ENG'S WANTAN NOODLE PTE. LTD. & Anor v ENG'S CHAR SIEW WANTAN MEE PTE. LTD.

Facts

The case is part of the long-running dispute over the "Eng's" name for wanton noodles, which began with Mr Ng Ba Eng's hawker stall at Dunman Food Centre. A joint venture company, Eng's Noodles House, traded from 287 Tanjong Katong Road until it ceased business in February 2018. The first claimant, Eng's Wantan Noodle Pte Ltd, part of a group headed by the second claimant Thomas Hong, then took over those premises, while Mr Ng's daughters set up the defendant, Eng's Char Siew Wantan Mee Pte Ltd, across the road. The defendant later registered several "Eng's" trade marks after a contested opposition, sent letters threatening infringement proceedings, and displayed a poster calling the first claimant's shop counterfeit and referring to food poisoning there.

The claimants sued in HC/OC 365/2022 for defamation and groundless threats, and sought declarations that they were not liable for infringement or passing off. The defendant counterclaimed for trade mark infringement, passing off and protection of well known marks. Liability and damages were bifurcated. Before trial each side filed a single application pending trial: the claimants in SUM 2993 sought four categories of documents and $150,000 as security for costs of the counterclaim, and the defendant in SUM 2994 sought documents about the food poisoning incident.

Issues

1. What test applies to production of requested documents under O 11 r 3 of the Rules of Court 2021
2. Whether the business, accounts, remuneration and food poisoning documents were material to the issues at the liability trial
3. Whether it was just to order the defendant to provide security for costs of its counterclaim

Holding

The Assistant Registrar dismissed both applications. No documents were ordered to be produced because they were either not linked to a pleaded issue or not material to the liability trial, and security for costs was refused as it would not be just. The parties were directed to file short written submissions on costs.

Reasoning

Noting that the new disclosure regime had not yet been considered in a decision, the Assistant Registrar explained that O 11 of the Rules of Court 2021 deliberately tightens disclosure compared with the old rules, in light of the cost of reviewing ever larger volumes of data. A requesting party must properly identify the documents, show they are material to a pleaded issue, and give some basis for believing the other side holds them. Materiality is stricter than the old relevance-necessity test: the documents must bear significantly on an issue so that they could affect the outcome.

The defendant's branch operation documents and accounts went to loss, but proof of loss is not needed to establish liability for passing off, infringement under s 27 of the Trade Marks Act 1998 or well known marks, so under the bifurcation order they were not yet material. Whether the Ng family were "simple and poor folk" was not a pleaded issue and could not affect the result. The claimants had admitted the food poisoning incidents and the temporary suspension of their restaurant, so the truth of that matter was no longer live.

On security, the defendant accepted there was reason to believe it could not pay costs, so the question was whether an order would be just. The counterclaim substantially overlapped with the claimants' own claim for negative declarations, and the claimants had chosen to bring the fight, so the rationale of protecting a party who cannot avoid being sued did not apply; a stay of the counterclaim could also cause injustice. The counterclaim for infringement of two of the name marks appeared to have a reasonably good prospect of success, given evidence of confusion and the difficulties facing the own name and prior use defences. There was also evidence that the defendant's lack of means was partly caused by the first claimant's conduct, so an order would be oppressive. The Assistant Registrar added that security should ordinarily be sought promptly, with the court's prior approval if before the single application pending trial.

From the judgment