Judgment

[Please note that this case has not been edited in accordance with the current Singapore Law Reports house style.]

                                                                                                                                                               Judgment reserved.

Yong Pung How CJ (delivering the judgment of the court):

1           We have before us two appeals which arise out of interlocutory matters in an action by the respondents against the appellants. Civil Appeal No 57 of 1991 involves an order continuing interlocutory injunctions while Civil Appeal No 9 of 1991 concerns an application by the appellants for further and better particulars of a cause of action in the statement of claim in the main action.

The joint venture

2           The dispute between the parties arises out of a joint venture agreement signed on 22 October 1971 between the first respondent Haw Par Brothers International Ltd (‘Haw Par’) and Chia Holdings (HK) Ltd, a company incorporated in Hong Kong. The joint venture agreement was subsequently varied by a document entitled ‘heads of agreement’ and dated 29 November 1976. The joint venture agreement and the ‘heads of agreement’ will hereinafter be referred to collectively as ‘the JVA’. The duration of the JVA was to be 20 years.

3           The purpose of the JVA was stated to be the improvement of the manufacture, marketing, distribution and sale of products made under Haw Par’s worldwide Tiger Brand trade mark by tapping the expertise of the first appellant Jack Chiarapurk (‘Jack Chia’), who was acknowledged as an expert in pharmaceuticals and their sale and distribution, and the resources of the companies under his control. The JVA’s scope was limited territorially to Malaysia, Singapore, Brunei, Hong Kong, Macau, Thailand, Taiwan, Cambodia, Laos, Vietnam, Philippines, Indonesia, Burma, Japan, Korea, the Pacific Islands and the Middle East (‘the JV territories’). The JVA provided for the incorporation of Haw Par Eng Aun Tong Pte Ltd (‘HPE’) in Singapore and Haw Par Tiger Balm International Pte Ltd (‘HPT’) in Hong Kong (‘the JV companies’) and the grant of licences to the two companies by Haw Par for the manufacture of Tiger Brand products as the mode by which the purpose of the joint venture was to be attained. The shareholding in each of the JV companies was divided equally between Haw Par and Chia Holdings (HK) Ltd. Under the JVA, the promotion of the Tiger Brand products would be carried out by the JV companies or companies selected by them and the profits of the JV companies, after deductions for dividends and royalties payable to Haw Par, would be shared between the joint venture partners. Further, Jack Chia would serve as chief executive officer of the JV companies and head Haw Par’s pharmaceutical division. It is important to note that the JVA was not exclusive in character: Haw Par continued to manufacture and sell Tiger Brand products in other parts of the world not covered by the JVA and Jack Chia and his group of companies continued the manufacture of various other pharmaceutical products. By a series of supplemental agreements in 1976, 1985 and 1986, Haw Par transferred its interest in HPE to the second respondent and Chia Holdings (HK) Ltd transferred its interest in HPE and HPT to the second and the third appellants respectively. However, the transferees all agreed to be bound by the JVA.

Events of 1988–1990

4           The joint venture was successful between 1972 and 1988, and talks began between the two sides in October 1988 with a view to renewing the JVA before it expired at the end of 1991. It became evident however that Haw Par wished to have the majority control of the JV companies and Jack Chia was not willing to cede the same. By letters dated 7 November 1989, the second respondent gave notice to Jack Chia and to the second and third appellants that the JVA would not be renewed.

5           In February 1990, Haw Par heard rumours from the market that Jack Chia and his companies were manufacturing a new balm product. This was confirmed by Jack Chia’s representative at a meeting in early March with Haw Par’s new managing director. On 5 March 1990, one of the appellants issued a price list to distributors for a new balm called the Golden Lion Shield balm (‘the GLS balm’) which lies at the heart of the dispute between the parties. The new balm was publicly advertised on 1 May 1990. By a letter dated 15 May 1990, written by the respondents’ solicitors to Jack Chia and copied to the second and third appellants, the respondents complained that the manufacture and distribution of the GLS balm infringed the JVA and was an attempt to pass off the GLS balm as a balm manufactured under the Tiger Brand trademark as ‘Tiger Balm’. The appellants replied on 29 May admitting the manufacture and distribution of the GLS balm but denying any infringement or passing off. By a letter dated 13 June, the respondents refuted the appellants’ assertions.

Civil Appeal No 57 of 1991

6           On 19 June 1990, the respondents began these proceedings, claiming damages and injunctions based on breach of contract, breach of fiduciary duty, breach of confidence and passing off, and by an ex parte application on 22 June 1990, obtained the injunctions which are under appeal in Civil Appeal No 57 of 1991. The injunctions were subsequently varied to exclude specified products manufactured by the appellants and their associated companies. The injunctions against Jack Chia provided that:

1    [Jack Chia] by himself, his servants or agents or otherwise be restrained, and an injunction is hereby granted restraining him until further order from doing or from causing, procuring or permitting the 2nd, 3rd, 4th, 5th or 6th [appellants] to do any of the following acts:

(i)   manufacturing, packaging, exporting, distributing, offering for sale, selling, supplying, disposing, promoting by advertisement or otherwise or dealing in any way in the Golden Lion Shield Balm Products;

(ii)  passing off or attempting to pass off or causing, enabling or assisting others to pass off Golden Lion Shield Balm Products as or as connected with the Tiger Balm Products;

(iii)  acting in breach of fiduciary duty or the fiduciary or contractual obligations pursuant to [the JVA] competing with, or causing or allowing or participating in the manufacture, sale or distribution of products competing with those manufactured, sold or distributed by the [JV companies] and in particular the manufacture, sale or distribution of the Golden Lion Shield Balm Products; and

(iv) making unlawful use of confidential or other information acquired by or entrusted to [Jack Chia] as the Managing Director and Chief Executive of the [JV companies] relating to the business and production of Tiger Balm Products.

