Kickapoo v Monarch: Trade Mark Infringement & Passing Off Dispute

Kickapoo (Malaysia) Sdn Bhd and Kickapoo Beverage Pte Ltd appealed against the High Court's decision in favor of The Monarch Beverage Co (Europe) Ltd, regarding trade mark infringement and passing off. The Court of Appeal of Singapore, delivered by Andrew Phang Boon Leong JA, dismissed the appeal, finding that Kickapoo (Malaysia) Sdn Bhd infringed Monarch's trade marks by using unauthorized beverage bases and misrepresented that their drinks were produced under Monarch's authorization, thus constituting passing off. The court acknowledged Monarch's breach of contract and involvement in a conspiracy against Kickapoo, but held that these actions did not excuse Kickapoo's infringement.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeal dismissed with costs and the usual consequential orders.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Kickapoo Malaysia appeals a decision finding trade mark infringement and passing off. The court dismissed the appeal, finding infringement and misrepresentation.

1.7 Decision Date

10 December 2009

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Kickapoo (Malaysia) Sdn Bhd	Appellant	Corporation	Appeal Dismissed	Lost	R Chandran of R Chandran & Co
Kickapoo Beverage Pte Ltd	Appellant	Corporation	Appeal Dismissed	Lost	R Chandran of R Chandran & Co
The Monarch Beverage Co (Europe) Ltd	Respondent	Corporation	Appeal Dismissed	Won	Ponnampalam Sivakumar of Joseph Lopez & Co

3. Judges

Judge Name	Title	Delivered Judgment
Chao Hick Tin	Justice of the Court of Appeal	Yes
Andrew Phang Boon Leong	Justice of the Court of Appeal	Yes
V K Rajah	Justice of the Court of Appeal	Yes

4. Counsels

Counsel Name	Organization
R Chandran	R Chandran & Co
Ponnampalam Sivakumar	Joseph Lopez & Co

4. Facts

The respondent is the registered proprietor of the trade marks “Kickapoo Joy Juice” and “Kickapoo”.
The first appellant was granted an exclusive licence to produce and sell “Kickapoo Joy Juice”.
The relationship between the respondent and the first appellant soured after the respondent took over the trade marks.
The respondent served six termination notices on the first appellant, which were rejected.
The respondent gave a licence to HSC to produce and sell Kickapoo beverages in Shanghai.
The respondent increased the price of beverage bases supplied to the first appellant by 1,000%.
The first appellant purchased beverage bases from unauthorized sources.
The Malaysian Ministry of Health raided the first appellant’s bottling plant and found unauthorized beverage bases.
The respondent terminated the Licence Agreement with the first appellant.
The beverage labels stated that the drinks sold were under authorisation from the Monarch Company.

5. Formal Citations

Kickapoo (Malaysia) Sdn Bhd and Another v The Monarch Beverage Co (Europe) Ltd, CA 40/2009, [2009] SGCA 63
The Monarch Beverage Company (Europe) Ltd v Kickapoo (Malaysia) Sdn Bhd, , [2009] SGHC 55

6. Timeline

Date	Event
1996-01-01	Exclusive licence granted to Kickapoo (Malaysia) Sdn Bhd by The Monarch Company Inc.
2001-12-01	Monarch served first termination notice on KM.
2002-09-20	Monarch gave HSC a licence to produce and sell Kickapoo beverages in Shanghai.
2002-09-23	Monarch informed KM of a price increase for beverage bases.
2004-11-24	Malaysian Ministry of Health raided KM’s bottling plant.
2005-02-14	Monarch’s representative bought a PET bottle and a can from a supermarket.
2005-06-15	Monarch terminated the Licence Agreement with KM.
2005-06-15	Monarch appointed HSPCL as its bottler and distributor in the Singapore market.
2009-12-11	Judgment reserved.

7. Legal Issues

Trade Mark Infringement
- Outcome: The court held that the appellants infringed the respondent's trade mark by using unauthorized beverage bases.
- Category: Substantive
- Sub-Issues:
  - Use of trade mark without consent
  - Use of trade mark outside the scope of license
Passing Off
- Outcome: The court held that the appellants misrepresented that their drinks were produced under the authorization of the respondent, thus constituting passing off.
- Category: Substantive
- Sub-Issues:
  - Misrepresentation as to quality
  - Misrepresentation as to authority
  - Misrepresentation as to trade source
Breach of Contract
- Outcome: The court acknowledged the respondent's breach of contract but held that it did not excuse the appellants' trade mark infringement.
- Category: Substantive
- Sub-Issues:
  - Failure to supply goods
  - Unreasonable price increase
Tort of Conspiracy
- Outcome: The court acknowledged the respondent's involvement in a conspiracy against the appellants but held that it did not excuse the appellants' trade mark infringement.
- Category: Substantive
- Sub-Issues:
  - Conspiracy to injure
  - Unlawful means

