings pending appeal.
WTC and Forward Supreme filed their separate defences.
Stay application was dismissed.
Defendants applied to vacate trial dates.
Registrar re-fixed the trial dates.
Lai Siu Chiu J dismissed the appeal to vacate trial dates.
Affidavits of evidence-in-chief were exchanged.
Notice of change of solicitors was filed.
Trial started; WTC applied to amend defence.
Affidavit by WTC's son filed; application to amend defence partially dismissed.
WTC appealed against the decision to dismiss his application to amend his Defence.
Decision Date

7. Legal Issues

  1. Amendment of Defence
    • Outcome: The court dismissed part of the application to amend the defence due to undue delay and potential prejudice to the plaintiffs.
    • Category: Procedural
    • Sub-Issues:
      • Undue delay
      • Prejudice to other party
    • Related Cases:
      • [1987] AC 189
  2. Limitation Act
    • Outcome: The court considered the applicability of the Limitation Act in the context of the proposed amendments to the defence.
    • Category: Substantive
  3. Laches
    • Outcome: The court considered the defence of laches in the context of the proposed amendments to the defence.
    • Category: Substantive

8. Remedies Sought

  1. Transfer of Trade Marks

9. Cause of Actions

  • Breach of Trust
  • Implied Contract

10. Practice Areas

  • Commercial Litigation
  • Intellectual Property Litigation

11. Industries

  • Manufacturing

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Ketteman v Hansel PropertiesN/AYes[1987] AC 189N/ACited for the principle that there is a difference between allowing amendments to clarify issues and those that permit a distinct defence to be raised for the first time, and for the consequences of negligent conduct of litigation.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Limitation Act (Cap 163)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade Marks
  • Trust
  • Deed of Assignment
  • Limitation Act
  • Laches
  • Amendment of Defence
  • Forum non conveniens

15.2 Keywords

  • trade marks
  • trust
  • amendment
  • defence
  • limitation
  • laches

16. Subjects

  • Trade Marks
  • Trusts
  • Civil Procedure

17. Areas of Law

  • Civil Procedure
  • Trust Law
  • Trade Mark Law
  • Limitation Law