7           The injunctions against the other appellants were in similar terms.

8           We pause for a moment to state our disapproval of the step taken by the respondents to obtain the injunctions at an ex parte hearing without any notification to the appellants. The solicitors for both sides were in correspondence at the time and there was clearly disagreement on the issue of whether the manufacture and distribution of the GLS balm was in any way wrongful. In Castle Fitness Consultancy Pte Ltd v Manz, Coomaraswamy J expressed the view that the practice in Singapore should follow that in England as set out in Pickwick International Inc (GB) Ltd v Multiple Sound Distributors Ltd and in a Practice Direction of the Queen’s Bench Division dated 30 March 1983. The learned judge said at p 143:

In my humble view, the opponent should be given notice of the ex parte application and invited to attend. Alternatively, in appropriate and justifiable instances, adequate reason for not giving such notice should be given to the court on affidavit. In some cases, eg Marevas, an applicant’s purpose can be defeated by his opponent having advance knowledge of an ex parte application for an injunction. Possible defeat of an applicant’s purpose if the adversary had knowledge of the intended application will be an appropriate and justifiable instance where notice need not be given.

9           We are in agreement with the view of the learned judge. The present case was not one in which there was any reason for not informing the appellants of the application for the injunctions, nor did the respondents give any reason for not doing so.

10       The appellants, by summonses in chambers dated 28 June 1990 and 31 October 1990, applied to discharge the injunctions. The application was dismissed by Chao Hick Tin J on 1 March 1991 with the costs of the application in the cause. The appellants now appeal against the dismissal of the application and the respondents by their notice seek to have the order for costs varied to one that gives them the costs of the hearing below or in any event.

Civil Appeal No 9 of 1991

11       Civil Appeal No 9 of 1991 arises out of the claim for breach of confidence in the main action which is pleaded as follows:

12   Further or in the further alternative, in and about the development, manufacture, distribution and marketing of the said Golden Lion Shield Balm products the [appellants] have made use and/or caused, procured or permitted each other to make use of confidential information the property of the [respondents], alternatively have made use of information entrusted in confidence to the [appellants] pursuant to the JVA and/or for the purpose of carrying out their obligations thereunder and/ or their obligations towards the [JV companies].

Particulars of confidential information

(1)          The manufacturing process of the Tiger Balm products;

(2)          The [JV companies’] pricing, discount and bonus goods structure.

12       By summons-in-chambers entered No 4603 of 1990, the following particulars of that pleading were sought:

Under paragraph 12(1):

Of :          The manufacturing process of the Tiger Balm products;

Request:

1(a)           define ‘Tiger Balm products’;

    (b)           identify with necessary particularity and by stages the manufacturing process of each Tiger Balm product
            in issue;

    (c)          identify the author or authors of each said process and when each of the same was devised;

   (d) (i) identify how the process was imparted to the [appellants] or obtained from the [respondents] by the [appellants]; alternatively, identify by whom and to whom the same was entrusted in confidence pursuant to the JVA as alleged;

          (ii) in either case, state when the same was imparted, obtained or entrusted;

        (iii) in either case, state whether the same was so imparted, obtained or entrusted orally or in writing and if the former, identify the parties involved, if the latter, identify and produce any document or documents relied upon.

2    Set out with necessary particularity and by stages the manufacturingprocess of each Golden Lion Shield Balm product used by the [appellants] (and identify which [appellant]) of which complaint is made.

3(a)   State by comparative reference to each stage of 2 above the manner in which it is alleged that the [appellants] or any of them (and which of the [appellants]) have made use of the manufacturing process or processes of the Tiger Balm products in relation to the development, manufacture, distribution and marketing of the Golden Lion Shield Balm products.

    (b) State the manner in which it is alleged that the [appellants] have caused, procured or permitted each other (and identify which of the others) to make use of the manufacturing process or processes of the Tiger Balm Products as alleged.

Under paragraph 12(2):

Of:          The Joint Companies’ pricing, discount and bonus goods structure. Request:

1(a)         Set out with necessary particulars what is the joint companies’

(a)    pricing structure

(b)    discount structure

(c) bonus goods structure (hereinafter collectively referred to as the ‘aforesaid items of information’);

(b)       identify the author or authors of the aforesaid items of information and when each of the same was devised;

(c)       state how the [respondents] or either of them claim title as their own property to the aforesaid items of information;

(d)(i) identify how the same was imparted to the [appellants] or obtained from the [respondents] by the [appellants]; alternatively, identify by whom and to whom the same was entrusted in confidence pursuant to the JVA as alleged;

      (ii) in either case state when the same was so imparted, obtained or entrusted;

     (iii) in either case, state whether the same was so imparted, obtained or entrusted orally or in writing and if the former, identify the parties involved, and if the latter identify and produce any document or documents relied on.

2    Set out with necessary particularity the pricing, discount and bonus goods structure used by the [appellants] (and identify which [appellants]) of which complaint is made.

3(a)   State with reference to each of the aforesaid items of information how it is alleged the [appellants] (and identify which [appellants]) have made use of the same in relation to the development, manufacture, distribution and marketing of each of the Golden Lion Shield Balm products.

   (b)    State the manner in which it is alleged that the [appellants] have caused, procured or permitted each other (and identify which of the others) to make use of the aforesaid items of information as alleged.

