Judgment

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

FA Chua J:

1           The plaintiffs, Excelsior Pte Ltd, claim an injunction to restrain the defendants, Excelsior Sport (S) Pte Ltd, from using the word ‘Excelsior’ in the name of the business known as Excelsior Sport (S) Pte Ltd carried on by them in Singapore.

2           The plaintiff company was incorporated in Singapore on 17 January 1947, and continuously carried on business in Singapore as a supplier of a variety of swimwear, sportswear and other clothing and they trade at No 66, High Street.

3           The defendant company was incorporated in Singapore on 18 April 1981 and carried on business as a supplier of sportswear and other clothing and they trade at Peninsula Plaza, at the corner of Coleman Street and North Bridge Road.

4           The plaintiff company has been for about 22 years the sole agents of ‘Munsingwear’, a popular brand of American sportswear in Singapore and Malaysia.

5           Some 34 years after the incorporation of the plaintiff company, the plaintiffs found that the defendant company had been set up in Singapore, doing business in essentially the same merchandise, not far away, and with a name that closely resembled the plaintiffs’ name.

6           The plaintiffs say that in the course of their business and for the purpose of identifying and promoting the same, they have made extensive use of the name ‘Excelsior Pte Ltd’. They further say that the plaintiff company has acquired goodwill and reputation in the name or word ‘Excelsior’ and that members of the public have, during the course of 35 years since the plaintiffs’ incorporation, identified the name or word ‘Excelsior’ with that of the undertaking and business of the plaintiff company and for 22 years with the supply by the plaintiff company of ‘Munsingwear’ garments.

7           In the course of its business and for the purpose of identifying and promoting the same, the defendant company makes use of the name ‘Excelsior Sport (S) Pte Ltd’ The plaintiffs say that the defendant company’s use and continued use of the name ‘Excelsior’ represents and/or holds out to the public in Singapore that its business is associated or connected with the plaintiff company and/or that the defendant company is the duly authorized agent of the plaintiff company. Such representation, or holding out, the plaintiffs say, does, and/or is calculated to annex to the defendant company’s business some part of the goodwill and reputation which has become annexed to the plaintiffs’ business in Singapore or to pass off the defendant company’s business as and for the business of the plaintiff company, and has led to the defendant company’s business being confused with the Plaintiff Company’s business and to members of the public acquiring the goods and/or services of the defendant company in the belief that they are the goods and/or services of the plaintiff company.

8           The plaintiffs say that by reason of the matters aforesaid they have suffered and continue to suffer loss and damage.

9           We are here not dealing with a case of passing-off in respect of goods, but are concerned with passing-off involving the use of a particular word in a trade name. The law relating to passing-off in relation to goods and to the passing-off of trade names is the same.

10       It is an actionable wrong for a defendant to represent, for trading purposes, that his goods are those or that his business is that of the plaintiff. In Reddaway v Banham [1896] AC 199 Halsbury LC said (at p 204):

For myself, I believe the principle of law may be very plainly stated, and that is, that nobody has any right to represent his goods as the goods of somebody else.

How far the use of particular words, signs, or pictures does or does not come up to the proposition which I have enunciated in each particular case must always be a question of evidence, and the more simple the phraseology, the more like it is to a mere description of the article sold, the greater becomes the difficulty of proof; but if the proof establishes the fact the legal consequence appears to follow.

11       The ground of interference by the courts in trade name cases is that the use of the defendant company’s name is calculated to deceive or has deceived and so to divert business from the plaintiff to the defendant or occasioned a confusion between the two business (Kerly’s Law of Trade Marks and Trade Names (10th Ed) paras 16–73). Whether or not there is confusion is a question of fact (The North Cheshire and Manchester Brewery Co Ltd v The Manchester Brewery Co Ltd; [1899] AC 83; The Dunlop Pneumatic Tyre Co Ltd v The Dunlop Motor Co [1907] AC 430 judgment of Lord Loreburn LC at p 436).

12       In order to succeed it is not necessary for the plaintiffs to prove fraudulent intention on the part of the defendants (Kerly, paras 16–74). Nor do the plaintiffs need to show actual deception (Kerly, paras 16–77).

