Star Industrial Company Ltd v Yap Kwee Kor trading as New Star Industrial Company
| Jurisdiction | UK Non-devolved |
| Judgment Date | 26 January 1976 |
| Date | 26 January 1976 |
| Docket Number | Privy Council Appeal No 11 of 1974 |
| Court | Privy Council |
[1976] SGPC 1
Lord Diplock
,
Lord Kilbrandon
and
Lord Edmund-Davies
Privy Council Appeal No 11 of 1974
Privy Council
Trade Marks and Trade Names–Passing Off–Nature of right protected by action in passing off–Consequences of plaintiff's abandonment of business in Singapore–Trade Marks and Trade Names–Passing Off–Unregistered marks–Assigning mark without assigning goodwill at the same time–Whether rights conferred by Trade Marks Act (Cap 206, 1970 Rev Ed) upon registered proprietor of registered trade marks should similarly be conferred on unregistered marks under common law
Between 1953 and 1965, first one J H Leung trading under the name of “Star Brush Manufacturing Co”, and the appellant/plaintiff, a Hong Kong company that took over his business sold toothbrushes with the mark “ACE Brand” in a characteristic get-up in Singapore. By 1965, sufficient quantities had been sold in Singapore to establish a goodwill and reputation associated with the get-up. However, the appellant did not register the characteristic get-up of its goods or any part of it as a trade mark in Singapore. The appellant stopped selling the toothbrushes in Singapore in 1965. In 1968, Leung assigned the “ACE Brand” trade mark which he had registered in Hong Kong to the appellant. In 1968, the respondent/defendant adopted for his products a get-up that was virtually indistinguishable from that formerly used by the appellant. In 1968, the appellant set up a Singapore company and conferred on it the exclusive right of user of the unregistered trade mark. The appellant commenced the present proceedings to restrain the respondent from passing off his toothbrushes as that of the appellant and also for damages in the form of reduced receivables from the Singapore company as a result of the respondent's piracy. The action was dismissed at first instance and, the appellant's appeal to the Court of Appeal was also dismissed. The appellant appealed against the decision of the Court of Appeal.
Held, dismissing the appeal:
(1) A passing-off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one person's goods as the goods of another. Goodwill is incapable of subsisting by itself. So when the business is abandoned in one country in which it has acquired a goodwill, the goodwill in that country perishes with it although the business may continue to be carried on in other countries. The appellant ceased to have any proprietary right in Singapore which was entitled to protection in any action for passing off when it abandoned its business in toothbrushes in Singapore: at [8].
(2) At common law, the right of user of the mark or get-up in Singapore was incapable of being assigned except with the goodwill of that part of the business of the appellant in connection with which it was previously used. It was not appropriate for the courts in the exercise of the judicial power to extend to the user of an unregistered mark or get-up proprietary rights under common law similar to those conferred by statute upon the registered proprietor of a registered trade mark, such as the right to permit a registered user to use the mark and to assign the mark otherwise than in connection with the goodwill of a business. It was the intention of the Parliament in Singapore to confine these novel statutory rights to registered trade marks: at [12], [15] and [16].
A G Spalding & Bros v A W Gamage Ltd (1915) 32 RPC 273 (folld)
Commissioners of lnland Revenue v Muller & Co's Margarine Ltd [1901] AC 217 (refd)
Mouson & Co v Boehm (1884) 26 Ch D 398 (refd)
Warwick Tyre Co Ltd v New Motor and General Rubber Co Ltd [1910] 1 Ch 248; 27 RPC 161; 101 LT 889 (not folld)
Trade Marks Act (Cap 206, 1970 Rev Ed)
A J Balcombe QC and R Lunzer (Simmons &...
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