13       By an order of court made on 15 October 1990, the assistant registrar:

(a)          ordered the respondents to define within fourteen (14) days of the order of court the expression ‘Tiger Balm products’;

(b)    did not order the respondents to furnish particulars in respect of request 3(b) under paragraph 12(1), requests 1(c) and 3(b) under paragraph 12(2); and

(c)          ordered that the remaining particulars sought be furnished by the respondents within thirty (30) days of usual discovery or discovery by interrogatories.

14       On 29 October 1990, the respondents filed the following particulars in respect of the expression ‘Tiger Balm products’:

The Tiger Balm products referred to at paragraph 12(1) comprise of the Red and White Balm in the following sizes:

(1)              4gm;

(2)               6gm;

(3)               9gm;

(4)         19.4gm; and

(5)             30gm.

15       On appeal to the learned judge, no order was made.

Appeals against exercises of discretion

16       As these appeals concern exercises of discretion by the learned judges below, we bear in mind this court’s approval in Federal Computer Services Sdn Bhd v Ang Jee Hai Eric of the following statement of principle by Lord Diplock in Hadmor Productions Ltd & Ors v Hamilton & Ors at p 220:

An interlocutory injunction is a discretionary relief and the discretion whether or not to grant it is vested in the High Court judge by whom the application for it is heard. Upon an appeal from the judge’s grant or refusal of an interlocutory injunction the function of an appellate court, whether it be the Court of Appeal or your Lordships’ House, is not to exercise an independent discretion of its own. It must defer to the judge’s exercise of his discretion and must not interfere with it merely upon the ground that the members of the appellate court would have exercised the discretion differently. The function of the appellate court is initially one of review only. It may set aside the judge’s exercise of his discretion on the ground that it was based upon a misunderstanding of the law or of the evidence before him or upon an inference that particular facts existed or did not exist, which, although it was one that might legitimately have been drawn upon the evidence that was before the judge, can be demonstrated to be wrong by further evidence that has become available by the time of the appeal; or upon the ground that there has been a change of circumstances after the judge made his order that would have justified his acceding to an application to vary it. Since reasons given by judges for granting or refusing interlocutory injunctions may sometimes be sketchy, there may also be occasional cases where even though no erroneous assumption of law or fact can be identified the judge’s decision to grant or refuse the injunction is so aberrant that it must be set aside upon the ground that no reasonable judge regardful of his duty to act judicially could have reached it. It is only if and after the appellate court has reached the conclusion that the judge’s exercise of his discretion must be set aside for one or other of these reasons, that it becomes entitled to exercise an original discretion of its own.

17       The same principle applies to applications for particulars: Norman Wright & Anor v Oversea-Chinese Banking Corporation Ltd.

Expiry of the JVA

18       Since the hearing of the application below to discharge the interlocutory injunctions, the JVA has, on 31 December 1991, expired. Accordingly, the injunctions based on restraining the breaches of contract and/or fiduciary duty arising out of the joint venture cannot be sustained and counsel for the respondents did not seek to support their continuation. However, he stressed that the lapsing of that ground for the injunctions did not affect the findings of the learned judge that there were serious issues to be tried on those grounds, and, in particular, that there was a real issue as to breach of fiduciary duty by Jack Chia. We do not question that there may indeed be serious issues to be tried on those matters but, with the expiry of the JVA, the respondents’ remedy for those wrongs lies in damages and not by way of injunction. It is not correct to seek to justify a restraint on the appellants by reference to a broad sense of wrong doing. There must be specific continuing wrongs that are issues to be tried and the balance of convenience must be in favour of restraining the allegedly wrongful acts until trial or further order: American Cyanamid Co v Ethicon Ltd. We therefore turn to consider if the interlocutory injunctions can be justified under either breach of confidence or passing off or both. The application for particulars will be considered with the consideration of the breach of confidence ground.

Breach of confidence — Civil Appeal No 57 of 1991

19       The learned judge in deciding to continue the injunctions restraining breach of confidence reasoned:

In the light of the brief facts set out above it is quite clear that the plaintiffs and the first three defendants are in a joint venture, a venture to manufacture, promote, sell and develop the Tiger Brand products, including the Tiger Balm products, for mutual advantage and profit. The confidential information which would be furnished by the plaintiffs to the joint companies should only be used for the purpose of manufacturing the Tiger Brand products by the joint companies and not for any other purpose. Looking at the terms of the JVA, I am inclined to think that there is a fiduciary relationship between the participants to the joint venture arrangements or there is at least an arguable case for it. …

         In any event where information provided is to be considered as confidential, its use and disclosure under general law is to be limited to the purpose for which the information is given: see Torrington Manufacturing v Smith & Sons Ltd (1966) RPC 285 at 301.

         It is next argued by the defendants that the plaintiffs have not shown that they have imparted confidential information to the first three defendants or the joint companies. The defendants say that the plaintiffs have not been able to identify with necessary precision any information which is confidential.

         In further elaboration, the defendants aver that there is nothing confidential about the ‘manufacturing process’ which they identified to consist of the following five stages:

(i)          mixing active ingredients to form a concentrate;

(ii)          mixing the base materials or excipient;

(iii)         mixing the concentrate with the base materials; 

(iv)         filling the mixture into appropriate containers;

(v)          packaging the product.

The plaintiffs answer that that is not all. Those are the basic steps. What are confidential are the details relating to each step, eg at what temperature the equipment used should be set; at which stage should each of the ingredients be added; and the duration the ingredients are to be kept in that state (see para 43 of the affidavit of Tan Hee Chai affirmed on 16 November 1990).

