Caterpillar Inc v Ong Eng Peng: Trade Mark Infringement and Passing Off

In Caterpillar Inc v Ong Eng Peng, the High Court of Singapore ruled in favor of Caterpillar Inc, finding that Ong Eng Peng (formerly trading as Catplus International) had infringed Caterpillar's trade marks and engaged in passing off. The court granted injunctions to restrain Ong from further infringement and passing off, and ordered an inquiry as to damages or an account of profits. The case involved the use of the 'CATPLUS' mark by Ong in relation to construction equipment, which was found to be similar to Caterpillar's registered 'CAT' marks.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiff

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Caterpillar sues Ong Eng Peng for trade mark infringement and passing off due to the use of similar marks. The court ruled in favor of Caterpillar.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Caterpillar IncPlaintiffCorporationJudgment for PlaintiffWon
Ong Eng Peng (formerly trading as Catplus International)DefendantIndividualInjunction GrantedLost

3. Judges

Judge NameTitleDelivered Judgment
Tay Yong KwangJudgeYes

4. Counsels

Counsel NameOrganization
Daniel ChiaWong & Leow LLC
Andy LeckWong & Leow LLC
Geoffrey LiemWong & Leow LLC
Boey Swee SiangRajah & Tann

4. Facts

  1. The plaintiff, Caterpillar Inc., is a global company that designs, manufactures, and sells construction and mining equipment.
  2. The plaintiff is the registered proprietor of several trade marks in classes 7 and 12 in the Singapore trade marks register.
  3. The defendant, Ong Eng Peng, formerly traded as Catplus International.
  4. The defendant used the 'CATPLUS' mark in relation to construction equipment.
  5. The defendant's products featured a yellow and black get-up similar to the plaintiff's.
  6. The defendant's website and brochures advertised Catplus products.
  7. Private investigators visited the defendant's business address and were given brochures for Catplus products.

5. Formal Citations

  1. Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International), Suit 863/2004, [2006] SGHC 58

6. Timeline

DateEvent
Caterpillar Inc. formed from a merger of two companies.
Caterpillar Inc. began trading in Singapore.
Defendant became a director of Worldwide Techno-Equipment Group (1973) Pte Ltd.
Defendant's website created.
Defendant registered Catplus International.
Defendant used the offending marks in the course of business.
Plaintiff instructed private investigators to look into the business activities of the defendant.
Defendant terminated sole proprietorship of Catplus International.
Website in issue was altered.
Action commenced against the defendant.
Defendant became a director of Catplus International Pte Limited.
Defendant ceased to be a director of Catplus International Pte Limited.
Abdelhadi Mohamed saw a Catplus machine in Sudan.
Plaintiff's solicitors conducted an instant information search through BizNet on Worldwide Techno-Equipment Group (1973) Pte Ltd.
Syed Ghazanfar Habib emailed the Territory Manager of Caterpillar Sarl to enquire whether the plaintiff had an agreement to supply its engines to Catplus.
Plaintiff's solicitors conducted a WHOIS search on the Internet in respect of the defendant's website.
Syed Ghazanfar Habib visited a company in Lahore, Pakistan and saw a Catplus motor grader.
Defendant ceased to be a director in Worldwide Techno-Equipment Group (1973) Pte Ltd.
Judgment Date

7. Legal Issues

  1. Trade Mark Infringement
    • Outcome: The court found that the defendant had infringed the plaintiff's trade marks.
    • Category: Substantive
    • Sub-Issues:
      • Similarity of marks
      • Likelihood of confusion
    • Related Cases:
      • [1995] FSR 280
      • [2005] 4 SLR 816
      • [1996] RPC 281
      • [2000] 4 SLR 360
  2. Passing Off
    • Outcome: The court found that the defendant had engaged in passing off.
    • Category: Substantive

8. Remedies Sought

  1. Injunction
  2. Order for obliteration of the defendant’s infringing mark
  3. Order for delivery up or destruction of the defendant’s offending goods
  4. Inquiry as to damages
  5. Statutory damages
  6. Account of profits

9. Cause of Actions

  • Trade Mark Infringement
  • Passing Off

10. Practice Areas

  • Intellectual Property Litigation

11. Industries

  • Construction
  • Manufacturing

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Origins Natural Resources Inc v Origin Clothing LtdN/AYes[1995] FSR 280N/ACited to support the principle that in examining similarity, one does not take into account any external added matter or circumstances and the comparison should be mark for mark.
The Polo/Lauren Co, LP v Shop In Department Store Pte LtdN/AYes[2005] 4 SLR 816SingaporeDistinguished from the present case; cited by the defendant to argue dissimilarity between the marks, but the court found it unhelpful to the defendant's case.
British Sugar plc v James Robertson & Sons LtdN/AYes[1996] RPC 281N/ACited for the relevant factors in determining similarity of goods or services, including uses, physical nature, trade channels, and competitiveness.
Sime Darby Edible Products Ltd v Ngo Chew Hong Edible Oil Pte LtdN/AYes[2000] 4 SLR 360SingaporeCited to support that the court may take into account the likelihood of confusion on the part of the public overseas in determining whether there is likely to be confusion in Singapore.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(2)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(4)Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 2(1)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade mark infringement
  • Passing off
  • CAT marks
  • CATPLUS
  • Get-up
  • Likelihood of confusion
  • Goodwill
  • Construction equipment

15.2 Keywords

  • Trade mark
  • Infringement
  • Passing off
  • Caterpillar
  • Catplus
  • Construction equipment

17. Areas of Law

Area NameRelevance Score
Trademarks90
Passing Off90
Unfair Competition70
Misrepresentation30
Fraud and Deceit20
Contract Law10

16. Subjects

  • Trade Marks and Trade Names
  • Infringement
  • Passing off