8. Remedies Sought

Damages
Inquiry as to damages or account of profits

9. Cause of Actions

Trade Mark Infringement
Passing Off
Breach of Contract
Tort of Conspiracy

10. Practice Areas

Intellectual Property Litigation
Commercial Litigation

11. Industries

Beverage

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
The Monarch Beverage Company (Europe) Ltd v Kickapoo (Malaysia) Sdn Bhd	High Court	Yes	[2009] SGHC 55	Singapore	The appeal was against part of the decision of the trial judge.
Future Enterprises Pte Ltd v McDonald’s Corp	Court of Appeal	Yes	[2007] 2 SLR 845	Singapore	Cited for the principle that different parts of the Trade Marks Act must be interpreted individually and independently.
MP-Bilt Pte Ltd v Oey Widarto	High Court	Yes	[1999] 3 SLR 592	Singapore	Cited for the principle that the duty to mitigate does not arise if the innocent party affirms the contract.
Caterpillar Inc v Ong Eng Peng	High Court	Yes	[2006] 2 SLR 669	Singapore	Cited as a case recognizing the risk of litigation as a head of damage in passing off actions.
Mobil Petroleum Company, Inc v Hyundai Mobis	Court of Appeal	Yes	[2009] SGCA 38	Singapore	Cited as a case recognizing the risk of litigation as a head of damage in passing off actions.
Nation Fittings (M) Sdn Bhd v Oystertec Plc	High Court	Yes	[2006] 1 SLR 712	Singapore	Cited for the principle that there is no need for Monarch to show actual damage as such, the demonstration of a probability of damage being sufficient.
Weir Warman Ltd v Research & Development Pty Ltd	High Court	Yes	[2007] 2 SLR 1073	Singapore	Cited for the principle that to establish the requisite trade connection for a valid trade mark licence, there must be at least some control or supervision of the use of the trade mark by the purported licensee.
Scandecor Developments AB v Scandecor Marketing AB	House of Lords	Yes	[2002] FSR 7	England and Wales	Cited for the argument that there cannot be misrepresentation as to trade source because the public associates Kickapoo drinks with KM and not with Monarch.
Bowden Wire Ltd v Bowden Brake Company Ltd	House of Lords	Yes	(1914) 31 RPC 385	England and Wales	Cited for the idea that by licensing the trade mark for use by someone else, the public would be deceived and might therefore “buy something in the belief that it was the make of a man whose reputation they knew, whereas it was the make of someone else”.
Sony K K v Saray Electronics (London) Limited	Court of Appeal	Yes	[1983] FSR 302	England and Wales	Cited for the principle that when goods are sold under authority, there is a ready inference that the quality of the goods sold is vouched for by the manufacturer or trade mark proprietor.
United States Surgical Corp v Downs Surgical Canada Ltd	Ontario High Court of Justice	Yes	(1982) 67 CPR (2d) 140	Canada	Cited for the principle that a reasonable inference is that the manufacturer had vouched for the quality of the reconditioned staplers.
Yunnan Baiyao Group Co Ltd v Tong Jum Chew Pte Ltd	High Court	Yes	[2003] 1 SLR 62	Singapore	Cited for the principle that in passing off cases of this sort, the difference in quality is an element which must be proved.
A G Spalding & Bros v A W Gamage Ltd	N/A	Yes	(1915) 32 RPC 273	N/A	Cited for the principle that one cannot pass off an inferior quality product as the superior one.
Colgate-Palmolive Ltd v Markwell Finance Ltd	N/A	Yes	[1989] RPC 497	N/A	Cited for the principle that one cannot pass off an inferior quality product as the superior one.
Rainforest Coffee Products Pte Ltd v Rainforest Café, Inc	Court of Appeal	Yes	[2000] 2 SLR 549	Singapore	Cited for the principle that such control ensured that there would be “a trade connection between the registered proprietor of the trade mark and the goods sold under the trade mark by the purported licensee”.
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd	House of Lords	Yes	[1975] 1 WLR 819	England and Wales	Cited for the principle that the aim is to put the plaintiff in question (so far as is possible) in the same position it would have been if the wrong(s) had not been committed and that the plaintiff bears the burden of specifically proving its loss; put simply, the main aim is to compensate the plaintiff and not to punish the defendant.
Keppel Tatlee Bank Ltd v Teck Koon Investment Pte Ltd	High Court	Yes	[2000] 2 SLR 366	Singapore	Cited for the equitable maxim that “He who comes to equity must come with clean hands”.
Townsing Henry George v Jenton Overseas Investment Pte Ltd	Court of Appeal	Yes	[2007] 2 SLR 597	Singapore	Cited for the equitable maxim that “He who comes to equity must come with clean hands”.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 1999 Rev Ed)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark infringement
Passing off
Licence agreement
Beverage bases
Authorised sources
Unauthorised sources
Termination notice
Misrepresentation
Trade source
Quality control

15.2 Keywords

trade mark
infringement
passing off
kickapoo
monarch
beverage
license
agreement

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Passing Off	90
Contract Law	60
Commercial Disputes	40
Chancery and Equity	30
Corporate Law	30

16. Subjects

Trade Marks and Trade Names
Equity