Doctor's Associates Inc v Lim Eng Wah: Trade Mark Infringement & Passing Off Dispute
Doctor's Associates Inc., a US corporation, sued Lim Eng Wah, trading as Subway Niche in Singapore, for trade mark infringement and passing off of its 'SUBWAY' trade mark. The defendant applied to strike out the originating summons, arguing abuse of process due to a previous similar action being struck out for non-compliance with a peremptory order. The High Court of Singapore, presided over by Justice Kan Ting Chiu, dismissed the defendant's appeal, allowing Doctor's Associates Inc. to proceed with the action to determine the issues of trade mark infringement and passing off on their merits.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Defendant's appeal dismissed with costs.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Doctor's Associates Inc sues Lim Eng Wah for trade mark infringement and passing off related to the 'SUBWAY' trade mark. The court dismissed the defendant's appeal.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Doctor's Associates Inc | Plaintiff | Corporation | Appeal dismissed | Won | Adrian Wong, Max Ng, Sharon Yeow |
| Lim Eng Wah (trading as Subway Niche) | Defendant, Respondent | Individual | Appeal dismissed | Lost | Engelin Teh, Thomas Sim |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Kan Ting Chiu | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Adrian Wong | Gateway Law Corportion |
| Max Ng | Gateway Law Corportion |
| Sharon Yeow | Gateway Law Corportion |
| Engelin Teh | Engelin Teh Practice LLC |
| Thomas Sim | Engelin Teh Practice LLC |
4. Facts
- Doctor's Associates Inc. sued Lim Eng Wah for trade mark infringement and passing off.
- The plaintiff claimed the defendant infringed its 'SUBWAY' trade mark by using 'SUBWAY NICHE'.
- A previous suit (Suit 764) was struck out due to the plaintiff's failure to provide security for costs.
- The plaintiff failed to comply with an unless order to furnish security by a specified deadline.
- The plaintiff argued its failure to comply was due to administrative difficulties and a tight timeline.
- The plaintiff provided a banker's guarantee nine days after the deadline.
- The plaintiff placed $40,000 with its solicitors to ensure compliance with future security orders.
5. Formal Citations
- Doctor’s Associates Inc v Lim Eng Wah (trading as Subway Niche), Originating Summons No. 462 of 2010/Q (Registrar's Appeal No.296 of 2010/V), [2011] SGHC 104
6. Timeline
| Date | Event |
|---|---|
| Plaintiff sued the defendant for trade mark infringement in Suit No. 764 of 2008. | |
| Assistant Registrar ordered Plaintiff to file and exchange the AEIC. | |
| Consent order for the plaintiff to furnish security in the sum of $19,000 within seven days. | |
| Assistant Registrar issued an unless order for security for costs. | |
| Deadline for compliance with unless order. | |
| Plaintiff’s application for a stay of proceedings pending the appeal was dismissed. | |
| Banker’s guarantee issued by the Hongkong and Shanghai Banking Corporation Limited to the defendant. | |
| Plaintiff filed an application to set aside the judgment. | |
| Application to set aside the judgment was dismissed. | |
| Plaintiff filed the present originating summons. | |
| Defendant applied to strike out the originating summons. | |
| Valerie Pochron deposed in an affidavit in the present action. | |
| Defendant’s application to strike out the originating summons was heard. | |
| Defendant’s application to strike out the originating summons was dismissed. | |
| Judgment reserved. |
7. Legal Issues
- Abuse of Process
- Outcome: The court found that the plaintiff's failure to comply with the unless order was not contumelious and allowed the action to proceed.
- Category: Procedural
- Sub-Issues:
- Failure to comply with peremptory order
- Contumelious conduct
- Trade Mark Infringement
- Outcome: The court did not make a ruling on the merits of the trade mark infringement claim, but allowed the plaintiff to proceed with the action to determine the issue.
- Category: Substantive
- Passing Off
- Outcome: The court did not make a ruling on the merits of the passing off claim, but allowed the plaintiff to proceed with the action to determine the issue.
- Category: Substantive
8. Remedies Sought
- Declaration that the plaintiff’s trade mark “SUBWAY” is well known in Singapore
- Declaration that the continuing use of “SUBWAY NICHE” by the defendant amounts to an infringement of the plaintiff’s registered trade mark in Singapore
- Injunction to restrain the use of “SUBWAY NICHE”
- Restraint from passing off
- Damages
- Delivery up of any offending material
9. Cause of Actions
- Trade Mark Infringement
- Passing Off
10. Practice Areas
- Trade Mark Infringement
- Passing Off
- Intellectual Property Litigation
11. Industries
- Food and Beverage
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Letang v Cooper | Queen's Bench | Yes | [1965] 1 QB 232 | England and Wales | Cited for the definition of a cause of action. |
| Changhe International Investments Pte Ltd (formerly known as Druidstone Pte Ltd) v Dexia BIL Asia Singapore Ltd (formerly known as Banque Internationale A Luxembourg BIL (Asia) Ltd) | Court of Appeal | Yes | [2005] 3 SLR(R) 344 | Singapore | Cited for the principle that a second suit may be struck out as an abuse of process if the first was struck out for failure to comply with a peremptory order, unless the litigant can show the failure was not contumelious. |
| Janov v Morris | N/A | Yes | [1981] 1 WLR 1389 | England and Wales | Cited as a landmark English decision regarding striking out an action as an abuse of process for failure to comply with a peremptory order. |
| Samuels v Linzi Dresses Ltd | N/A | Yes | [1981] QB 115 | England and Wales | Cited as a landmark English decision regarding striking out an action as an abuse of process for failure to comply with a peremptory order. |
| Syed Mohamed Abdul Muthaliff v Arjan Bhisham Chotrani | Court of Appeal | Yes | [1999] 1 SLR(R) 361 | Singapore | Cited for the meaning of 'contumelious' and 'contumacious'. |
| Jokai Tea Holdings Ltd | N/A | Yes | [1992] 1 WLR 1196 | N/A | Cited for the definition of 'contumely' and 'contumacy'. |
| Tolley v Morris | N/A | Yes | [1979] 1 WLR 592 | N/A | Cited for the principle that disobedience to a peremptory order would generally amount to contumelious conduct. |
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
- Trade mark infringement
- Passing off
- Unless order
- Security for costs
- Contumelious conduct
- Peremptory order
- Abuse of process
- Trade mark
- SUBWAY
- SUBWAY NICHE
15.2 Keywords
- trade mark
- infringement
- passing off
- abuse of process
- security for costs
- unless order
16. Subjects
- Intellectual Property
- Trade Mark Law
- Civil Procedure
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law
- Civil Procedure