(1) neither admitted that the plaintiffs had continuously manufactured and marketed the product in distinctive packaging nor that the plaintiffs had extensively used, advertised or promoted the get-up of the packaging; (2) denied that the plaintiffs had acquired any reputation and or goodwill in the get-up of the packaging of the product; (3) denied that they had passed off their rice vermicelli as the product, their packaging was similar to that of the product and that they had misappropriated the plaintiffs` goodwill; (4) denied that their choice of packaging was designed to cause confusion or to pass off their rice vermicelli as the product; (5) admitted that, by an agreement dated 26 February 1988, they undertook not to pass off their goods as and for the plaintiffs` goods by the use of a packaging similar to that of the plaintiffs, but denied that they had breached the agreement.

(a) prior to 26 January 1988, the defendants had used and passed off the plaintiffs` packaging and or design and get-up; (b) as a result of the plaintiffs taking the defendants to court, the defendants, in an out-of-court settlement, agreed with the plaintiffs in an agreement dated 26 February 1988 not to `pass-off or use such packaging ...`; (c) at all material times, the defendants knew that the get-up and the design belonged to the plaintiffs and that all customers associated the product with the get-up and the design; (d) after the 26 February 1988 agreement, the defendants repackaged and redesigned their get-up on their goods, but their attempts were commercially unsuccessful; (e) as a result, the defendants repackaged and redesigned their get-up and design on their goods so that it was almost identical with the plaintiffs` get-up and design for the product.

(1) on 5 November 1993 he was served with the agreed bundle of documents for the coming trial. He noted therefrom that an application had been filed by two persons, Goh Eng Hock and Goh Eng Kean, trading as Tai Sun Noodles Manufacturers (`the first partnership`) on or about 9 July 1985 in trade mark application No 3163/85 (`the application`) for class 30; (2) on or about 12 February 1992, the first partnership assigned the benefit of the application to Goh Eng Hoe, Goh Eng Kean, Goh Eng Hock, Goh Hock Hoe and Goh Hock Wah trading as Tai Sun Noodles Manufacturers (`the second partnership`); (3) in turn, the second partnership assigned the benefit of the application to the plaintiffs, after the writ in this action was issued on 27 November 1991; (4) the application was eventually registered on 30 November 1992; (5) the plaintiffs` application to amend the statement of claim to add a cause of action based on infringement of TM 3163/85 should not be allowed as they were not the holders thereof as at the date of the writ in this action.

(a) the plaintiffs relied on s 21(1) (`the section`) of the Trade Marks Act (Cap 332) (`the Act`), which states:

[w]hen an application for registration of a trade mark in Part A or B of the register has been accepted and has not been opposed, and the time for opposition has expired, or having been opposed the opposition has been decided in favour of the applicant, the Registrar shall, subject to subsection (2), register the trade mark in Part A or B, as the case may be, and the trade mark when registered shall be registered as of the date of the application for registration and that date shall be deemed for the purposes of this Act to be the date of registrationto say that the registration of TM 3163/85 was backdated to 15 July 1985, which was the date it was filed and accepted in the registry pending opposition; (b) the guiding principle in such applications is that all relevant issues should come up before, and be disposed of by, the court; (c) the registrar had issued a s 54 certificate under the Act which states:

In any legal proceedings in which the validity of a registered trade mark comes into question and is decided in favour of the proprietor of the trade mark, the court may certify the same, and if it so certifies then in any subsequent legal proceeding in which such validity comes into question the proprietor of the trade mark on obtaining a final order or judgment in his favour shall have his full costs, charges and expenses as between solicitor and client, unless in the subsequent proceeding the court certifies that he ought not to have them.Therefore, the application is not a frivolous one; (d) the plaintiffs have every right to pursue the action for infringement and whether they do or do not succeed is a matter to be decided at the trial; (e) under s 48 of the Act, the registration of a trade mark is deemed to be conclusive after seven years unless the original registration was obtained by fraud.

(1) as amendments relate back to the date of the writ, pleadings cannot be amended to add a cause of action which was not available to the plaintiff at the date of writ but which accrued thereafter; (2) the defendants object to the proposed amendments because, as at the date of the writ, the plaintiffs were not the registered holders of a valid registration; (3) the defendants accept that TM 3163/85 is deemed registered as at the date of the writ even though it was then a pending registration. However, the registration was held not by the plaintiffs but by the first partnership; the plaintiffs were assigned the rights of the trade mark only on 12 February 1992, which was after the issuance of the writ herein; (4) as the plaintiffs` rights to exclusive use of the trade mark accrued from the date of assignment, they cannot sue for infringement based on acts occurring before the date of the assignment; (5) until the assignment, the plaintiffs did not enjoy the exclusive right to use of the trade mark; between the date of the application and the date of the assignment, the exclusive right to the use of the trade mark rested with the first partnership; (6) s 42(4) of the Act states that a trade mark shall not be assignable if, as a result, the exclusive rights subsist in more than one person; (7) the defendants were also deprived of the opportunity to cancel the trade mark registration on the ground of non-use.

(i) since the basic principle of amendment is to allow actual issues to be tried at the hearing, the amendments ought to be allowed unless it is so clear that the same cannot be sustained; (ii) the amendments are to bring into issue the statutory rights given to the plaintiffs under ss 21 and 45 of the Act; (iii) what was being assigned to the plaintiffs was not the registered trade mark but the benefit of the application. At best, the first partnership had some inchoate rights in the trade mark but as of the date of the assignment in February 1992, even the first partnership did not have a cause of action against the defendants for trade mark infringement. Whatever rights they had, however, they assigned to the plaintiffs; (iv) when the plaintiffs finally obtained registration of the trade mark, they then had a valid registration over the period which covers the dates of the infringement and the date of the writ. The rules of assignment do not apply because what was assigned by the first, and then the second, partnership was not a cause of action but rather a set of rights which later, upon registration of the trade mark, vested in the plaintiffs the right to sue for infringement as of July 1985, the time of the original application.

(1) notwithstanding the valiant arguments put forward by their counsel to the contrary, it seemed to me clear that the plaintiffs could not overcome the hurdle that, in assignments, the assignee only steps into the shoes of the assignor and acquires the rights and benefits of the latter as from the date of the assignment. Therefore, the plaintiffs only acquired the benefit of the trade mark application on 12 February 1992; (2) the rule for amendment of pleadings, on the other hand, is that the amendment is retrospective to the original date that the pleading was filed, in this case to the date the plaintiffs filed their writ, which was 27 November 1991. As at 27 November 1991, the plaintiffs were not the assignees of the trade mark application. They did not, therefore, have a cause of action for infringement of the trade mark TM 3163/85; (3) s 21(1) of the Act does not assist the plaintiffs to overcome the difficulty regarding the assignment date. All it does is to make retrospective the registration date to the date of application to the registry (15 July 1985), it does not change the law on assignments. Sections 45, 47, 48 and 54 do not help to improve the plaintiffs` position either.

(5) The defendant was accountable to the first plaintiff for profits made until the date of registration of the assignment and to the second plaintiff for profits made thereafter, regardless of the rights in equity of the plaintiffs inter se.