Total English Learning v Kids Counsel: Trademark & Copyright Infringement Dispute
Total English Learning Global Pte Ltd and Total English Learning International Pte Ltd (Plaintiffs) sued Kids Counsel Pte Ltd (Defendant) in the High Court of Singapore, alleging breach of a franchise agreement, copyright infringement, trademark infringement, and conversion of copyright material. The Defendant applied to strike out the Statement of Claim. The court, presided over by Justin Yeo AR, declined to strike out the entire claim but ordered the Plaintiffs to amend their statement to provide better particulars regarding the copyright and trademark infringement claims.
1. Case Overview
1.1 Court
High Court1.2 Outcome
The court declined to strike out the entire Statement of Claim but ordered the Plaintiffs to amend specific portions to provide better particulars regarding copyright and trademark infringement claims.
1.3 Case Type
Civil
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Franchise dispute involving trademark and copyright infringement claims. The court ordered the plaintiffs to amend their statement of claim.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Total English Learning Global Pte Ltd | Plaintiff | Corporation | Ordered to amend Statement of Claim | Partial | Mark Goh |
| Total English Learning International Pte Ltd | Plaintiff | Corporation | Ordered to amend Statement of Claim | Partial | Mark Goh |
| Kids Counsel Pte Ltd | Defendant | Corporation | Application to strike out partially allowed | Partial | Wong Siew Hong, Poonaam Bai, Jolin Lin |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Justin Yeo | Assistant Registrar | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Mark Goh | Mark Goh & Co |
| Wong Siew Hong | Eldan Law LLP |
| Poonaam Bai | Eldan Law LLP |
| Jolin Lin | Eldan Law LLP |
4. Facts
- Plaintiffs are the franchisers of the “I Can Read!” (ICR) system.
- Defendant is a franchisee of the ICR system.
- Plaintiffs allege the Defendant was using the ICR system without authorization after the franchise agreement expired.
- Plaintiffs claim trademark and copyright infringement.
- Defendant argues the NDA created an implied forbearance to sue.
- Defendant argues Plaintiffs acted as if the Franchise Agreement remained in force.
- Defendant argues Plaintiffs are estopped from asserting that the Franchise Agreement had lapsed.
5. Formal Citations
- Total English Learning Global Pte Ltd and anor v Kids Counsel Pte Ltd, Suit No 420 of 2013 (Summons No 3218 of 2013), [2013] SGHCR 22
6. Timeline
| Date | Event |
|---|---|
| Chong Yeou Foo entered into the Franchise Agreement. | |
| Defendant bought the business from Chong Yeou Foo. | |
| Lum Wai Onn acquired the Defendant’s shares. | |
| Deed of Assignment was executed. | |
| Plaintiffs issued a letter of demand alleging that the Franchise Agreement had expired. | |
| Parties entered into a Non-Disclosure Agreement. | |
| Plaintiffs commenced action against Defendant. | |
| First hearing. | |
| Second hearing. | |
| Framing of the precise issues was agreed upon by both parties, and filed in court. | |
| Decision Date |
7. Legal Issues
- Copyright Infringement
- Outcome: The court found that the term “communicate” and the phrase “to communicate the work to the public” are limited to communication via electronic transmission and ordered the Plaintiffs to amend the Statement of Claim to provide better particularization of the copyright claim.
- Category: Substantive
- Sub-Issues:
- Communication to the public
- Electronic transmission
- Trade Mark Infringement
- Outcome: The court ordered the Plaintiffs to amend the Statement of Claim to provide better particularization of the trade mark infringement claim insofar as the Class 16 Trade Mark is concerned.
- Category: Substantive
- Sub-Issues:
- Use of trade mark
- Consent of proprietor
- Exhaustion of rights
- Conversion of Copyright Material
- Outcome: The Plaintiffs are to amend paragraphs 23 to 26 of the Statement of Claim to provide better particularisation of the claim in conversion of the Copyright Material.
- Category: Substantive
- Striking Out Application
- Outcome: The court declined to strike out the entire Statement of Claim but ordered the Plaintiffs to amend specific portions to provide better particulars regarding copyright and trademark infringement claims.
