Mopi Pte Ltd v Central Mercantile Corp (S) Ltd: Trademark Infringement & Passing Off Dispute

In Mopi Pte Ltd v Central Mercantile Corp (S) Ltd, the High Court of Singapore heard an appeal regarding the assessment of damages for trademark infringement and passing off. Mopi Pte Ltd sued Central Mercantile Corp (S) Ltd for infringing on the 'Hi-Bond' trademark concerning adhesive tapes. The court dismissed both the plaintiff's and defendant's appeals, upholding the assistant registrar's original damage assessment.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Both appeals dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Mopi Pte Ltd sued Central Mercantile Corp for trademark infringement and passing off. The court assessed damages related to 'Hi-Bond' adhesive tapes.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Mopi Pte LtdDefendant, AppellantCorporationAppeal DismissedLost
Central Mercantile Corp (S) LtdPlaintiff, RespondentCorporationAppeal DismissedWon

3. Judges

Judge NameTitleDelivered Judgment
Choo Han TeckJudgeYes

4. Counsels

Counsel NameOrganization
Rozalynne AsmaliDrew and Napier LLC
Tony YeoDrew and Napier LLC
Joanna Koh Wei SerDrew and Napier LLC
G RadakrishnanRada and Associates

4. Facts

  1. The plaintiff sued the defendant for passing off and trademark infringements concerning five marks.
  2. The products in question included glues, sealants, and adhesive tapes.
  3. The five marks in issue were Hi-Bond, Kawasaki, Nikko, Senisni and Star.
  4. The defendant counterclaimed on the same marks.
  5. The defendant withdrew its claim in respect of glues and sealants for the Hi-Bond mark.
  6. The defendant consented to judgment in respect of the other marks.
  7. Lai J found the plaintiff in breach of the Hi-Bond trademark by using it on adhesive tapes.

5. Formal Citations

  1. Mopi Pte Ltd v Central Mercantile Corp (S) Ltd, Suit 637/2000, RA 33/2005, 38/2005, [2005] SGHC 183

6. Timeline

DateEvent
Justice Lai Siu Chiu ordered an inquiry into damages.
Interest on $37,261.00 awarded from this date.
Plaintiff claims tapes were shipped back to China after this date.
Interest on $238,527 awarded from this date.
Costs of the assessment awarded to the defendant on a standard basis up to this date.
Costs of assessment awarded to the plaintiff on an indemnity basis from this date.
Plaintiff made an offer to settle.
Judge consulted with assessors from Pricewaterhouse Coopers.
Judgment reserved.

7. Legal Issues

  1. Assessment of Damages for Trademark Infringement and Passing Off
    • Outcome: The court upheld the assistant registrar's method for calculating net profits and the percentage to be paid over. It also upheld the refusal to award damages for loss of reputation, price reduction, and loss of goodwill.
    • Category: Substantive
    • Sub-Issues:
      • Calculation of net profits made by infringing party
      • Percentage of net profits to be paid over by infringing party
      • Damages for loss of reputation
      • Damages due to price reduction
      • Damages for loss of goodwill
    • Related Cases:
      • [2001] SGHC 328
  2. Offer to Settle and Costs
    • Outcome: The court upheld the award of indemnity costs to the plaintiff from 7 August 2004, as the plaintiff's offer to settle was more than the amount allowed by the assistant registrar.
    • Category: Procedural

8. Remedies Sought

  1. Damages
  2. Account of Profits

9. Cause of Actions

  • Passing Off
  • Trade Mark Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Commercial Litigation

11. Industries

  • Manufacturing

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Unknown v UnknownHigh CourtYes[2001] SGHC 328SingaporeThe judgment refers to the earlier trial decision by Justice Lai Siu Chiu, which ordered the inquiry into damages. This case is central to the current judgment as it establishes the basis for the damages assessment being appealed.
Alexander and Co v Henry and Co, Mitchell Henry, and Waller and CoUnknownYes(1895) 12 RPC 360UnknownCited in support of the principle that a price reduction by a trader should not automatically be assumed to be caused by an infringer, as it may be influenced by other factors.
Draper v Trist and Tristbestos Brake Linings, LdUnknownYes(1939) 56 RPC 429UnknownCited in support of the principle that a price reduction by a trader should not automatically be assumed to be caused by an infringer, as it may be influenced by other factors.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Order 22A rule 9(3) Rules of CourtSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Hi-Bond
  • Adhesive Tapes
  • Passing Off
  • Trademark Infringement
  • Damages Assessment
  • Net Profits
  • Offer to Settle
  • Indemnity Costs

15.2 Keywords

  • trademark infringement
  • passing off
  • damages
  • Hi-Bond
  • adhesive tapes
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Damages85
Passing Off80
Assessment of Damages80
Trademark Infringement75
Trademarks70
Civil Procedure65
Contract Law60

16. Subjects

  • Intellectual Property
  • Civil Procedure
  • Damages