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  • Ong Ah Tiong v Public Prosecutor[2004] 1 SLR 587; [2004] SGHC 11
    that a the sentencing judge made the wrong decision as to the proper factual basis for sentence b there was an error on the part of the trial judge in appreciating the material placed before him c the sentence was wrong in principle or d the sentence imposed was manifestly excessive Tan Koon Swan v PP 1986 SLR 126 Lim Poh Tee v PP 2001 1 SLR 674 11 This appeal was brought on the fourth ground that the sentence of 32 months imposed on the appellant was manifestly excessive in light of the trial judge s failure to consider or consider adequately the facts of the case all the mitigating factors and the relevant sentencing precedents 12 I turn now to the issues raised upon appeal Aggravating factors 13 The appellant took issue with various aggravating factors that the trial judge noted when coming to his decision on sentence 14 I accepted the appellant s contention that the total number of infringing articles involved was only 25 234 and not the number of 26 449 arrived at by the trial judge Nevertheless I considered that this relatively slight difference in number was immaterial for sentencing purposes 15 The appellant argued that there was no evidence supporting the conclusion that he was a large scale distributor of the counterfeit items as the items seized had been accumulated over a period of five to six years I was not convinced by this argument Regardless of the period over which the items were accumulated the fact remained that a large number of items which the appellant admitted to acquiring with the intention of selling were amassed and found in his shop In response to the appellant s further argument that there was no evidence of him selling the items at the time of the raid I can only point him to s 49 c of the TMA under which he was charged The section clearly states that the appellant was charged with possession for the purpose of trade and the appellant himself admitted that there was that requisite purpose 16 In addition to this argument counsel told the court that the appellant intended to re export the articles in order to recoup his losses In my view this could only be construed as an admission that the appellant had a recent intention to trade in the articles Further as the trial judge succinctly noted Singapore is a prominent business hub with a reputation for upholding intellectual property rights It is manifestly in the public interest to deter potential criminals who are inclined to use Singapore as a distribution centre or a base for transhipment of counterfeit products to neighbouring countries I therefore agreed with the sentiments of the trial judge that the appellant s intention of re exporting the counterfeit items rather than of selling them in Singapore was not of any mitigating value whatsoever 17 The appellant further alleged that there was no basis for the trial judge s conclusion that the items involved were popular items since they were old stock bought over two years ago and were obsolete and not saleable In my understanding both the old Gameboy cartridges as well as the Sony PS1 memory cards and game controllers are backward compatible that is these older accessories can still be used in newer models of the Gameboy handheld and the Sony PlayStation For this reason although I accepted the premise that the industry dealing in counterfeit items is generally characterised by its ability to offer the newest and latest goods in its field ahead of the retail market I was not convinced that the items in the appellant s possession would have been entirely unsaleable 18 The appellant also sold genuine electronic products in his shop and the trial judge found this arrangement to be a convenient cover for his illicit activities since it would make detection of the appellant s offences more difficult To my mind this was a logical and reasonable inference to draw from the facts and I found no reason to disturb the finding Overlapping charges 19 This court held in PP v Mok Ping Wuen Maurice 1999 1 SLR 138 that it is in the court s discretion whether or not to consider outstanding offences upon sentencing If the court does consider them then the effect of this is to enhance the sentence that would otherwise be awarded The trial judge acted on this authority to justify the imposition of a longer sentence on the appellant 20 On appeal the appellant canvassed the argument that the trial judge had failed to consider the overlapping items in the second and third charges as well as in the second third and fourth charges All these charges included 1 255 pieces of the PS2 game controller which had three trade marks applied to each piece The second and third charges dealt with infringement of the PS and PlayStation word marks whilst the fourth charge dealt with infringement of the Dual Shock device mark 21 In my opinion this was a non issue Although the items in the second and third charges overlapped the trial judge ordered the sentences for these two charges to run concurrently There was therefore no reason for the appellant to argue that the overlap between the charges lengthened his sentence Further although the trial judge considered the other three outstanding offences when deciding on what sentence to award it was not clear to me that the items in the fourth charge had a significant influence on the length of the sentences awarded Rather when I considered the sentencing precedents I was of the view that the sentences awarded were not manifestly excessive even if the three outstanding offences had not been taken into consideration As such I found this argument to be wholly without merit Sentencing considerations 22 For the purposes of this appeal I found it instructive to consider the legislative intention behind the punishment provisions for trade mark infringement In

    Original URL path: http://www.singaporelaw.sg/sglaw/laws-of-singapore/commercial-law/chapter-12?id=1566 (2016-01-30)
