Yunnan Baiyao v Tong Jum Chew: Passing Off & Goodwill in Herbal Drug Trade

Yunnan Baiyao Group Co Ltd sued Tong Jum Chew Pte Ltd and Tong Yen Tien in the High Court of Singapore, alleging passing off of the Camellia brand of Yunnan Paiyao as a product of the plaintiffs. The court, presided over by Judicial Commissioner Choo Han Teck, dismissed the plaintiffs' claim, finding that the plaintiffs had not established goodwill in the words 'Yunnan Paiyao' and that the defendants' actions did not constitute passing off.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Plaintiffs' claim is dismissed.

1.3 Case Type

Civil

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Yunnan Baiyao Group sued Tong Jum Chew for passing off its Camellia brand as theirs. The court dismissed the claim, finding no evidence of passing off.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Yunnan Baiyao Group Co LtdPlaintiffCorporationClaim DismissedLost
Tong Jum Chew Pte LtdDefendantCorporationJudgment for DefendantWon
Tong Yen TienDefendantIndividualJudgment for DefendantWon

3. Judges

Judge NameTitleDelivered Judgment
Choo Han TeckJudicial CommissionerYes

4. Counsels

Counsel NameOrganization
Margaret Neo Kee HengHoh & Partners
Petula Wong I-LinHoh & Partners
Tan Tee JimWendy Wong & Partners
David KhongWendy Wong & Partners

4. Facts

  1. Plaintiffs are the sole licensed manufacturers of Yunnan Paiyao since 1995.
  2. Defendants imported and sold Camellia brand Yunnan Paiyao.
  3. Camellia brand Yunnan Paiyao has been sold in Singapore for over 30 years.
  4. First defendants were appointed sole agents for YIE in Singapore in 2000.
  5. YIE purchased its supply of Yunnan Paiyao from the plaintiffs.
  6. Plaintiffs marketed Yunnan Paiyao under two brand names: Camellia and Yunfeng.
  7. The packaging of the Camellia brand was done by the plaintiffs with materials supplied by YIE.

5. Formal Citations

  1. Yunnan Baiyao Group Co Ltd v Tong Jum Chew Pte Ltd & Another, Suit No 163 of 2002, [2002] SGHC 246

6. Timeline

DateEvent
Plaintiffs were given the license to be the sole manufacturers of Yunnan Paiyao for 20 years.
Plaintiffs obtained the rights to manufacture Yunnan Paiyao from a small diverse group of manufacturers.
Yunfeng brand Yunnan Baiyao was sold in Singapore.
Plaintiffs terminated their contract with YIE.
First defendants were appointed the sole agents for YIE in Singapore.
Mr. Chan was introduced to the plaintiffs.
Teck Hong Hung Pte Ltd purchased one shipment of Yunfeng Yunnan Baiyao.
Requirement for expiry dates to be shown on the product came into force in China.
Plaintiffs appointed Teck Hong Hung Pte Ltd as its sole agents in Singapore.
Plaintiffs commenced action against the defendants.
Decision Date

7. Legal Issues

  1. Passing Off
    • Outcome: The court held that the plaintiffs failed to prove the elements of passing off.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage
    • Related Cases:
      • Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341
  2. Goodwill
    • Outcome: The court held that the plaintiffs did not establish sufficient goodwill in the words 'Yunnan Paiyao'.
    • Category: Substantive
    • Sub-Issues:
      • Reputation
      • Association with product
    • Related Cases:
      • Reddaway v Banham [1896] 13 RPC 218

8. Remedies Sought

  1. Injunction
  2. Damages

9. Cause of Actions

  • Passing Off

10. Practice Areas

  • Commercial Litigation
  • Intellectual Property Litigation

11. Industries

  • Pharmaceuticals
  • Healthcare

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Hirsch v JonasN/AYesHirsch v Jonas (1876) 3 Ch 584N/ADistinguished from the present case, which was not an application for an interlocutory injunction.
Yomeishu Seizo Co Ltd v Sinma Medical Products (S) Pte LtdN/AYesYomeishu Seizo Co Ltd v Sinma Medical Products (S) Pte Ltd [1991] SLR 499SingaporeCited as an example of descriptive terms to which no one party may claim any goodwill through their use of them.
Reddaway v BanhamN/AYesReddaway v Banham [1896] 13 RPC 218N/ACited for the principle that a plaintiff may acquire goodwill in words taken from the common stock of language.
Reckitt & Colman Products Ltd v Borden IncN/AYesReckitt & Colman Products Ltd v Borden Inc [1990] RPC 341N/ACited for the principle that damage is a critical element in an action for passing off.
A. G. Spalding & Bros v V.A.W. GamageN/AYesA. G. Spalding & Bros v V.A.W. Gamage (1915) 32 RPC 273N/ACited as an example of passing off an inferior quality product as a superior one.
Colgate-Palmolive Ltd v Markwell Finance LtdN/AYesColgate-Palmolive Ltd v Markwell Finance Ltd (1989) RPC 497N/ACited as an example of passing off an inferior quality product as a superior one.
Champagne Heidsieck et Cie v Scotto & BishopN/AYesChampagne Heidsieck et Cie v Scotto & Bishop (1926) 43 RPC 101N/ACited as an example of passing off an inferior quality product as a superior one.
Wilkinson Sword Ltd v Cripps v Lee LtdN/AYesWilkinson Sword Ltd v Cripps v Lee Ltd [1982] FSR 16N/ACited as an example of passing off an inferior quality product as a superior one.
Sin Heak Hin Pte Ltd v Yuasa Battery Singapore Pte LtdN/AYesSin Heak Hin Pte Ltd v Yuasa Battery Singapore Pte Ltd [1995] 3 SLR 590SingaporeCited for the principle that parallel importation of a genuine product does not amount to passing off.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
No applicable statutes

15. Key Terms and Keywords

15.1 Key Terms

  • Yunnan Paiyao
  • Camellia brand
  • Yunfeng brand
  • Passing off
  • Goodwill
  • Expiry date
  • Counterfeit
  • Parallel importation

15.2 Keywords

  • Yunnan Paiyao
  • Passing off
  • Herbal medicine
  • Singapore
  • Trademark
  • Goodwill

17. Areas of Law

Area NameRelevance Score
Passing Off95
Trademarks40
Commercial Law30
Contract Law20

16. Subjects

  • Intellectual Property
  • Passing Off
  • Tort Law
  • Herbal Medicine