JUDGMENT

Gunn Chit Tuan CJ (Malaya):

This was an appeal against the decision of the learned High Court Judge, Dato' Haji Abdul Malek bin Haji Ahmad, given on 17 December 1992, after trial of the action in Kuala Lumpur High Court Civil Suit No. C1305 of 1985. The learned Judge had found, inter alia, that there was passing-off by the appellants of their trade or business and/or popiah skins as and for that of the respondent by the use of:

(i) the trade name "Tee Yih Jia" whether in Roman or Chinese characters; (ii) a package get-up identical to or closely resembling the respondent's package get-up; (iii) the "swastika" logo appearing at the bottom lefthand corner of the get-up.

The facts as found by the learned High Court Judge

One Goi Seng Hui, the Chairman and Managing Director of the respondent, and Seet Chuan Seng, the first appellant, had with a few others, launched the popiah (spring roll) skin business on 14 October 1969 in Singapore under the name "Tee Yih Jia Po Piah Dried Pastry Factory (Pte) Ltd." and had successfully carried on business as manufacturers and sellers of popiah skins packed in various sizes of polythene wrappers. It was not disputed that their success was attributed to the fact that the popiah skins, square in shape, were for the first time made by machine and their unsurpassed durability had resulted in their overwhelming popularity. There was also no disagreement as to the fact that the first appellant had left and rejoined the respondent but had later started a limited company in the form of the second appellant in Malaysia.

The bone of contention between the parties was the trade name "Tee Yih Jia" (hereinafter "TYJ") which translated from Chinese means "the first house", "the first one", "first grade", "foremost" or "pioneer". Both parties had given evidence in the High Court that each of them had decided on the name first and had designed the relevant logo similar to the swastika symbol or four square popiah skins placed together, and had done the relevant get-up.

The Issue

Although a number of issues were raised at the trial, there was according to the learned Judge, and we agreed with him, that there was only one issue, namely whether the first appellant by forming the second appellant in Malaysia and carrying on a similar business using the same name "TYJ", logo and get-up, passing-off has been established by the respondent to warrant the Court granting the prayers asked for, namely an injunction to restrain the appellants from continuing the alleged acts of passing-off, and orders that the second appellant do forthwith apply to the Registrar of Companies to have its corporate name amended by the removal of the words "TYJ" therefrom, for delivery up of all the offending goods, full discovery of all relevant documents, obliteration of all offending marks followed by due verification upon oath, an inquiry for assessment of damages for breach of contract, confidence and passing-off, costs and such further and other relief as the Court may deem just. We also agreed with the learned Judge that the whole case in this suit also hinged upon the agreement made between the said Goi Seng Hui and the first appellant on 30 September 1980 and it is therefore necessary to set out hereunder in full the agreement minus its Schedule A:

This Agreement is made 30 September One Thousand Nine Hundred and Eighty (1980) between Seet Chuan Seng of No. 8R, Block E, Amber Tower, Amber Road, Singapore (hereinafter called "the Vendor") of the one part and Goi Seng Hui of No. 34, Farrer Road, Singapore, (hereinafter called ''the Purchaser") of the other part.

Whereas:

1. The vendor is the registered proprietor of 1,250 fully paidup shares in the undertaking known as Tee Yih Jia Po Piah Dried Pastry (Private) Limited, a company incorporated in Singapore and having its registered office at No. 14, Little Road, Singapore, (hereinafter called "the Company") of which the vendor is the Managing Director and the purchaser th