Ambrose J:

This was an action for infringement of a trade mark and for passing-off in respect of the sale of cigarettes. The plaintiffs, British-American Tobacco Co. Ltd., are a company incorporated in England, and have their registered office in the City of London. The first and second defendants are companies incorporated in the Federation of Malaya, and have a place of business in Singapore. The first defendant is a wholly-owned subsidiary of the second.

The plaintiffs are the registered proprietors of Trade Mark No. 29816 registered as from 13 December 1961, in cl 34 of the Register of Trade Marks, Singapore, in respect of tobacco whether manufactured or unmanufactured. The trade mark consists of a pictorial device and the words "Gold Leaf" printed above the pictorial device and on a broad coloured panel. The exclusive use of the words "Gold Leaf" was specifically disclaimed. The trade mark is not limited in whole or in part to one or more specified colours. The pictorial device comprises a lifebuoy bearing the words "Player's Navy Cut" and enclosing the head of a sailor with two ships on the sea in the background.

On 9 November 1961 the plaintiffs sold for the first time in Singapore 3,000 imported filter-tipped cigarettes packed in red and white cartons, each containing 20 cigarettes and bearing this pictorial device and the words "Gold Leaf" printed on a broad red panel. The purpose of the sale was to put the name of the brand "Player's Gold Leaf" on the Singapore market. On 28 July 1962 the plaintiffs sold for the second time in Singapore 3,000 imported filter-tipped cigarettes packed in similar cartons, each containing ten cigarettes. By arrangement with the plaintiffs, the Singapore Tobacco Co. Ltd. manufactured and sold in Singapore Player's Gold Leaf filter-tipped cigarettes in similar cartons, each containing ten or 20 cigarettes. The quantity of such locally-manufactured cigarettes sold in Singapore from 4 August 1962, to the end of November 1962 amounted to 23 million.

The defendants sold 2,000 locally-manufactured plain cigarettes in Singapore on 30 July 1962, in red and white cartons, each containing ten cigarettes and bearing a pictorial device consisting of two embossed gold leaves and the words "Virginia Gold" printed above the pictorial device and on a broad red panel. The quantity of such locally-manufactured plain cigarettes sold in Singapore in such cartons from that date to the end of December 1962, amounted to six million.

It was alleged in the statement of claim:

(1) that the defendants caused to be put upon the market in Singapore and sold cigarettes not of the plaintiffs' manufacture or merchandise in cartons which are a colourable and deceptive imitation of the plaintiffs' trade mark;

(2) that the defendants' cartons are printed in red and white and comprise the device of gold leaves as a prominent feature of the get-up;

(3) that the use of such cartons is an infringement of the plaintiffs' registered trade mark and is calculated to lead to deception and to the belief that the defendants' cigarettes are the cigarettes of the plaintiffs.

The claim for passing-off was withdrawn shortly before the conclusion of the hearing.

The issue to be decided was whether the defendants used a mark on their cartons so nearly resembling the plaintiffs' registered trade mark as to be likely to deceive or to cause confusion in the course of trade, and in a manner which renders the use of the mark likely to be taken as use as a trade mark or as importing a reference to the plaintiffs or to the plaintiffs' cigarettes.

The first proposition of Counsel for the plaintiffs was that "a trade mark is infringed if a person other than the registered proprietor or authorized user uses, in relation to goods covered by the registration, one or more of the trade mark's essential particulars." The authority cited for this proposition was a passage to that effect from the judgment of Lloyd-Jacob J in Taw Manufact