Eng's Wantan Noodle v Eng's Char Siew Wantan Mee: Production of Documents, Security for Costs, Trademark, Passing Off

Eng’s Wantan Noodle Pte Ltd and Thomas Hong sued Eng’s Char Siew Wantan Mee Pte Ltd in the General Division of the High Court of Singapore, Originating Claim No 365 of 2022, for defamation and groundless threats of infringement proceedings, seeking negative declarations regarding trademark infringement and passing off. The defendant counterclaimed for trademark infringement and passing off. The court, presided over by AR Navin Anand, dismissed both the claimants' and the defendant's applications for production of documents and the claimants' application for security for costs, determining that the requested documents were not material to the liability issues to be determined at trial and that ordering security for costs was not just in the circumstances.

1. Case Overview

1.1 Court

General Division of the High Court

1.2 Outcome

Both the claimants’ and the defendant’s Single Application Pending Trials are dismissed.

1.3 Case Type

Civil

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

The High Court dismissed applications for document production and security for costs in a dispute over the 'Eng's' wanton noodle business name, involving trademark and passing off claims.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Eng’s Wantan Noodle Pte LtdClaimantCorporationApplication DismissedDismissed
Thomas HongClaimantIndividualApplication DismissedDismissed
Eng’s Char Siew Wantan Mee Pte LtdDefendantCorporationApplication DismissedDismissed

3. Judges

Judge NameTitleDelivered Judgment
Navin AnandAssistant RegistrarYes

4. Counsels

Counsel NameOrganization
Wong Siew HongEldan Law LLP
Kuek Kai LiangEldan Law LLP
Leo Cheng SuanInfinitus Law Corporation
Lee Shu XianInfinitus Law Corporation

4. Facts

  1. The dispute concerns the right to use the “Eng’s” name in businesses selling wanton noodles.
  2. Mr. Ng Ba Eng ran a successful hawker stall at Dunman Food Centre known for its wanton noodles.
  3. A joint venture to expand Mr. Ng’s business ended abruptly in 2018 amidst souring relations.
  4. Rival wanton noodle businesses sprang from the failed joint venture.
  5. The claimants seek production of documents and security for costs for the defendant’s counterclaim.
  6. The defendant seeks production of documents relating to a food poisoning incident at the first claimant’s restaurant.
  7. The claimants claim against the defendant in defamation and for groundless threats of infringement proceedings.

5. Formal Citations

  1. Eng’s Wantan Noodle Pte Ltd and another v Eng’s Char Siew Wantan Mee Pte Ltd, Originating Claim No 365 of 2022 (Summonses Nos 2993 and 2994 of 2023), [2023] SGHCR 17

6. Timeline

DateEvent
Lawsuit filed in HC/OC 365/2022
Consent order recorded for OC 365 to proceed on a bifurcated basis
Trial on liability fixed for 8.5 days in January and February 2024
Parties exchanged and filed their Affidavits of Evidence-in-Chief
Claimants filed their SAPT vide HC/SUM 2993/2023, and the defendant filed its SAPT vide HC/SUM 2994/2023
Judgment reserved
Judgment issued

7. Legal Issues

  1. Production of Documents
    • Outcome: The court dismissed both the claimants' and the defendant's applications for production of documents, finding that the requested documents were not material to the issues being adjudicated in the trial on liability.
    • Category: Procedural
  2. Security for Costs
    • Outcome: The court dismissed the claimants' application for security for costs, finding that it was not just to make the order based on the circumstances of the case.
    • Category: Procedural
  3. Passing Off
    • Outcome: The court considered the elements of passing off in the context of the counterclaim, particularly the requirement to show damage to goodwill.
    • Category: Substantive
  4. Trademark Infringement
    • Outcome: The court considered the elements of trademark infringement in the context of the counterclaim, including the 'own name' defence.
    • Category: Substantive

8. Remedies Sought

  1. Negative Declarations
  2. Damages

9. Cause of Actions

  • Defamation
  • Groundless Threats of Infringement Proceedings
  • Trademark Infringement
  • Passing Off

