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Singapore – Passing Off: The Relevance Or Irrelevance Of Intention To Misrepresent.

 29 September, 2012

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

  

The tort of “passingoff” has often been associated with insidious and unscrupulous individuals who, in a calculated move, imitate an identical or similar trade dress of another in order to persuade customers to wrongly believe that such individuals or companies are associated with or otherwise related to the original business. Indeed, in order for a plaintiff to succeed in any action for “passing-off”, one of the key elements that the plaintiff must satisfy the court is that there is some form of “misrepresentation”. While the term “misrepresentation” is, in legal parlance, of lower culpability than that of “deceit”, it nevertheless suggests that there must be some form of representation by the defendant and that such representation was necessarily false. 
 
While the above is true for the large majority of cases on “passing-off”, every once in a while a case emerges where the facts are that the defendant had no intention to imitate the plaintiff’s trade dress but was nevertheless liable to the plaintiff for the tort of “passingoff”. The recent High Court decision of Mainfreight (S) Pte Ltd v. Mainfreight International Logistics Pte Ltd [2012] SGHC 169 (“Mainfreight”) is one such case.
 
In Mainfreight, the plaintiff was a company incorporated in Singapore on 12 November 1988 and has been in business for 22 years providing shipping, freight forwarding, and warehousing services to customers in Singapore and overseas. 
 
The defendant was incorporated in Singapore on 20 August 2010. It provides freight forwarding, packing and crating services. The defendant was a wholly owned subsidiary of Manfreight Ltd, a company incorporated in New Zealand in 1978. Manfreight Ltd is a global supply chain logistics provider and has a number of offices, branches and subsidiaries in New Zealand, Australia, the United States of America and Asia. Mainfreight Ltd was listed on the New Zealand Stock Exchange in 1996. 
 
It was not in dispute that the defendant’s choice of the name “Manfreight” was not to imitate the plaintiff’s name, but rather, a continuation of the defendant’s parent company’s name, Manfreight Ltd. Pertinently, the defendant’s parent company, Manfreight Ltd, was incorporated and began business almost 10 years before than the plaintiff, albeit, outside Singapore. Notwithstanding the above and the absence of any evidence that the defendant intended to imitate the plaintiff’s trade dress, the court was nevertheless of the view that there was misrepresentation” by the defendant. The reason for so finding was because there was evidence by the plaintiff that the public would be confused between the plaintiff’s services and the defendant’s services, and this decision must be correct. The tort of “passing-off” is not meant to merely prevent the imitation of another person’s trade dress, but affords a much broader protection, namely, to protect goodwill. In Mainfreight, the issue was that of actual confusion on the plaintiff’s customers’ part as to the relationship between the plaintiff and the defendant. There was thus a real possibility that the plaintiff’s customers may wrongly believe that the defendant was associated with or related to the plaintiff and consequently, engage the defendant’s services in error. “Misrepresentation” was therefore established. 
 
Cases such as Mainfreight serve as gentle (and often timely) reminders that the absence of any intention to “misrepresent” does not automatically absolve one from liability for “passingoff”.

  

  

For further information, please contact:

 

Arthur Yap, ATMD Bird & Bird

Arthur.yap@twobirds.com

 

 

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