         In so far as the ingredients that are needed to manufacture the Tiger Balm products, the defendants submitted that there is nothing confidential about that because the ingredients are shown and printed on the product itself; they are matters of public knowledge. While that is true, it seems to me that is not all. The ingredients that go into making a product is one thing; the process another. … The fact that the ingredients that go into the making of the product are disclosed on the packaging of the product does not mean that all the technical information/ know-how needed to manufacture the product has become public knowledge.

         In any event having regard to the express provisions in the JVA and the licence agreements which specifically refer to confidential information being imparted by the plaintiffs to the joint companies, I do not think it is possible for the court at this interlocutory stage, without hearing oral evidence, to rule that the first plaintiff has not imparted any confidential information. Putting it at the lowest, it is an issue to be tried.

         Before moving to the second ground, I should say this for completeness. Another aspect of confidential information referred to by the plaintiffs relates to pricing formula. I do not think there is anything very much in this aspect. I note that this information is made known to all sub-distributors and retailers.

20       The respondents have not cross-appealed against the finding that the pricing formula for Tiger balm is not confidential. We are accordingly only concerned with whether the injunctions are justifiable on the basis of the confidentiality of the manufacturing process of Tiger Balm.

21       Mr Fysh for the appellants conceded that the JVA imposed an obligation of confidence upon the appellants. He contended however that this fact on its own was not sufficient to found an action for breach of confidence as such a cause of action is made up of three cumulative elements which counsel, basing himself on Saltman Engineering Co Ltd v Campbell Engineering Co Ltd and Gurry on Breach of Confidence (1984) at p 4, formulated as follows:

(a)    that the information must inherently possess the quality of confidence; in other words, it must not be in the public domain, and

(b)    that the foregoing information must have been imparted under circumstances importing an obligation of confidence, and

(c)    that its recipient has thereafter misused that information.

22       Counsel contended that the application for the interlocutory injunctions failed in limine as the respondents had not shown that there were serious issues to be tried in respect of (a) and (c) since they had failed to particularize the confidential information which they seek to protect. In support of that submission, counsel stressed the changes of position by the respondents on the general particulars of the confidential information. In the affidavit of Tan Hee Chai filed on 19 June 1990 in support of the ex parte application for the injunctions, the respondents relied on the ingredients making up Tiger balm as constituting the confidential information. However, in their statement of claim filed on 3 August 1990, the confidential information was stated to be ‘the manufacturing process’ of the balm. No more specific information was forthcoming despite the application for particulars in which the appellants suggested in an affidavit of Stephen Leow, the person then responsible for their manufacture of Tiger balm, filed on 13 September 1990, that there were the five steps in the manufacturing process which the learned judge set out in his judgment. The respondents, shortly before the hearing below, filed on 16 November 1990 a further affidavit affirmed by Tan Hee Chai that commented on the five steps as follows:

The plaintiffs say that the above description is a very basic and general description. It does not address in detail the manufacturing process and the confidential and/or other information connected thereto. For instance, Mr Leow has not indicated amongst others, at what temperature the equipment used should be set at; at which stage should each of the ingredients be added and the duration the ingredients are to be kept in that state before the actual manufacturing process can be said to be completed. The plaintiffs will produce to the judge at the hearing of this action, information relating to the manufacturing process of the Tiger Balm product to show the misuse by the defendants of confidential and/or other information relating thereto.

23       Mr Burton, on the other hand, stressed that the appellants had manufactured Tiger balm under the JVA arrangements. It was therefore obvious, he contended, that they knew what was confidential and it was moreover inequitable or unjust that they should obtain a ‘springboard’ in the commencement of their business by their wrongdoing.

24       We have difficulty accepting Mr Burton’s argument for the reason that it is necessary, in our view, that a party seeking to injunct another from utilizing allegedly confidential information has to be specific about what he seeks to restrain. This requirement of specificity flows from the need to show that there is a serious issue to be tried in respect of each element of the cause of action and also from the need for certainty as to what act is being sought to be restrained.

25       This requirement was discussed in Diamond Stylus Co Ltd v Bauden Precision Diamonds Ltd & Ors. In that case, the plaintiffs alleged that the defendants had wrongfully used their secret process for the manufacture of diamond styli. They did not, however, specify what the secret process was. In refusing to grant an interlocutory injunction, Graham J said at p 676:

If a plaintiff is alleging that he is in possession of a secret process or possesses confidential information and that the defendant has wronged him by using or disclosing that secret process or confidential information, he is necessarily in any trial in a difficult position unless he is prepared to state clearly what is the nature of the process or information in which he claims proprietary rights and which he claims has been used by the defendant. His difficulty is that if he does disclose in detail what his process is, he thereby gives away secrets, which is the one thing he does not want to do, though he may in such a case be able to make out his prima facie case by showing that the defendant has used part or the whole of that process. If, on the other hand, he is not prepared to disclose his secret then he is in an obvious difficulty in showing that what the defendant has done is to take that secret, because there is not ex hypothesi sufficient identification of the latter to enable a satisfactory conclusion to be drawn.

26       Here in the present case the plaintiffs, the Diamond Stylus Co Ltd, are unwilling to disclose and have not in fact disclosed what their process is in detail at all. They say that their process involves the use of tumbling apparatus and a tumbling process which they obtained the right to use under licence from a Swiss company, Raymond & Cie. They go on to say that the evidence shows, or at any rate that the proper inference from the evidence is that the defendants are using this process and that they could only have got the idea of using it from the plaintiffs.

27       Although, Mr Stanley put the matter as forcibly and clearly as it could be put on behalf of his clients, I am not satisfied that the plaintiffs have here made out a prima facie case which is sufficiently strong or clear on this branch of the case to justify the grant of an interlocutory injunction. No details of the Raymond & Cie process are specified by the plaintiffs, that is to say, they do not specify whether they use any particular grinding material, lubricant, nor what other details are involved in the process, and also it is not clear whether the defendants are in fact using the same apparatus as that used by the plaintiffs, nor as already stated, if they are, what are the details of the process involved in such use.