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  • Excelsior Pte Ltd v Excelsior Sport (S) Pte Ltd[1984-1985] SLR 591; [1985] SGHC 6
    the proposition which I have enunciated in each particular case must always be a question of evidence and the more simple the phraseology the more like it is to a mere description of the article sold the greater becomes the difficulty of proof but if the proof establishes the fact the legal consequence appears to follow 11 The ground of interference by the courts in trade name cases is that the use of the defendant company s name is calculated to deceive or has deceived and so to divert business from the plaintiff to the defendant or occasioned a confusion between the two business Kerly s Law of Trade Marks and Trade Names 10th Ed paras 16 73 Whether or not there is confusion is a question of fact The North Cheshire and Manchester Brewery Co Ltd v The Manchester Brewery Co Ltd 1899 AC 83 The Dunlop Pneumatic Tyre Co Ltd v The Dunlop Motor Co 1907 AC 430 judgment of Lord Loreburn LC at p 436 12 In order to succeed it is not necessary for the plaintiffs to prove fraudulent intention on the part of the defendants Kerly paras 16 74 Nor do the plaintiffs need to show actual deception Kerly paras 16 77 13 I now turn to the facts in this case The evidence before me establishes that the plaintiffs name has acquired a goodwill and reputation in Singapore and Malaysia and in particular that they have acquired goodwill and reputation by the extensive use of their name while carrying on the business of suppliers of a wide variety of swimwear sportswear and other clothing and in particular as the sole agents of Munsingwear sportswear Members of the public have in the course of 35 years identified the name Excelsior as the plaintiff company and as the sole agents of Munsingwear sportswear for 22 years 14 The defendants say that they are associated in Hong Kong with a company with a similar name and their choice of their name was not intended to deceive or confuse The plaintiffs and the defendants carry on the same type of business and it is not incumbent on the plaintiffs in order for them to succeed to establish that the defendants set out to deceive see Mun Loong Co Sdn Bhd v Chai Tuck Kin 1982 1 MLJ 356 15 The trade name will normally have attached to it a goodwill that the courts will protect An action for passing off as I have said will lie wherever the defendant company s name is calculated to deceive and so to divert business from the plaintiff to the defendant or to occasion a confusion between the two businesses Kerly paras 16 50 If a trade name suggests that the defendant s business is an extension branch or another agency of or otherwise connected with the plaintiffs s business an injunction will be granted Ewing v Buttercup Margarine Co Ltd 1917 2 Ch 1 16 The plaintiffs evidence establishes the fact

    Original URL path: http://www.singaporelaw.sg/sglaw/laws-of-singapore/commercial-law/chapter-12?id=1547 (2016-01-30)
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  • City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier[2009] SGCA 53
    the essential function of the mark which included the nature of the sign its meaning the context of its use including possibly scale 29 A factor that militates against the broad Community approach as noted by Phang J in Nation Fittings at 62 is that the requirement of trade mark use would also ensure that the legal protection of the rights of registered trade mark proprietor is well justified so that it could not be said that such proprietors were exploiting what might otherwise be labelled in effect as unnecessary or excessive monopoly rights However as can be seen from the dicta of Aldous LJ in Arsenal Football Club Plc v Reed 2003 RPC 39 and Daniel Alexander QC in Rxworks see 21 and 22 above there are possible uses of a sign which are not trade mark uses which may nevertheless affect the functions of a registered mark After all trade marks have in the final analysis to do with the origin of the goods concerned Therefore to fail to afford protection to registered marks in relation to such uses will lead to under protection and may encourage exploitation in this respect But admittedly such uses which are not trade mark uses are likely to be few and far between and therefore the effect of such protection is unlikely to amount to the grant of excessive monopoly rights to the registered mark proprietor 30 With reference to the broader Community approach adopted by Aldous LJ in Arsenal Football Club Plc v Reed 2003 RPC 39 Phang J wondered at 57 of Nation Fittings whether a court can escape from the concept of trade mark use as such even in this broader context It is no doubt true that the essence of a trade mark will be relevant at the stage of determining whether the use affects or is liable to affect the functions of the registered trade mark 31 At this juncture of the discussion it may not be inappropriate to refer to the concern expressed by Lord Walker in R v Johnstone at 86 87 that the broader Community approach could lead to uncertainty in determining when the third party s use would affect or was likely to affect the functions of the trade mark Lord Walker identified the difficulty which could arise out of the broader Community approach in this way The difficulty arises I think because between cases which are clearly at the opposite extremes of distinctiveness and descriptiveness there is something of a no man s land of debateable cases and the problem of analysis varies with the character of the mark and the character of the goods to which it is affixed Disputes about books and scarves and compact discs cannot easily be resolved by a single test Most people would have an intuitive feeling that to label a compact disc with the words Rolling Stones is less purely descriptive than entitling a biography Wet Wet Wet That is no doubt because a group of musicians are in some sense the authors or at least the performers of what is on