Monarch Beverage v Kickapoo: Trademark Infringement, Passing Off & Conspiracy
The Monarch Beverage Company (Europe) Ltd, an Irish company, sued Kickapoo (Malaysia) Sdn Bhd and Kickapoo Beverage Pte Ltd in the High Court of Singapore for trademark infringement and passing off, alleging that Kickapoo (Malaysia) Sdn Bhd used unauthorized beverage bases to produce its Kickapoo beverage. Kickapoo (Malaysia) Sdn Bhd counterclaimed against Monarch for breach of contract and conspiracy, alleging that Monarch breached their licensing agreement and conspired with other parties to harm its business. Tan Lee Meng J held that Kickapoo (Malaysia) Sdn Bhd infringed Monarch's trademarks and engaged in passing off, and that Monarch engaged in a conspiracy against Kickapoo (Malaysia) Sdn Bhd. Damages were to be assessed by the Registrar.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Judgment for Plaintiff on trademark infringement and passing off; Judgment for Defendant on conspiracy counterclaim.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Monarch sued Kickapoo for trademark infringement and passing off. Kickapoo counterclaimed for breach of contract and conspiracy. The court found for Monarch on trademark and passing off, and for Kickapoo on conspiracy.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Kickapoo (Malaysia) Sdn Bhd | Defendant, Claimant | Corporation | Judgment for Defendant on trademark infringement and passing off | Lost | |
| Kickapoo Beverage Pte Ltd | Defendant | Corporation | Judgment for Defendant on trademark infringement and passing off | Lost | |
| The Monarch Beverage Company (Europe) Ltd | Plaintiff | Corporation | Judgment for Plaintiff on trademark infringement and passing off | Partial | |
| Ying F & B Pte Ltd | Defendant | Corporation | Neutral | Neutral | |
| Chia Yong Khoon | Defendant | Individual | Neutral | Neutral | |
| Yeo Puoy Cheng | Defendant | Individual | Neutral | Neutral | |
| Heng Sheng Corporation Pte Ltd | Defendant | Corporation | Neutral | Neutral |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tan Lee Meng | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| R Chandran | Leo Fernando & Co |
| Ponampalam Sivakumar | Joseph Lopez & Co |
| Tan Siew Tiong | LawHub LLC |
4. Facts
- Monarch is the registered proprietor of the Kickapoo Joy Juice and Kickapoo trademarks.
- Kickapoo (Malaysia) Sdn Bhd was granted an exclusive license to produce and sell Kickapoo Joy Juice in Malaysia and Singapore.
- Monarch claimed to have terminated the license agreement and sued Kickapoo (Malaysia) Sdn Bhd for trademark infringement and passing off.
- Kickapoo (Malaysia) Sdn Bhd counterclaimed for breach of contract and conspiracy.
- Kickapoo (Malaysia) Sdn Bhd used unauthorized beverage bases to produce its Kickapoo beverage.
- Monarch increased the price of beverage bases by 1,000%.
- Monarch granted Heng Sheng Company a license to manufacture and sell Kickapoo beverage in Shanghai, but all drinks produced were sent to Singapore.
5. Formal Citations
- The Monarch Beverage Company (Europe) Ltd v Kickapoo (Malaysia) Sdn Bhd and Another, Suit 284/2005, [2009] SGHC 55
6. Timeline
| Date | Event |
|---|---|
| Monarch's predecessor granted Kickapoo (Malaysia) Sdn Bhd an exclusive license to produce and sell Kickapoo Joy Juice in Malaysia and Singapore. | |
| The Monarch Company Inc assigned its business and rights to the Kickapoo marks to Monarch. | |
| Monarch served Kickapoo (Malaysia) Sdn Bhd a notice of termination of the license agreement. | |
| Monarch gave Heng Sheng Company a license to manufacture and sell Kickapoo beverage in Shanghai. | |
| Monarch informed Kickapoo (Malaysia) Sdn Bhd that the price of Kickapoo beverage bases would increase from USD 60 per gallon to USD 602 per gallon. | |
| Kickapoo (Malaysia) Sdn Bhd asked Heng Sheng Company why it had stopped purchasing its Kickapoo beverage. | |
| Kickapoo (Malaysia) Sdn Bhd wrote to Heng Sheng Company to demand that it stop supplying, selling, or distributing Kickapoo drinks without its authority. | |
| Kickapoo (Malaysia) Sdn Bhd sent another letter to Heng Sheng Company. | |
| Officers from the Malaysian Ministry of Health visited Kickapoo (Malaysia) Sdn Bhd’s bottling plant and found beverage bases from Tropical. | |
| Monarch terminated the license agreement with Kickapoo (Malaysia) Sdn Bhd. | |
| Monarch appointed Heng Sheng Corporation Pte Ltd as bottlers and distributors of Kickapoo drinks for the Singapore market. | |
| Judgment reserved |
7. Legal Issues
- Trademark Infringement
- Outcome: The court held that Kickapoo (Malaysia) Sdn Bhd and Kickapoo Beverage Pte Ltd infringed Monarch's trademarks.