28       A similar point was made in a different way by Brightman J in Amway Corporation & Anor v Eurway International Ltd & Ors where the plaintiffs sought to injunct the defendants from making use of information contained in their business literature. The learned judge said at pp 86–87:

I asked the plaintiffs’ counsel if he could point in his literature to some particular piece of information which he said was confidential and which he claimed the defendants were wrongly using. He told me that he pointed to nothing in issue here but to the entirety of the plaintiffs’ documentary material which is in evidence.

         It seems to me that a claim for abuse of confidential information cannot really be dealt with in that way. If I made an order restraining the defendants from using for their own purposes any of the documentary material contained in the plaintiffs’ business literature, but did not identify the particular information that the defendants are not to impart, they would be placed in a most embarrassing situation. I do not know how they could decide what business methods, literature and paperwork to avoid using in order to keep clear of contempt of court; and I think that that is an insuperable difficulty in the plaintiffs’ claim under this head.

29       The above statement of law was quoted with approval by the High Court of Australia in O’Brien v Komesaroff at p 327.

30       In Hytrac Conveyors Ltd v Conveyors International Ltd & Ors, the plaintiffs’ writ sought injunctions restraining the defendants from infringing the plaintiffs’ copyright in drawings relating to materials handling systems and using unspecified confidential information. After issue of the writ, the plaintiffs first obtained Anton Piller orders and then subsequently sought interlocutory injunctions. Despite reminders by the defendants, the plaintiffs failed to serve their statement of claim and the defendants eventually, while the motions for the interlocutory injunctions were pending, took out a summons to strike out the proceedings under O 19 r 1. The application succeeded before Whitford J who stated at p 67:

It is not right in my judgment, that the plaintiffs should start an action apparently not in a position even to know what form of statement of claim they should make until possibly after an Anton Piller order has been secured and the evidence upon an application for an interlocutory injunction has been taken through to the end. It is in my judgment particularly important where questions of infringement of copyright are concerned and where questions of confidence are concerned that in the clearest possible terms the exact ambit of the plaintiffs’ claim in these regards should be made known.

31       This approach was approved on appeal and Lawton LJ who delivered the main judgment stated at p 70:

It has to be remembered by all concerned that we do not have in this country an inquisitorial procedure for civil litigation. Our procedure is accusatorial. Those who make charges must state right at the beginning what they are and what facts they are based upon.

32       A most instructive case is Lock v Beswick in which the plaintiff sought, inter alia, an injunction against several former employees restraining them from using supposedly confidential information described in a schedule which the plaintiff alleged the defendants were using to gain an advantage or ‘springboard’ in their competing business. Hoffman J said in a passage worthy of extensive quotation at p 1274:

Before the ‘springboard’ doctrine can be invoked, however, it must be shown that the information which constituted the springboard was information which the defendants could not lawfully use. It would not, for example, be sufficient to say in general terms that they were extremely familiar with the way Metalcheck detectors worked — with, as the plaintiff’s witnesses repeatedly say, their ‘strengths and weaknesses.’ There may have been some particular strength or weakness which was indeed a trade secret, but general familiarity is pre-eminently the kind of skill and knowledge which the honest employee cannot help taking away with him.

         It is of course tempting in an action such as this, concerned with the technicalities of electronics, to say that the questions at issue can only be investigated at the trial and that for American Cyanamid purposes (American Cyanamid Co v Ethicon Ltd [1975] AC 396) the plaintiff must be treated as having an arguable case. It would however be unjust to the defendants simply to allow the plaintiff to blind the court with scientific banalities.

33       We do not overlook the decision in Underwater Welders and Repairers Ltd v Street and Longthorn. There the plaintiffs sought an interim injunction restraining their ex-employees from using a process for the cleaning of ship hulls. The plaintiffs did not give particulars as to which aspects of the process they claimed were confidential. Nonetheless, Buckley J granted the interlocutory injunction, taking the view that more could not be expected in interlocutory proceedings. That decision, however, stands alone against the weight of authority. Moreover, it was confined to its facts by Graham J in the Diamond Stylus case.8 With respect, we also do not agree with it in principle. A plaintiff should be prepared to make out his case and not expect the court to speculate even at the interlocutory stage, even if only an arguable issue has to be made out. The court has means of ensuring that the confidential information is not seen by anyone other than the Bench or, if necessary, an expert witness: see generally Gurry on Breach of Confidence at pp460–466.

34       When we turn to the present appeal, we do not find any particularization of the respondents’ claim but merely a statement that the details of the manufacturing process are confidential. It must be borne in mind not only that the first appellant was brought into the JVA for his expertise as an acknowledged expert in pharmaceuticals but also that the respondents themselves manufacture Tiger balm in areas other than the JV territories. Yet, they have offered no evidence by anyone familiar with the manufacture of the balm. Instead, the affidavits on their behalf have been affirmed by Tan Hee Chai, the group general manager of Haw Par and the company secretary of the second respondent. In his affidavit filed on 19 June 1990 in support of the ex parte application, he states that he was ‘advised’ that the ingredients of the GLS balm are substantially the same as those of Tiger balm. He does not go on to state the identity and qualifications of those advising him. Similarly, in his later affidavit filed on 16 November 1990, he simply states that it is the respondents’ view that the details of the manufacturing process and the ‘confidential and/or other information connected thereto’ are confidential without stating the source of such belief. There is thus a double failing. There is not sufficient particularization and what little information there is emanates from a source that claims no familiarity with the manufacture of the product.

