(Singapore) The plaintiff Hong Kong company had manufactured toothbrushes and exported them to Singapore, for re-export to Malaysia and Indonesia, but with some local sales as well. Their characteristic get-up included the words ‘ACE BRAND’ and a letter device. They stopped when the Singapore government imposed import duty on toothbrushes. Since then the plaintiff had not manufactured any toothbrushes for export to Singapore, it did not carry on any business in Singapore itself, and it had no intention of resuming its former trade. The defendant formed a company with a name similar to that of the plaintiff, and commenced marketing toothbrushes under the same get-up save that they used AGE instead. The plaintiff sued in Singapore for passing-off to restrain the defendant from using the name and get-up similar to that which the plaintiff had previously used.
Held: The claim failed.
Lord Diplock described the nature of passing off: ‘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, as the subject of proprietary rights, is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each. 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. . . Once the Hong Kong Company had abandoned that part of its former business that consisted in manufacturing toothbrushes for export to and sale in Singapore it ceased to have any proprietary right in Singapore which was entitled to protection in any action for passing-off brought in the courts of that country.’
As to abandonment, if a business clearly ceases to trade with no intention of it being revived, then the goodwill is lost unless it is assigned. If not assigned then some intention to revive the business, even if not imminently, needs to be shown. It must be something more than mere possibility. An intention to resume may be more readily believed where the cessation was compelled by external circumstances
Lord Diplock
[1976] FSR 256, [1976] UKPC 2
Bailii
Commonwealth
Cited by:
Cited – Jules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Doubted – Orkin Exterminating Co Inc v Pestco Co of Canada Ltd 10-Jun-1985
Canlii (Court of Appeal, Ontario) Torts — Passing off — Goodwill — Pest control company carrying on business in United States but not in Canada — Company having reputation among Canadian customers for . .
Cited – Bhayani and Another v Taylor Bracewell Llp IPEC 22-Dec-2016
Distinction between reputation and goodwill
The claimant had practised independently as an employment solicitor. For a period, she was a partner with the defendant firm practising under the name ‘Bhayani Bracewell’. Having departed the firm, she now objected to the continued use of her name, . .
Dicta Approved – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 01 November 2021; Ref: scu.260079