10. Practice Areas

  • Commercial Litigation
  • Intellectual Property Litigation

11. Industries

  • Food and Beverage
  • Restaurant

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
New Ping Ping Pauline v Eng’s Noodles House Pte Ltd and othersHigh CourtYes[2021] 4 SLR 1317SingaporeCited for background facts of the dispute over the 'Eng's' name and the failed joint venture.
New Ping Ping Pauline and others v Eng’s Noodles House Pte LtdHigh Court (Appellate Division)Yes[2021] SGHC(A) 4SingaporeCited for background facts of the dispute over the 'Eng's' name and the failed joint venture.
Pauline New Ping Ping v Eng’s Char Siew Wantan Mee Pte LtdIntellectual Property Office of SingaporeYes[2022] SGIPOS 10SingaporeCited for background facts of the dispute over the 'Eng's' name and the failed joint venture.
Teo Wai Cheong v Crédit Industriel et Commercial and another appealCourt of AppealYes[2013] 3 SLR 573SingaporeCited for the principle that litigation should be conducted with 'cards face up on the table'.
Breezeway Overseas Ltd and another v UBS AG and othersHigh CourtYes[2012] 4 SLR 1035SingaporeCited for the tension between justice and efficiency in the discovery process.
Nichia Corp v Argos LtdEngland and Wales Court of Appeal (Civil Division)Yes[2007] EWCA Civ 741England and WalesCited for balancing perfect justice with the practicalities of litigation.
Dai Yi Ting v Chuang Fu Yuan (Grabcycle (SG) Pte Ltd and another, third parties)High CourtYes[2023] 3 SLR 1574SingaporeCited for the Ideals enshrined in O 3 r 1 of the ROC 2021.
Tan Chin Seng and others v Raffles Town Club Pte LtdHigh CourtYes[2002] 2 SLR(R) 465SingaporeCited for the principle that the issues in a case are determined by the pleaded cases of the parties.
Dante Yap Go v Bank Austria Creditanstalt AGHigh CourtYes[2007] SGHC 69SingaporeCited for the principle that there must be a demonstrable nexus between the requested documents and at least one of the issues.
Gillingham James Ian v Fearless Legends Pte Ltd and othersHigh CourtYes[2023] SGHCR 13SingaporeCited for the temporal element to the assessment of materiality.
Bing Integrated Construction Pte Ltd v Eco Special Waste Management Pte Ltd (Chua Tiong Guan and Another, Third Parties) and Another SuitHigh CourtYes[2008] SGHC 25SingaporeCited for the principle that documents sought are not material to the issues affecting liability and only become material after liability is established.
Allington Investments Corp & Ors v First Pacific Bancshares Holdings Ltd & AnorHigh CourtYes[1995] 2 HKC 139Hong KongCited for the principle that production should not be ordered on irrelevant allegations in pleadings.
Hady Hartanto v Yee Kit Hong and othersHigh CourtYes[2014] 2 SLR 1127SingaporeCited for the principle that the state of mind of the publisher is not relevant in a defence of justification.
Cova Group Holdings Ltd v Advanced Submarine Networks Pte Ltd and anotherHigh CourtYes[2023] SGHC 178SingaporeCited for the two-stage framework in considering whether to order security for costs.
SIC College of Business and Technology Pte Ltd v Yeo Poh Siah and othersHigh CourtYes[2016] 2 SLR 118SingaporeCited for the non-exhaustive factors in deciding whether it is just to order security for costs for a counterclaim.
SW Trustees Pte Ltd (in compulsory liquidation) and another v Teodros Ashenafi Tesemma and others (Teodros Ashenafi Tesemma, third party)High CourtYes[2023] SGHC 160SingaporeCited for the principle that the court will generally not enter into a detailed examination of the merits of the case in an application for security for costs.
Sembawang Engineering Pte Ltd v Priser Asia Engineering Pte LtdHigh CourtYes[1992] 2 SLR(R) 358SingaporeCited for the principle that the defendant's want of means, to some extent, was caused by the first claimant's infringing acts.
The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte LtdHigh CourtYes[2016] 3 SLR 517SingaporeCited for the factors to consider for the own name defence.

13. Applicable Rules

Rule Name
Rules of Court 2021

14. Applicable Statutes

Statute NameJurisdiction
Companies Act 1967Singapore
Trade Marks Act 1998Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Wanton Noodles
  • Eng’s
  • Trademark Infringement
  • Passing Off
  • Production of Documents
  • Security for Costs
  • Goodwill
  • Materiality
  • Impecuniosity
  • Counterclaim

15.2 Keywords

  • Eng’s Wantan Noodle
  • Eng’s Char Siew Wantan Mee
  • Wanton Mee
  • Trademark
  • Passing Off
  • Singapore
  • High Court
  • Civil Procedure
  • Discovery
  • Security for Costs

17. Areas of Law

Area NameRelevance Score
Civil Procedure75
Trademarks60
Passing Off60
Trademark Infringement60
Costs50
Defamation40
Company Law30
Commercial Disputes30
Groundless threats of infringement proceedings30
Contract Law25
Well Known Trade Marks20
Misrepresentation20
Estoppel20
Duty of Candour10

16. Subjects

  • Civil Procedure
  • Intellectual Property
  • Trademark Law
  • Passing Off
  • Discovery
  • Costs