35       Mr Burton relied on the case of Proctor Industries Ltd v Norris Brothers Ltd. In that case, the plaintiffs had employed the defendants as consulting design engineers for the purpose of designing and developing on their behalf a prototype locking device for an automatic safety belt. The defendants subsequently produced a rival device and the plaintiffs alleged, inter alia, in their statement of claim that in designing and developing the rival device, the defendants wrongfully and in breach of confidence ‘… used for their own ends the confidential information supplied to them by the plaintiffs…’. It was not in dispute that the plaintiffs had given the defendants confidential information although the extent of the information given to the defendants was disputed. The confidential information allegedly supplied was pleaded in para 5 of the statement of claim and particulars were sought under that paragraph and were supplied. Particulars were also sought under para 8 of the statement of claim of ‘… the manner the defendants have used …’ the information stated in para 5 Plowman J refused to order the particulars sought, stating at p 181:

In regard to the question of the manner in which the confidential information is said to have been used, for myself I do not see how the plaintiffs can say more than that in designing and developing the rival device the defendants used confidential information.

         As I say, the plaintiffs are saying, in effect, here is your device; this is the confidential information we gave you; the inference must be that in producing your device you used it. In those circumstances, I do not think the plaintiffs can be asked to be more specific.

36       In our view, the decision is of little assistance to the respondents. There was no dispute in that case that confidential information had been given by the plaintiffs to the defendants. Indeed, particulars had been given of the information supplied. What was in issue there was the manner the information was used; a matter within the knowledge of the defendants alone. The plaintiffs were entitled to rely on an inference that the information had been used because of the admitted similarity of purpose between the two devices. Thus Harman J said in Speed Seal Products Ltd v Paddington & Anor at p 79:

I entirely agree and accept from the decision which Mr Hobbs cited to me in Proctor Industries Ltd v Norris Brothers [supra] … that … one can perfectly properly allege by way of inference from pleaded facts that such a thing as use of confidential information must be inferred, and there is no necessity in such a case to give particulars of the taking of the confidential information. (Our emphasis.)

37       The position in the present appeal is quite different. It is clearly disputed that the information the appellants have used is confidential and, in the absence of particularization, the respondents’ cause of action simply is not made out.

38       In our view therefore, the discretion of the learned judge in continuing theinjunctions was exercised on a wrong principle of law. It was for the respondents to show that they had imparted confidential information to the appellants which the appellants were wrongfully using to gain an advantage in their competing business. It was not sufficient for the respondents merely to allege, and by an officer who was not personally conversant with the details, that there was a manufacturing process, the detailed particulars of which were confidential, and not disclose them. It was incumbent on them to be specific before injunctions could be justified on the basis of the confidentiality of the manufacturing process. In the absence of any attempt at further elaboration by the respondents before us of what they say is confidential, we discharge the injunctions based on breach of confidence.

Confidential information — Civil Appeal No 9 of 1991

39       We now turn to the appeal in respect of the application for particulars of the statement of claim. There are two aspects to this. First, the learned judge in refusing particulars of request 3(b) under paras 12(1) and 12(2) held that they were attempts to elicit the respondent’s evidence. Mr Fysh contended that this was to misconceive the requests which were in fact directed at the respondents’ allegation that the appellants had jointly acted in breach of confidence. We agree with counsel’s submission. The particulars sought go to the manner in which it is said that the appellants have jointly committed the breach of confidence. It is essential that the appellants know what is alleged against them.

40       Secondly, in refusing to vary the assistant registrar’s order for best particulars of the other requests to be delivered 30 days after discovery, the learned judge reasoned that since the first three appellants have been involved with the manufacture and distribution of Tiger balm for some time, they had better knowledge of the matters sought under the particulars than the respondents did. He then held that the respondents could not provide particulars without laborious research or exhaustive enquiry, and further that the parties were in a fiduciary relationship. He accordingly applied paras 18/12/45 and 18/12/43 of the Supreme Court Practice 1991.

41       No mention was made in the grounds of decision of the learned judge of the non-exclusive character of the JVA. This characteristic of the JVA allowed the respondents to manufacture and distribute Tiger balm in areas of the world apart from the JV territories. It is a misconception of the facts to say that the respondents have no knowledge of the manufacturing process and the sales information relating to Tiger balm. Moreover, they are also shareholders in the JV companies. We do not think that it would be right to limit the appellants to best particulars and only after discovery. It would cause hardship as they too are manufacturers of balm and need to know just what information they are being attacked for using. All the considerations stated above in the discussion on the need for particularisation for the interlocutory injunctions apply equally to this appeal. In John Zink Co Ltd v Wilkinson & Anor, the defendants to a breach of confidence action sought particulars of the information alleged to be confidential. The application was made before the filing of their defence. In ordering particulars, Russell LJ said at p 724:

Now it may be said (as said the judge) that the defendants can plead to this claim as it stands. In one sense this is true. They can produce a series of denials which would do little to define the field of dispute. But I think that in any event there are here special reasons for now ordering the particulars sought. The scope of the claim as it stands at present is said in evidence, and the statements are uncontradicted, to cover the whole field of this particular manufacture as a forbidden field. It is indicated in evidence, and the indication is not contradicted, that this cannot be possible. It is suggested in evidence, and the suggestion is not answered, that the generality of the claims and accusations are typical of an unacceptable attitude previously demonstrated by the plaintiffs and their associated US company. Some particularization of the details of the complaints has been sought since July 1969, and none has been forthcoming. In those circumstances, and of course every case must be considered in the light of its own particular circumstances, I cannot but conclude that the interests of justice between the parties require some condescension to details on the part of the plaintiffs before the defendants are required to apply themselves and their legal and expert advisers to the question of defence. It will then be known what are the matters which are said to be trade secrets or confidential matter, and not simply the areas in which or the matters in respect of which it is said that the plaintiffs are or were so to speak proprietors of trade secrets or information that was confidential. All this must now be known to the plaintiffs. In so far as the plaintiffs’ rights have been breached or infringed by the first defendants, or by procurement by the second defendant, presumably the plaintiffs have at present some ground for their assertions in those regards, and can add to particulars if later other such grounds emerge on discovery.

