JUDGMENTBY: BUTTROSE J (READ BY AMBROSE J), WEE CHONG JIN J, AMBROSE J

BUTTROSE J (READ BY AMBROSE J) This is an appeal from a judgment of Tan Ah Tah J. granting an injunction restraining 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 it from the plaintiffs HACKS wrapper.

What a plaintiff must prove in a passing-off action such as this was clearly laid down by Cozens-Hardy M.R. in the case of JB Williams & Co v H Bronnley & Co Ltd (1909) 26 RPC 765, 771. What was there said by the Master of the Rolls was this:

"It seems to me that in the first place he (the plaintiff) must, in

order to succeed, establish that he has selected a peculiar -- a novel

-- design as a distinguishing feature of his goods, and that his goods

are known in the market, and have acquired a reputation in the market,

by reason of that distinguishing feature, and that unless he

establishes that, the very foundation of his case fails. If he takes a

colour and a shape which are common to the trade the only distinctive

feature is that which he has added to the common colour and the common

shape, and unless he can establish that there is in the

added matter such a similarity as is calculated to deceive, I think he

must fail."

This case followed the House of Lords decision in Schweppes Ltd v Gibbens (1905) 22 RPC 601, 607. I do not propose to go through the evidence. I have come to the conclusion here that the plaintiffs have failed to make out a case of passing-off.

The name PECTO is set out clearly and distinctly in white lettering in three separate places on the defendants wrapper and in quite a different manner to that in which the name HACKS appears on the plaintiffs wrapper. The gist of the plaintiffs case, as I understood it, was that notwithstanding this the PECTO wrappers were of the same orange colour and identical with their own HACKS wrappers and that this constituted a passing-off.

But there was nothing either in the colour, shape, size or mode of wrapping which, in my opinion, constituted a peculiar -- a novel or capricious -- design as a distinguishing feature of the sweet. The plaintiff in a passing-off action is claiming a monopoly, a thing which the law will only allow him if he proves conclusively in the words of Harman J. in M Saper Ltd v Specters Ltd and Boxes Ltd (1953) 70 RPC 173, 178:

"That, owing to the merits of the matter, he ought to be protected, in

the interests of honest trading and general commercial morality."

The plaintiffs, in my opinion, have no right to a monopoly of orange, red or other coloured paper for wrapping sweets -- cough or otherwise -- because as it seems to me they are common things in, and well known feature of, the trade.

The defendants were only using what was a common device, namely, coloured wrappers for their cough sweets. There was nothing unusual in the way the sweets were wrapped and they were of a normal size and shape and the plaintiffs cannot have any of those claims to monopoly which alone would entitle them to an injunction. This is sufficient to dispose of the matter in the defendants favour.

With regard to the other matters raised by the plaintiffs on this appeal, there was, in my view, no substance in them. The evidence given on behalf of the plaintiffs was unsatisfactory and fell far short of establishing either reputation or deception. A considerable amount of the evidence was hearsay and inadmissible, and the learned trial Judges finding as to illiteracy was not, in my opinion, supported by the evidence.

The appeal must accordingly, in my judgment, be allowed with costs both here and in the Court below.

WEE CHONG JIN J This is an appeal in a passing-off action. The fundamental and indeed the only principle of law involved in

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