Tang Chay Seng v Tung Yang Wee Arthur: Trademark Infringement & Passing Off in Pork Noodle Business

In Tang Chay Seng v Tung Yang Wee Arthur, the High Court of Singapore addressed claims of trademark infringement and passing off in the context of a family-run pork noodle business. Tang Chay Seng, the plaintiff, sued his nephew, Tung Yang Wee Arthur, for allegedly infringing his registered trademarks and passing off his pork noodle stall as that of the plaintiff. The court (Tan Lee Meng J) dismissed the trademark infringement claim, finding that the plaintiff had likely consented to the defendant's use of a similar name. However, the court found the defendant liable for passing off due to the unauthorized use of the plaintiff's culinary awards in an advertisement. The court awarded nominal damages of $1,000 to the plaintiff and issued an order restraining the defendant from further misuse of the awards. The defendant's counterclaim was dismissed.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiff in part; nominal damages awarded for passing off.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

High Court case regarding trademark infringement and passing off in the pork noodle business. The court found partial passing off but dismissed the trademark claim.

1.7 Decision Date

9 August 2010

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Tang Chay Seng	Plaintiff	Individual	Judgment for Plaintiff in part	Partial	Deepak Natverlal of Yong Koh & Partners
Tung Yang Wee Arthur	Defendant	Individual	Claim Dismissed	Lost

3. Judges

Judge Name	Title	Delivered Judgment
Tan Lee Meng	Judge	Yes

4. Counsels

Counsel Name	Organization
Deepak Natverlal	Yong Koh & Partners

4. Facts

Plaintiff is the sole proprietor of a pork noodles stall and the registered proprietor of two composite trade marks.
Defendant is Plaintiff’s nephew and operates a pork noodles stall.
Plaintiff and Defendant jointly operated a pork noodles stall which failed.
Defendant used Plaintiff's culinary awards in an advertisement without permission.
Plaintiff claimed Defendant infringed his trade marks and passed off his business as Plaintiff's.

5. Formal Citations

Tang Chay Seng v Tung Yang Wee Arthur, Suit No 953 of 2008, [2010] SGHC 228

6. Timeline

Date	Event
1964-01-01	Plaintiff claimed his father handed over the pork noodles business to him.
1995-01-01	Plaintiff changed the name of his business to “Hill Street Tai Hwa Pork Noodle”.
2004-10-27	Plaintiff became the registered proprietor of the marks in Class 29 and Class 30.
2006-01-01	Plaintiff, his son, and Defendant set up a pork noodles stall at the VivoCity food court under the name “Hill Street Tai Hwa (VivoCity) Pork Noodle”.
2006-10-14	“Hill Street Tai Hwa (VivoCity) Pork Noodle” started business.
2006-10-01	“Hill Street Tai Hwa (VivoCity) Pork Noodle” closed down.
2008-07-31	Defendant and his father visited Plaintiff to inform him of the opening of VivoCity 2.
2008-10-04	Defendant's pork noodles stall opened for business.
2008-11-05	Defendant placed an advertisement for VivoCity 2 in the Lianhe Zaobao.
2008-11-18	Plaintiff’s solicitors wrote to Defendant alleging trademark infringement and passing off.
2008-11-26	Plaintiff placed an advertisement in the Lianhe Zaobao to inform the public that he had only one pork noodles stall.
2008-12-06	Defendant placed another advertisement for VivoCity 2 in the Lianhe Zaobao.
2008-12-17	Plaintiff instituted legal proceedings against Defendant for infringement of his trade marks and for passing off.
2010-08-10	Judgment reserved.