the disc but are not the authors of an unauthorised book about themselves But in that case is not their real grievance infringement of their copyright or their performing rights rather than of their trade mark Was not Mr Hölterhoff s real complaint infringement of his design right in two new methods of cutting precious stones if indeed he had invented those methods rather than of his trade mark These are difficult questions which it is not necessary for your Lordships to determine in order to dispose of this appeal Whatever uncertainties there are about the decision of the European Court of Justice in Arsenal its likely effect is that the province of trade mark use has annexed a significant part of the no man s land in which elements of distinctiveness and descriptiveness overlap 32 We would also hasten to add that the broader Community approach adopted by the ECJ has also been the subject of criticism most recently by Arnold J in L Oreal SA v eBay International AG 2009 EWHC 1094 Ch where he stated at 302 It is difficult to see either from this passage or from the ECJ s subsequent case law what the sixth condition it must affect or be liable to affect the functions of the trade mark adds to the fifth condition it must be in relation to goods or services which are identical to those for which the trade mark is registered In both Arsenal at 51 60 and Anheuser Busch at 59 60 the Court held that the sixth condition is satisfied where the use of the sign is such as to create the impression that there is a material link in the course of trade between the goods concerned and the trade mark proprietor i e the sign functions as a trade mark In Céline at 19 23 the Court held that the fifth condition is satisfied where essentially the same criterion is fulfilled Furthermore the Court seems to treat the sixth condition as being satisfied in cases where the fifth condition is satisfied and as being not satisfied in cases where the fifth condition is not satisfied 33 Also recently the writers Ng Loy Wee Loon and Tan Tee Jim SC whom Phang J cited at 60 and 62 of Nation Fittings Chap 16 Intellectual Property Law 2005 6 SAL Ann Rev 334 at para 16 80 were of the similar view It is respectfully suggested that the preference for trade mark use is well founded If not it would give rise to a number of inconsistencies in our Act First under s 7 1 of the Act a sign is registrable if it is distinctive either inherently or through use and capable of indicating a trade origin that is a connection in the course of trade between a trade mark proprietor and his goods and services The registration would permit the proprietor to prevent unauthorised use of an identical or similar sign because of the likelihood of confusion that exists on the part of the public However if the registration also gives the proprietor the right to prevent non trade mark use of the sign it will effectively have created a new and very wide monopoly of unlimited duration over any use of a sign in ways which are themselves not distinctive or do not in any way give rise to the likelihood of confusion Second s 22 1 provides that the registration of a trade mark may be revoked if the mark has not been used for a period of five years The fact that the proprietor may have used it as a non trade mark and can stop others from using it in that way would be irrelevant Third s 24 1 a provides for the defence of acquiescence where the proprietor of an earlier trade mark or right has failed to take action for a period of five years to oppose the use of a later trade mark in relation to the goods or services in relation to which it has been so used The defence would not apply if the use of the later mark is not trade mark use Fourth s 35 provides that certain applications or uses of the mark are not actionable for groundless threats of infringement proceedings at the suit of the person threatened However if the mark is used in a non trade mark manner the threat remains actionable 34 We recognise that there could be an argument in favour of the broader Community approach centring on the proposition that it is not necessary to hamper the infringement provision with the additional requirement of trade mark use since it is possible for an alleged infringer to fit his trade mark use into s 28 1 b of the Act which relates to a descriptive use defence In her article Time to Re think the Ever Expanding Concept of Trade Marks 2008 EIPR 151 Ng Loy Wee Loon addressed this argument as follows The essence of such an argument is that the existence of the defences justifies a more lax approach when determining infringement Such an argument is not unlike the argument that was once made in the context of registration In Nichols Plc Trade Mark Application Jacob J as he then was had to decide whether a common surname should be allowed registration without any evidence the mark having acquired distinctiveness by use One of the arguments put to the judge was that a tribunal should take a more lax approach to registration of surnames because other traders wishing to use this surname could always rely on the own name defence present in the trade mark law This argument was rejected by Jacob J who pointed out the danger of subscribing to such an argument The problem with saying registration will not harm the public if a third party wants to use the mark descriptively he has a defence is this that in the practical world powerful traders will naturally assert their rights even in marginal cases By granting registration of a semi descriptive or indeed a nearly but not quite completely descriptive mark one is placing a powerful weapon in powerful hands Registration will require the public to look to its defences With such words or phrases the line between trade mark and descriptive use is not always sharp Moreover it must not be forgotten that the monopoly extends to confusingly similar marks In any marginal case defendants SMEs particularly are likely to back off when they receive a letter before action It is cheaper and