Mopi Pte Ltd v Central Mercantile Corporation: Trademark Dispute over Hi-Bond Mark
In Mopi Pte Ltd v Central Mercantile Corporation (S) Ltd, the High Court of Singapore, presided over by Justice Lai Siu Chiu, ruled in favor of Central Mercantile Corporation. The case centered on a trademark dispute over the 'Hi-Bond' mark, with both parties claiming first use. The court dismissed Mopi Pte Ltd's claim, finding that Central Mercantile Corporation had established prior use and goodwill, particularly in adhesive tapes. The court granted Central Mercantile Corporation an injunction against Mopi Pte Ltd's use of the Hi-Bond mark and ordered the withdrawal of pending trademark applications.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Plaintiffs' claim dismissed with costs; interlocutory judgment for Defendants on counterclaim.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Trademark dispute between Mopi Pte Ltd and Central Mercantile Corporation over the Hi-Bond mark, focusing on which party first used the mark.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Mopi Pte Ltd | Plaintiff | Corporation | Claim Dismissed | Lost | Tony Yeo, Peh Chong Yeow |
| Central Mercantile Corporation (S) Ltd | Defendant | Corporation | Interlocutory Judgment on Counterclaim | Won | G Radakrishnan, Tania Cheng |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lai Siu Chiu | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Tony Yeo | Lie Kee Pong Partnserhip |
| Peh Chong Yeow | Lie Kee Pong Partnserhip |
| G Radakrishnan | Khattar Wong & Partners |
| Tania Cheng | Khattar Wong & Partners |
4. Facts
- Mopi Pte Ltd and Central Mercantile Corporation (S) Ltd both market and sell adhesive tapes and related products.
- The dispute centers on the 'Hi-Bond' trademark, with both companies claiming first use and goodwill.
- Mopi Pte Ltd was previously a partnership under the name Mopi Engineering, registered in 1974.
- Lim Yew Hin (LYH), a former director of Central Mercantile Corporation (S) Ltd, later joined Mopi Pte Ltd.
- Central Mercantile Corporation (S) Ltd contract-manufactures its products from specialist manufacturers.
- Mopi Pte Ltd applied for registration of the Hi-Bond mark in 1979, but the registration expired.
- Central Mercantile Corporation (S) Ltd first used the Hi-Bond mark on OPP tapes in 1987 and masking tapes in 1988.
5. Formal Citations
- Mopi Pte Ltd v Central Mercantile Corporation (S) Ltd, Suit 637/2000/Q, [2001] SGHC 328
6. Timeline
| Date | Event |
|---|---|
| Central Mercantile Corporation (S) Ltd incorporated as Supremacy Industries Limited | |
| Mopi Engineering partnership registered | |
| Supremacy Industries Limited changed its name to Central Mercantile Corporation (S) Ltd | |
| Lim Yew Hin joined Central Mercantile Corporation (S) Ltd | |
| Mopi Pte Ltd incorporated | |
| Mopi Pte Ltd applied for registration of the Hi-Bond mark | |
| Mopi Pte Ltd obtained registration for the Mopi Hi-Bond mark | |
| Mopi Hi-Bond mark registration expired | |
| Central Mercantile Corporation (S) Ltd first used the Hi-Bond mark on OPP tapes | |
| Mopi Pte Ltd applied to register Hi-Bond mark | |
| Central Mercantile Corporation (S) Ltd first used the Hi-Bond mark on masking tapes | |
| Central Mercantile Corporation (S) Ltd first applied for registration of the Hi-Bond mark | |
| Connie Lim became executive director of Central Mercantile Corporation (S) Ltd | |
| Lim Yew Hin left Central Mercantile Corporation (S) Ltd | |
| Mopi Pte Ltd applied to register a trademark identical to the Star mark | |
| Mopi Pte Ltd instructed solicitors to engage private investigators to make trap purchases of Hi-Bond products from Central Mercantile Corporation (S) Ltd | |
| Mopi Pte Ltd asserted ownership of the Senisui trademark | |
| Central Industrial Corporation (CIC) asserted ownership of the Hi-Bond mark | |
| Central Mercantile Corporation (S) Ltd despatched private investigators to Mopi Pte Ltd's premises to make trap purchases of Hi-Bond adhesive tapes and sealants | |
| Central Mercantile Corporation (S) Ltd's private investigators purchased Nikko adhesive tapes and glue from Mopi Pte Ltd's premises | |
| Central Mercantile Corporation (S) Ltd's private investigators made trap purchases from Mopi Pte Ltd of Kawasaki adhesive tapes | |
| Mopi Pte Ltd commenced proceedings | |
| Central Mercantile Corporation (S) Ltd required Mopi Pte Ltd to cease and desist from acts of passing-off in respect of Senisui | |
| Judgment entered for Central Mercantile Corporation (S) Ltd by consent; permanent injunction granted against Mopi Pte Ltd for Nikko, Kawasaki, Senisui and Star trademarks | |
| Mopi Pte Ltd's Offer to Settle | |
| Central Mercantile Corporation (S) Ltd's Offer to Settle | |
| Decision Date | |
| Central Industrial Corporation (CIC) application for Hi-Bond mark lapsed |
7. Legal Issues
- Passing Off
- Outcome: The court found that the plaintiffs had failed to prove that the defendants had passed off their goods as those of the plaintiffs.
- Category: Substantive
- Sub-Issues:
- Misrepresentation
- Goodwill
- Damage
- Trademark Infringement
- Outcome: The court granted a permanent injunction against the plaintiffs, restraining them from manufacturing for sale and passing off adhesive tapes as those of the defendants under the Hi-Bond mark.
- Category: Substantive
8. Remedies Sought
- Injunction
- Inquiry as to Damages
- Account of Profits
9. Cause of Actions
- Passing Off
- Trademark Infringement
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Manufacturing
- Packaging
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Reckitt & Colman Products Limited v Borden Inc | N/A | Yes | [1990] RPC 341 | N/A | Cited for the 'classical trinity' test in passing-off actions: goodwill, misrepresentation, and damage. |
| CDL Hotels v Pontiac Marina Pte Ltd | N/A | Yes | [1998] 2 SLR 550 | Singapore | Cited for the principle that goodwill in a passing-off action is between a trader and its customers and attaches to a business. |
| Anheuser-Busch Inc v Budejovicky Budvar NP | N/A | Yes | [1984] FLR 413 | N/A | Cited regarding the principle that sporadic and occasional sales do not constitute carrying on a business in which there is goodwill. |
| Alteco Chemical Pte Ltd v Choong Yean Wah t/a Yamayo Stationery Manufacturer | N/A | Yes | [2000] 1 SLR 119 | Singapore | Cited to confirm the veracity of Dua Beng in relation to what he said about termination of the plaintiffs' Alteco super glue distributorship |
13. Applicable Rules
| Rule Name |
|---|
| O 22A r 9(3) of the Rules of Court |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| No applicable statutes | |
15. Key Terms and Keywords
15.1 Key Terms
- Hi-Bond
- Trademark
- Passing Off
- Goodwill
- Adhesive Tapes
- Contract Manufacture
- OPP Tapes
- Masking Tapes
15.2 Keywords
- trademark
- passing off
- Hi-Bond
- adhesive tapes
- Singapore
- intellectual property
16. Subjects
- Trademark Dispute
- Intellectual Property
- Commercial Litigation
17. Areas of Law
- Intellectual Property Law
- Trademark Law
- Passing Off