13       I now turn to the facts in this case. The evidence before me establishes that the plaintiffs’ name has acquired a goodwill and reputation in Singapore and Malaysia and in particular that they have acquired goodwill and reputation by the extensive use of their name while carrying on the business of suppliers of a wide variety of swimwear, sportswear and other clothing and in particular as the sole agents of ‘Munsingwear’ sportswear. Members of the public have in the course of 35 years identified the name ‘Excelsior’ as the plaintiff company and as the sole agents of ‘Munsingwear’ sportswear for 22 years.

14       The defendants say that they are associated in Hong Kong with a company with a similar name and their choice of their name was not intended to deceive or confuse. The plaintiffs and the defendants carry on the same type of business and it is not incumbent on the plaintiffs, in order for them to succeed, to establish that the defendants set out to deceive (see Mun Loong Co Sdn Bhd v Chai Tuck Kin [1982] 1 MLJ 356).

15       The trade name will normally have attached to it a goodwill that the courts will protect. An action for passing-off, as I have said, will lie wherever the defendant company’s name is calculated to deceive, and so to divert business from the plaintiff to the defendant, or to occasion a confusion between the two businesses (Kerly paras 16–50). If a trade name suggests that the defendant’s business is an extension, branch or another agency of or otherwise connected with the plaintiffs’s business an injunction will be granted (Ewing v Buttercup Margarine Co Ltd [1917] 2 Ch 1).

16       The plaintiffs’ evidence establishes the fact that confusion existed and continues to exist between the business of the plaintiffs and that of the defendants. It is clear from the evidence that the plaintiffs and the defendants carry on the same or similar business activities. The plaintiffs deal mainly in clothing and sportswear, the defendants in sportswear. The prominent word of the two names is ‘Excelsior’. It is not a common word neither is it descriptive of the two business. It is a fancy word.

17       Lord Simonds in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 had this to say as regards a fancy word (at p 42):

So it is that, just as in the case of a trade mark the use of descriptive words is jealously safeguarded, so in the case of trade names the courts will not readily assume that the use by a trader as part of his trade name of descriptive words already used by another trader as part of his trade name is likely to cause confusion and will easily accept small differences as adequate to avoid it. It is otherwise where a fancy word has been chosen as part of the name. Then it is that fancy word which is discriminatory and upon which the attention is fixed, and if another trader takes that word as part of his trade name with only a slight variation or addition, he may well be said to invite confusion. For why else did he adopt it?

18       Here the defendants have chosen a fanciful word which the plaintiffs have used for 34 years. The evidence of the plaintiffs is that in the course of business the customers refer to them as ‘Excelsior’. This is a fancy word ‘which is discriminatory and upon which the attention is fixed’. The word ‘Sport’ in the defendants’ name is insufficient to distinguish the defendants’ business from that of the plaintiffs’ since it precisely describes the nature of the plaintiffs’ business. I find that the close resemblance of the two names has caused and is likely to continue to cause confusion.

19       The two businesses in this case are only one block apart and, that being so, it seems to me inevitable that confusion must be created by the defendants carrying on a not very dissimilar business not very far away in the same shopping area.

20       There is ample evidence of actual confusion arising from the defendants’ use of their name. There were misdirected telephone enquiries. The plaintiffs received one or two calls daily for the defendants in 1981. The callers would invariably ask for ‘Excelsior’ and then it would be ascertained that the call was meant for the defendants. There was an occasion when the plaintiffs and the defendants placed an advertisement in the programme of the Inter-Airlines Golf Tournament and the plaintiffs’ name was left out of the Advertisers’ Index. The organizers of the tournament subsequently apologized for the oversight. They had mistaken the defendants to be the plaintiffs. There were instances of letters addressed to the plaintiffs being wrongly delivered addressed to the defendants and even as recently as 1985 the plaintiffs continued to receive mail meant for the defendants.

21       In Procea Products Ltd v Evans & Sons Ltd (1951) 68 RPC 210 it was held that although no damage had been proved, an action for damages for passing-off lies without proof of actual damage and the court awarded nominal damages. See also the case of Henderson v Radio Corp Pty Ltd [1969] RPC 218.

22       In all the circumstances it appears to me that there has been a clear breach of the plaintiffs’ right to their trade name; that that right has been infringed in circumstances which require that the court should intervene to prevent future infringement and the plaintiffs, accordingly, are in my view entitled to an injunction.

23       There will be judgment for the plaintiffs with costs and $100 damages and an injunction in terms of prayer one of their claim and the injunction be suspended for a period of 60 days to enable the defendants to effect a change of their name to a name acceptable to the Registrar of Companies which does not include the name ‘Excelsior’.

Claim allowed.