- Category: Substantive
- Sub-Issues:
- Use of identical mark
- Use in relation to identical goods
- Lack of consent from proprietor
- Passing Off
- Outcome: The court held that Kickapoo (Malaysia) Sdn Bhd and Kickapoo Beverage Pte Ltd were guilty of passing off.
- Category: Substantive
- Sub-Issues:
- Goodwill in the marks
- Misrepresentation
- Damage or likelihood of damage
- Breach of Contract
- Outcome: The court held that Monarch breached the license agreement by failing to supply Kickapoo (Malaysia) Sdn Bhd with the remaining 800 gallons of beverage bases ordered before the price increase.
- Category: Substantive
- Sub-Issues:
- Unjustified termination notices
- Failure to supply beverage bases
- Price increase
- Conspiracy by Unlawful Means
- Outcome: The court held that all the defendants in the counterclaim were involved in a conspiracy by unlawful means against Kickapoo (Malaysia) Sdn Bhd.
- Category: Substantive
- Sub-Issues:
- Wrongful breach of license agreement
- Wrongful inducement of breach of distribution agreement
8. Remedies Sought
- Injunction
- Damages
- Account of Profits
9. Cause of Actions
- Trademark Infringement
- Passing Off
- Breach of Contract
- Conspiracy
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Beverage
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| MP-Bilt Pte Ltd v Oey Widarto | High Court | Yes | [1999] 3 SLR 592 | Singapore | Cited for the principle that the duty to mitigate damages does not arise if the innocent party decides to affirm the contract. |
| Perry v Truefit | N/A | Yes | (1842) 6 Beav 66 | N/A | Cited for the principle that a person is not allowed to sell his own goods under the pretense that they are the goods of another. |
| Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) | N/A | Yes | [2006] 2 SLR 669 | Singapore | Cited for the requirements to succeed in an action for passing off. |
| Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd | N/A | Yes | [2003] 4 SLR 755 | Singapore | Cited for the 'oft-cited trinity of requirements for a passing off action'. |
| H P Bulmer Ltd and Showerings Ltd v J Bollinger SA | N/A | Yes | [1978] RPC 79 | N/A | Cited for the principle that the plaintiff in a passing off action does not have to prove that he has actually suffered damage by loss of business. |
| Fercometal SARL v Mediterranean Shipping Co SA | N/A | Yes | [1989] 1 AC 788 | N/A | Cited for the principle that an unaccepted repudiation has no legal effect. |
| Howard v Pickford Tool Co Ltd | N/A | Yes | [1951] 1 KB 417 | N/A | Cited for the principle that an unaccepted repudiation has no legal effect. |
| Wu Yang Construction Group Ltd v Zhejiang Jinyi Group Co Ltd | Court of Appeal | Yes | [2006] 4 SLR 451 | Singapore | Cited for the elements of the tort of conspiracy by unlawful means. |
| R v Siracusa | N/A | Yes | (1190) 90 Cr App R 340 | N/A | Cited for the principle that the existence of a conspiracy can be inferred from overt facts. |
| Asian Corporate Services (SEA) Pte Ltd v Eastwest Management Ltd (Singapore Branch) | Court of Appeal | Yes | [2006] 1 SLR 901 | Singapore | Cited for the principle that proof of conspiracy is normally inferred from other objective facts. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 1998 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Kickapoo Joy Juice
- Kickapoo
- Trademark infringement
- Passing off
- License agreement
- Beverage bases
- Unauthorized sources
- Conspiracy
- Shanghai license
- Sole distributorship agreement
15.2 Keywords
- trademark
- infringement
- passing off
- contract
- conspiracy
- Kickapoo
- beverage
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 90 |
| Passing Off | 90 |
| Inducement of Breach of Contract | 70 |
| Conspiracy by Unlawful Means | 70 |
| Contract Law | 60 |
| Breach of Contract | 60 |
| Commercial Law | 30 |
16. Subjects
- Intellectual Property
- Contract Law
- Tort Law