Sinnathuray J

In this action the plaintiffs claim an injunction for infringement of their registered Trade Mark. At the trial, the plaintiffs added another claim for an injunction for passing-off. The two claims are different, they have to be considered separately, and I should at the outset state what the differences are.

An action for infringement is founded on property. The plaintiffs claim to be the owners of a valid registered trade mark. The allegation made against the defendants is that they have violated the proprietary rights of the plaintiffs. In a passing-off claim, the plaintiffs allege that the defendants have wrongly represented their goods as the goods of the plaintiffs; in such a claim the plaintiffs' goods must have some sort of reputation, and there must be deception or confusion caused by the defendants' goods.

In the present case, at the conclusion of the hearing, I held that there was no evidence of passing-off. The action that was fought out was the complaint that the defendants had in their advertisements infringed the registered Trade Mark of the plaintiffs. Again, on the facts and for the reasons I give, this claim also failed.

The plaintiffs, Fraser & Neave Limited (F & N), are engaged in manufacturing and bottling aerated beverages. They have been so engaged in Singapore for more than 90 years. They started business in 1883. They became a public company in 1898. Since the turn of the century, they have opened bottling plants in many places in the countries now called Brunei, Indonesia, Malaysia, and Thailand. One of the aerated beverages bottled by the plaintiffs is sarsaparilla. It is "a sweetened carbonated beverage similar to root beer with the predominant flavour from birch oil and sassafras": see Webster's Dictionary, 3rd Edition, at page 2015. The drink of the plaintiffs is denoted in three Chinese characters which phonetically rendered is pronounced "Sar See Swee".

The defendants, Yeo Hiap Seng Limited, are also manufacturers of and dealers in, among other things, aerated beverages. At first they bottled "still" drinks, soya bean milk, and chrysanthemum tea. Late in the nineteen sixties they entered the market in carbonated drinks. They are the licensees in Singapore of the trade mark "Mirinda" owned by Pepsi-Cola International of New York. In the "Mirinda" range, they bottle and market Mirinda Orange, Mirinda Lemon Lime, Mirinda Strawberry, and a few others. About the end of 1977, they started bottling sarsaparilla. They advertised the drink "Mirinda Sarsi". In the advertisements in Chinese, for "sarsi" the defendants used the same Chinese characters as used by the plaintiffs for their sarsaparilla.

It is not in dispute that on January 2, 1940 the plaintiffs became the registered proprietors in Singapore of Trade Mark No. 4551 in Class 32, aerated beverages (non-alcoholic), in respect of sarsaparilla. The mark is in a rectangular paper label; it has the plaintiffs' name in English and Chinese; it bears the device of a "lion" in a circle; and in a scroll design are the three Chinese characters "Sar See Swee".

The Certificate issued by the Registrar of Trade Marks for use in legal proceedings dated February 2, 1978 states that the transliteration of the three Chinese characters appearing on the mark is "Sar See Swee" meaning "Sarsaparilla Water". The third character phonetically rendered "Swee" means "water"; so that sarsaparilla is denoted by the first two characters "Sar See".

These two Chinese characters when Romanised can be rendered in different ways. I have used "Sar See". It has been spelt "sarsae". The plaintiffs render it "sarsi". These proceedings have come about because the defendants too want to render it "sarsi". Hereafter, unless otherwise stated, I use the word "sarsi" to refer to the two Chinese characters as well as the phonetic rendering of them.

The plaintiffs' claim for infringement is made on two grounds. First they say that as registered proprietors of the Trade Mark No. 4