Pan-West v Grand Bigwin: Trade Mark Infringement & Passing Off of KATANA Golf Clubs

Pan-West (Pte) Ltd, the plaintiff, sued Grand Bigwin Pte Ltd, the defendant, in the High Court of Singapore for trade mark infringement and passing off, concerning the KATANA GOLF trade mark and kG Logo. The defendant imported and sold golf clubs bearing the KATANA trade mark, which was registered in Japan by Umeda Shokai KK. The plaintiff argued that this infringed their Singapore-registered trade mark. The court dismissed the defendant's appeal against the summary judgment and allowed the plaintiff's appeal on costs, finding trade mark infringement and passing off.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Defendants’ appeal dismissed; Plaintiffs’ appeal on costs allowed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Pan-West sued Grand Bigwin for trade mark infringement and passing off related to KATANA golf clubs. The court dismissed the appeal and allowed the appeal on costs.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Pan-West (Pte) LtdPlaintiff, RespondentCorporationAppeal allowed in partPartial
Grand Bigwin Pte LtdDefendant, AppellantCorporationAppeal DismissedLost

3. Judges

Judge NameTitleDelivered Judgment
Lai Kew ChaiJudgeYes

4. Counsels

Counsel NameOrganization
G RadakrishnanKhattar Wong & Partners
Tan Tee JimKhor Thiam Beng & Partners
Khor Wee SiongKhor Thiam Beng & Partners

4. Facts

  1. The plaintiffs are the registered proprietor of the Singapore series mark KATANA Golf and kG Logo (T97/099241).
  2. The defendants imported and sold 6 drivers bearing the trade mark KATANA, registered in Japan by Umeda Shokai KK.
  3. The plaintiffs hired a private investigator who obtained a trap purchase of the driver bearing the KATANA trade mark from the defendants.
  4. The plaintiffs have been selling golf clubs bearing its trade mark since 1997.
  5. The driver in question was known as the 55ATi, which is not made by the plaintiffs.
  6. The plaintiffs had also sold, at one point in time, golf clubs bearing Umeda’s KATANA trade mark, as a distributor and retailer of golf clubs.

5. Formal Citations

  1. Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd, Suit 1442/2002, RA 89/2003, 90/2003, [2003] SGHC 250

6. Timeline

DateEvent
Plaintiffs have been selling golf clubs bearing its trade mark since 1997.
Umeda Shokai KK registered the trade mark KATANA in Japan.
Plaintiffs examined sales invoices and receipts over the period of October 1997 to July 2002.
Affidavit of Mr Loh Ah Joo dated 4th February 2003.
Affidavit of Mr Loh Ah Joo dated 4th March 2003.
Decision Date

7. Legal Issues

  1. Trade Mark Infringement
    • Outcome: The court found that the defendant's sale of golf clubs bearing the KATANA trade mark infringed the plaintiff's registered trade mark.
    • Category: Substantive
    • Sub-Issues:
      • Use of identical trade mark
      • Use of similar trade mark
      • Implied consent
  2. Passing Off
    • Outcome: The court found that the defendant's actions constituted the tort of passing off.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage
  3. Defence of Exhaustion of Rights
    • Outcome: The court rejected the defendant's defence of exhaustion of rights.
    • Category: Substantive

8. Remedies Sought

  1. Injunction to restrain trade mark infringement
  2. Injunction to restrain passing off
  3. Delivery up of infringing articles
  4. Full discovery of acts of infringement and passing off
  5. Inquiry as to damages or account of profits
  6. Costs
  7. Interest

9. Cause of Actions

  • Trade Mark Infringement
  • Passing Off

10. Practice Areas

  • Intellectual Property Litigation

11. Industries

  • Sporting Goods

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
SA Societe Diffusion v SA SadasN/AYes[2003] FSR 1N/ACited to determine the essential element of the trade mark.
Aktiebolaget Volvo & Anor v Heritage (Leicester) LimitedN/AYes[2000] FSR 253N/ACited to determine the identity of signs with the trade mark in Suit.
Castrol Limited v Automative Oil Supplies LimitedN/AYes[1983] RPC 315United KingdomDiscussed the defence of implied consent in relation to parallel imports.
Revlon Inc v Cripps & Lee LimitedN/AYes[1980] FSR 85United KingdomDiscussed the defence of implied consent in relation to parallel imports.
Betts v WillmottN/AYes(1871) LR 6 Ch App 239N/ADiscussed parallel imports within the statutory regime of patents.
CDL Hotels International Ltd v Pontiac Marina Pte LtdN/AYes[1998] 2 SLR 550SingaporeCited for the requirements for a passing off action.
Sin Heak Hin Pte Ltd & Anor v Yuasa Battery Singapore Co Pte LtdN/AYes[1995] 3 SLR 590SingaporeDiscussed parallel imports and passing off.
4711N/AYes(1953) 70 RPC 235N/ACited regarding the purpose of a mark to show a business connection with a foreign manufacturer.
EverglideN/AYes[1964] RPC 37N/ACited regarding the purpose of a mark to show a business connection with a foreign manufacturer.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 1999 Rev Ed) s 27Singapore
Trade Marks Act (Cap 332, 1999 Rev Ed) s 27Singapore
Trade Marks Act (Cap 332, 1999 Rev Ed) s 29(1)Singapore
Trade Marks Act (Cap 332, 1999 Rev Ed) s 27(6)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade mark infringement
  • Passing off
  • KATANA GOLF
  • kG Logo
  • Trade mark
  • Golf clubs
  • Implied consent
  • Exhaustion of rights
  • Parallel imports
  • Umeda Shokai KK
  • 55ATi driver

15.2 Keywords

  • Trade mark
  • Infringement
  • Passing off
  • Golf clubs
  • Katana
  • Singapore

17. Areas of Law

Area NameRelevance Score
Trademarks95
Passing Off90
Trade names80
Exhaustion of Rights70
Implied Consent65
Summary Judgement40
Contract Law10

16. Subjects

  • Trade Marks
  • Intellectual Property
  • Commercial Law