42       Stamp LJ agreed and stated at p 727:

Where one finds a statement of claim averring a whole list of trade secrets, averring a duty of confidence in a defendant not to disclose them one is, until particulars are given, entitled to view the action as one designed to fish out a case. And where this appears to be the case it is a special reason for ordering particulars at the earliest stage.

43       Edmund Davies LJ put the matter on a higher plane by comparing the allegation of breach of confidence to an allegation of criminal conspiracy. The learned Lord Justice was of the view at p 726 that such a grave allegation of improper conduct required ‘clear particularization’.

44       There is therefore more reason where a defence has been delivered, albeit necessarily in general terms, that the respondents here give particulars of what they say is confidential information and how it has been misused by the appellants. Accordingly, we allow the appeal in respect of the application for particulars and order that the respondents serve them on the appellants within 14 days of this judgment.

Passing off — Civil Appeal No 57 of 1991

45       We now return to Civil Appeal No 57 of 1991 and consider the interlocutory injunctions based on passing off.

46       The elements of the tort of passing off have been identified, and there is no dispute between counsel on this point. In Erven Warnink BV v J Townend & Sons (Hull) Ltd, Lord Diplock said, at p 742, that it was possible to:

… identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of the goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

47       Lord Fraser, at p 755, expressed the relevant principles thus:

It is essential for the plaintiff in a passing off action to show at least the following facts: (1) that his business consists of, or includes, selling [in England] a class of goods to which the particular trade name applies; (2) that the class of goods is clearly defined, and that in the minds of the public, or a section of the public, [in England,] the trade name distinguishes that class from other similar goods; (3) that because of the reputation of the goods, there is goodwill attached to the name; (4) that he, the plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill [in England] which is of substantial value; (5) that he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason of the defendants selling goods which are falsely described by the trade name to which the goodwill is attached.

48       At the hearing below, the appellants had challenged the locus standi of the respondents to bring an action in passing off but the point was not pursued before us and we make no comment on it. The learned judge found that there was a serious issue to be tried on passing off by get up. He reasoned:

The main complaint of the plaintiffs here is that the get-up of the Lion Balm is too similar to that of the Tiger Balm products. The plaintiffs allege that the get-up of Lion Balm products copies the get-up of the Tiger Balm products in the following respects:

(i)   the glass container of the Lion Balm is hexagonal in shape and similar in size, with its logo at the bottom of the container;

(ii)   the packaging of the container of the Lion Balm is similar in style, colour and design. The label and the top-seal are of a jagged-edge tooth format. The whole packaging is then sealed by two circular seals containing the logo;

(iii)   the colour of the ‘screw-on’ cover of the hexagonal container of the Lion Balm is of the shade of bronze;

(iv)   the ‘screw-on’ cover is similarly embossed, albeit with its different logo.

I note that there are some differences in detail in the two get-ups. But I do not think that those differences are sufficient to avoid confusion or deception. The defendants have not explained why the get-up of the Lion Balm products has to be in so many ways similar to those of the Tiger Balm products.

         It is not necessary for passing-off that every part of the get-up should be imitated. In the present case the adoption of a phonetically similar Chinese name for the Lion Balm further aggravates the situation. It is common usage to refer to the Tiger Balm products by asking for them in retail outlets as ‘Wan Jin You’ and not their full titles in Mandarin. Of all possibilities, the defendants chose to call their Lion Balm products ‘Wan Yin You’. I think our case here is very close to Reckitt & Colman Ltd v Borden Inc [1990] 1 WLR 491 which concerned lemon juice sold in yellow plastic squeeze packs resembled in size, shape and colour of a natural lemon. There the court granted the plaintiff an injunction to restrain the defendant from producing lemon-shaped containers for selling lemon juice. …

         I accept that a careful purchaser would be able to differentiate between the Tiger Balm products and the Lion Balm products. But I do not think that is an answer to an action for passing-off if people are deceived or are likely to be deceived. The obligation is on the defendant to show that he has taken steps to ensure that there will be no confusion. …

         Considering the get up and the shape and size of the two jars, and the phonetic similarity in the Chinese names of the two products, I cannot help but feel that the defendants have deliberately tried to take advantage of the goodwill of the Tiger Balm products and what was done was calculated to enable a passing-off to take place. This is really a case of ‘cashing-in’ now that the JVA is due to expire. This is all the more so when we bear in mind that a fairly substantial proportion of the population in Singapore are Chinese-educated and quite a proportion of the elderly people in Singapore are illiterate. For these people I think the get-up is all that matters. Having seen the jars in which the two products are sold to the public, I have no doubt that the similarity is likely to cause confusion or, to adopt the words of Warrington J in Schweppes Ltd [(1905) 22 RPC 113], to cause the retail vendor to deceive the ultimate purchaser. In short the get-up of the Lion Balm products is deceptively similar to that of the Tiger Balm products. All the more so when it is noted that the two products are manufactured, distributed and sold by the first defendant’s group of companies. There is no need to prove actual deception: see White Hudson v Asian Organization [1965] MLJ 186. It is sufficient if the evidence shows that there is such similarity as to be calculated to cause confusion in the mind of the public.