- Category: Procedural
8. Remedies Sought
- Damages
- Injunction
9. Cause of Actions
- Breach of Franchise Agreement
- Copyright Infringement
- Trade Mark Infringement
- Conversion of Copyright Material
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Education
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Gabriel Peter & Partners v Wee Chong Jin | Court of Appeal | Yes | [1997] 3 SLR(R) 649 | Singapore | Cited for the principle that a striking out application should only be used in plain and obvious cases and should not usurp the position of the trial judge. |
| The Tokai Maru | High Court | Yes | [1998] 2 SLR(R) 646 | Singapore | Cited for the principle that a striking out application should only be used in plain and obvious cases and should not usurp the position of the trial judge. |
| Tan Eng Khiam v Ultra Realty Pte Ltd | High Court | Yes | [1991] 1 SLR(R) 844 | Singapore | Cited for the principle that evidence is not admissible for the purposes of a claim under O 18 r 19(1)(a) of the Rules of Court. |
| RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and others | Court of Appeal | No | [2011] 1 SLR 830 | Singapore | Cited to argue that the Court of Appeal did not limit the term “communicate” to transmission by electronic means, but the court disagreed with this interpretation. |
| Arsenal Football Club plc v Matthew Reed | High Court of Justice | No | [2003] RPC 8 | England and Wales | Cited to support the argument that trade mark infringement is not confined only to trade mark use, but the court did not adopt this approach. |
| L’Oreal SA v Bellure NV | Court of Justice of the European Union | No | [2010] RPC 1 | European Union | Cited to support the argument that trade mark infringement is not confined only to trade mark use, but the court did not adopt this approach. |
| City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier | Court of Appeal | No | [2010] 1 SLR 382 | Singapore | Cited to argue whether trade mark infringement may be established if the use of the sign affects some other trade mark functions besides the essential function of guaranteeing to consumers the origin of the goods. The court adopted a stricter approach of requiring origin-related use. |
| Nation Fittings (M) Sdn Bhd v Oystertec plc | High Court | Yes | [2006] 1 SLR(R) 712 | Singapore | Cited to support the narrower “trade mark use” position adopted in Singapore. |
| Betts v Willmont | Court of Appeal in Chancery | Yes | Betts v Willmont (1871) LR 6 Ch App 239 | England and Wales | Cited for the principle that when a man has purchased an article he expects to have control of it. |
| Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd | High Court | Yes | [2003] 4 SLR(R) 755 | Singapore | Cited for the principle that once the express or implied consent of the proprietor of the trade mark is obtained to put goods bearing the said trade mark onto the market in Singapore (or out of Singapore), thereafter those goods travel freely. |
| Tat Seng Machine Movers Pte Ltd v Orix Leasing Singapore Ltd | Court of Appeal | Yes | [2009] 4 SLR(R) 1101 | Singapore | Cited for the principle that conversion is primarily for the protection of ownership and that the acts which constitute conversion have not been defined with hard-edged precision. |
| Antariksa Logistics Pte Ltd and others v McTrans Cargo (S) Pte Ltd | Court of Appeal | Yes | [2012] 4 SLR 250 | Singapore | Cited for the elements required to succeed in a claim for conversion. |
| Copyright Agency Limited v Queensland Department of Education | Federal Court of Australia | Yes | [2007] FCAFC 124 | Australia | Cited to support the argument that the definition of “communicate” ought to be limited to electronic transmission. |
| Roadshow Films Pty Limited v iiNet Limited | Federal Court of Australia | Yes | [2011] 194 FCR 285 | Australia | Cited to support the argument that the definition of “communicate” ought to be limited to electronic transmission. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Rules of Court (Cap 322, R 5, 2006 Rev Ed) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Copyright Act 1968 | Australia |
| UK Trade Marks Act 1994 | United Kingdom |
15. Key Terms and Keywords
15.1 Key Terms
- Franchise Agreement
- Copyright Material
- Trade Mark
- ICR System
- Non-Disclosure Agreement
- Statement of Claim
- Infringement
- Communication to the public
- Electronic transmission
- Conversion
15.2 Keywords
- trademark
- copyright
- franchise
- infringement
- statement of claim
- striking out application
16. Subjects
- Intellectual Property
- Franchise Dispute
- Civil Litigation
17. Areas of Law
- Trade Mark Law
- Copyright Law
- Franchise Law
- Civil Procedure