7. Legal Issues

Trademark Infringement
- Outcome: The court dismissed the trademark infringement claim, finding that the plaintiff had likely consented to the defendant's use of a similar name.
- Category: Substantive
- Related Cases:
  - [2006] 2 SLR(R) 690
  - [1996] RPC 281
Passing Off
- Outcome: The court found the defendant liable for passing off due to the unauthorized use of the plaintiff's culinary awards in an advertisement.
- Category: Substantive
- Related Cases:
  - [1990] 1WLR 491
  - [1901] AC 217
  - [1998] 1 SLR(R) 975
  - [2009] 3 SLR(R) 216

8. Remedies Sought

Injunction
Damages
Account of Profits
Apology

9. Cause of Actions

Trademark Infringement
Passing Off

10. Practice Areas

Intellectual Property Litigation
Commercial Litigation

11. Industries

Food and Beverage

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
The Polo/Lauren Co LP v Shop in Department Store Pte Ltd	Court of Appeal	Yes	[2006] 2 SLR(R) 690	Singapore	Adopted the British Sugar test for determining trademark infringement under s 27(2)(b) of the Trade Marks Act.
British Sugar plc v James Robertson & Sons Ltd	N/A	Yes	[1996] RPC 281	N/A	Outlined the test for determining whether there has been an infringement under s 27(2)(b) of the Trade Marks Act.
Nautical Concept Pte Ltd v Jeffery Mark Richard	N/A	Yes	[2007] 1 SLR(R) 1071	Singapore	Cited for the principle that one must take into account the imperfect recollection of a mark by a consumer when determining whether a mark and an allegedly infringing mark or sign are similar.
Lloyd Schuhfabrik Meyer v Klijsen Handel BV, Case C-342/97	European Court of Justice	Yes	[1999] 2 CMLR 1343	N/A	Stressed that the average consumer usually has no opportunity to make a direct comparison between the marks in question and he must rely on the “imperfect picture of them that he has kept in his mind”.
Sabel BV v Puma AG, Rudolf Dassler Sport, Case C-251/95	N/A	Yes	[1997] ECR 1-6191	N/A	Stressed that for the purpose of determining whether marks that are being compared are similar, it is the overall impression created by them in the light of their distinctive and dominant components that matters.
Festina Lotus SA v Romanson Co Ltd	High Court	Yes	[2010] SGHC 200	Singapore	Adopted the approach in Sabel and Lloyd Schuhfabrik.
Matratzen Concord GmbH v Office for Harmonisation in the Internal Market (OHIM) (Trademarks and Designs) Case T-6/01	Court of First Instance	Yes	[2002] ECR II- 4335	N/A	In the case of complex marks, a complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark.
Medion AG v Thomson Multimedia Sales Germany & Austria GmbH Case C-120/04	N/A	Yes	[2003] ECR I-8551	N/A	Reiterated the approach adopted in Matratzen in relation to the comparison of a composite mark with another mark or sign.
Reckitt & Colman Products Ltd v Borden Inc and others	N/A	Yes	[1990] 1WLR 491	N/A	Explained the meaning of “passing off”.
Inland Revenue Commissioners v Muller & Co’s Margarine Ltd	N/A	Yes	[1901] AC 217	N/A	Explained what goodwill is.
CDL Hotels International Ltd v Pontiac Marina Pte Ltd	Court of Appeal	Yes	[1998] 1 SLR(R) 975	Singapore	Endorsed the statement in Reckitt that the plaintiff “must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or service of the plaintiff”.
Novelty Pte Ltd v Amanresort Ltd and another	Court of Appeal	Yes	[2009] 3 SLR(R) 216	Singapore	Reiterated that the elements of misrepresentation and damage are very closely linked and must relate to the plaintiff’s goodwill.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005, Rev Ed)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Pork Noodles
Trade Mark
Passing Off
Culinary Awards
Goodwill
Lianhe Zaobao
Hill Street Tai Hwa Pork Noodle
Lau Dai Hua

15.2 Keywords

trademark infringement
passing off
pork noodles
Singapore
intellectual property

17. Areas of Law

Area Name	Relevance Score
Passing Off	95
Trademarks	90
Commercial Law	30
Contract Law	20

16. Subjects

Intellectual Property
Trade Marks
Business Law