49       In a case where passing off by get up is alleged, the relevant point of reference is the point of sale. It must be borne in mind that at the point of sale the purchaser of the balm sees only the outer packaging of the balm. At this point, it is said that the appellants have deliberately copied the packaging of Tiger balm, and the similarities alleged have been set out in the above passage from the judgment. On viewing the outer packaging of the two balms, we find ourselves in broad agreement with the view of the learned judge. Apart from our disagreement with the learned judge’s observations on the relevance of illiteracy, which this court has held to be an evaporating consideration in the Singapore of today (see Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuffs Pte Ltd at p 367) it is clear that the learned judge was entitled to come to his finding of an arguable case that the get up of the Lion Balm products is deceptively similar to that of the Tiger Balm products.

50       However, there are further points of criticism made by Mr Fysh which we should deal with. The first relates to the form of the order below. The breadth of the order restraining the appellants from dealing in GLS balm products did not indicate any appreciation of the fact that dealing in such products was only objectionable if their get-up would confuse or deceive the consumer into thinking that they were Tiger balm products. In White Hudson & Co v Asian Organization, a case on passing off by get-up, the perpetual injunction granted restrained

the defendants, their servants and agents from offering for sale, selling or otherwise dealing in medicated cough sweets not manufactured by the plaintiffs and wrapped with the defendants’ ‘Pecto’ wrapper without clearly distinguishing such wrapper from the plaintiffs’ ‘Hacks’ wrapper. (Our emphasis.)

51       We agree with counsel that words such as the italicized words are a necessary part of any injunction, whether perpetual or interlocutory, granted in a case of passing off by get up. The absence of those words in the present appeal have the effect of preventing the appellants from manufacturing and distributing balm under the GLS label, which the respondents have not objected to, and this is much too wide and undesirable in the interests of competition.

52       A second and more important point made by Mr Fysh was that the learned judge erred in holding that damages would not be an adequate remedy in this case. He cited the decision in The Boots Company Ltd v Approved Prescription Services Ltd in support. The plaintiffs in that case had for some time sold the drug ibuprofen under the name ‘Brufen’ in the form of magenta coloured pills of a particular shape. After the plaintiffs’ patent expired, the defendants wished to market a generic version of the drug in the same shape and colour. The plaintiffs sought an interlocutory injunction restraining the defendants from doing so. It was held by Whitford J at first instance that the plaintiffs had an arguable case of passing off but that the balance of convenience was against the grant of the injunction. The learned judge held that the plaintiffs would be adequately compensated by damages if they succeeded in obtaining a permanent injunction. There was no question of the defendants being unable to meet any damages awarded and the quantification of the damages would be based on the defendants’ records of the sales of their pills. On the other hand, the grant of the interlocutory injunction would force the defendants to give up the particular drug or to change to another colour. In the former situation, the damages would be difficult to quantify and in the latter, they would be in extreme difficulty whether to go back to the original colour or to stay with the new colour. The Court of Appeal agreed with Whitford J. In the present appeal, the learned judge below distinguished the Boots case on the following grounds:

(1)   the quality of the pills produced by the two companies in that case were the same,

(2)   the pills were only obtainable on prescription, and

(3)    as the pills were a controlled drug, there was no possibility of the refusal of the injunction encouraging other competitors from entering the market before the trial.

53       We would respectfully disagree. Where the dispute is between two parties of  repute and there is no question that either side would be unable to meet any subsequent award of damages, it is not in the public interest to prevent competition between two products which the respondents themselves have stated are of comparable quality: see para 11 of the affidavit of Tan Hee Chai filed on 19 June 1990. There is no evidence before us which indicates that the appellants would not be able to keep accurate records of their sales of GLS balm. Indeed, in the absence of any evidence on the keeping of records, a fair inference would be that they are capable of keeping accurate records. There would be no difficulty with the quantification of damages and accordingly we also discharge the injunctions based on passing off.

Costs

54       We now come to the question of costs. The respondents have, by their notice in Civil Appeal No 57 of 1991, appealed against the order of the learned judge that the costs of the hearings on the injunctions be in the cause. The learned judge gave no grounds for the order presumably because such an order is the normal practice of the High Court. Mr Burton contended that such a practice is wrong and that the normal rule as to costs should apply, ie costs should follow the event and, since the respondents succeeded after a contested hearing, they should get costs or at least an order that their costs be in the cause. That form of order is said to be the normal order in the Chancery Division of the English High Court and we were referred to para 29/1/10 of the Supreme Court Practice 1993.

55       We are not inclined to interfere with the decision of the learned judge. The question of costs is plainly one of discretion and the learned judge has followed the regular practice of the courts of Singapore. An interlocutory application does not purport to decide a matter on its merits. The decision of the trial judge will determine whether the interim relief ought to have been granted. In principle, if a plaintiff succeeds at trial then he should have obtained interim relief. Similarly, if a defendant succeeds at trial, then interim relief, if obtained, should not have been granted against him. Moreover, the practice of the Chancery Division is not an invariable one: see Steepleglade Ltd v Stratford Investments Ltd. The respondents’ cross-appeal in Civil Appeal No 57 of 1991 therefore fails.

56       In the result, the appellants succeed in both appeals and are to have the costs of their appeals and the respondents’ unsuccessful cross-appeal in the Civil Appeal No 57 of 1991. The security deposits for both appeals are to be released to the appellants’ solicitors. The costs of the proceedings below in both appeals remain in the cause.

Order accordingly.

Reported by Tan Chuan Thye