more certain to do that than stand and fight even if in principle they have a defence With some modifications Jacob J Could have been sounding this warning in the infringement context 35 Before concluding our discussion on this issue we would revert to Article 5 5 of the Directive itself which may perhaps provide some help in resolving which is the correct approach to adopt This paragraph was referred to by the ECJ in 53 of Arsenal v Reed see 19 above The paragraph states Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services where use of that sign without due cause takes unfair advantage of or is detrimental to the distinctive character or the repute of the trade mark Article 5 5 of the Directive would appear to suggest that member states are allowed to enact laws to extend the protection accorded to a registered mark where the use of a sign by the third party does not seek to distinguish the goods or services of that third party ie the sign is not used as a trade mark This in turn would also appear to suggest that Articles 5 1 to 5 4 of the Directive are not intended to apply to situations where the sign used by the third party does not seek to distinguish the goods or services of the third party ie trade mark use otherwise why is there a need for Article 5 5 of the Directive Following from this view of Article 5 5 of the Directive the proper construction of s 27 would be that the offending use of a sign must be of the nature seeking to distinguish the goods or services of the third party Furthermore the point made by Lord Nicholls at 17 of R v Johnstone that he did not regard the lack of an express statement in ss 10 1 to 10 3 of the 1994 UK Act which is identically worded to s 27 1 of the Act that the offending use must be for the purposes of a trade mark to suppose that Parliament intended to depart from such a basic principle is not unpersuasive Perhaps the two approaches are in reality no more than exercises in linguistics and that in a real case the same result would likely be obtained from either approach 36 On balance bearing in mind the object of a trade mark law which is probably narrower than that of the law on passing off and Article 5 5 of the Directive we are inclined to take the stricter approach that the infringing use must be of a trade mark use However for the purposes of the present appeal whichever approach we adopt the same result will be obtained We shall now explain If the correct approach were to require trade mark use we think that the trial judge erred at 67 of his GD in dismissing the Appellant s argument that the use of the Solvil flower as a mere decoration or embellishment does not infringe trade mark use on the ground that there is no such defence under s 28 of the Act On that approach the Appellant s argument that the use of the Solvil Flower as a mere decoration should be considered to determine whether the use amounted to trade mark use On the other hand if the broader Community approach were to be the correct one to adopt the Appellant s argument that the use of the Solvil Flower as a mere decoration should also be considered to determine whether it is liable to affect the function of the Flower Quatrefoil mark as a mark of origin 37 In considering this issue we are conscious that a sign may have several functions one of which is as a badge of origin In Arsenal v Reed at 55 the ECJ held that the use of the Arsenal logo was not intended for purely descriptive purposes The use was such as to create the impression that there was a material link in the course of trade between the goods concerned and the trade mark proprietor It bears mentioning that the determination of whether a sign is liable to affect the function of a registered trade mark is a finding of fact for the judge which will invariably be fact sensitive and determined on a case by case basis This question could in some instances be quite complex 38 In the instant case we note that the Solvil Flower is displayed in a randomly repeated pattern on the inner and outer Solvil watch dial the shape and size of the Solvil Flowers on the Solvil watch dial are varied some Solvil Flowers have small diamantes included while others do not some petals of the bigger Solvil Flowers in the inner Solvil watch dial are cut off and incomplete Solvil Flowers are present on the Solvil watch strap which do not have a circle in the middle of the flower With no uniformity on how the Solvil Flowers are represented on the Appellant s watches we find that the predominant use of the Solvil Flower is for decorative purposes Thus the use of the Solvil Flower on the Solvil watches is not trade mark use This finding should conclude the question of whether the use of the Solvil Flower on the Solvil watches would infringe the trade mark rights of the Respondent in the Flower Quatrefoil mark This finding however does not conclude the matter on the broader Community approach Further inquiry will be necessary Given its similarity to the Flower Quatrefoil mark and the fact that the Solvil Flower pattern is prominently displayed on the Solvil watch it could still affect the function of the Respondent s Flower Quatrefoil mark We need to consider the position under s 27 1 as well as under s 27 2 b of the Act Is the Solvil Flower identical with the Flower Quatrefoil mark for purposes of s 27 1 of the Act 39 For s 27 1 of the Act to apply it must be shown that the Solvil Flower is identical with the Flower Quatrefoil mark The test of whether a sign is identical with a registered mark under s 27 1 of the Act entails a strict interpretation Minor differences would take the case outside of the definition of identical see Nation Fittings at 85 The protection accorded under this provision cannot be extended beyond the situations for which it was envisaged in particular to those situations more specifically covered by another provision eg s 27 2 b of the Act on similar goods or services or where the sign is similar see SA Société LTJ Diffusion v Sadas Vertbaudet SA 2003 FSR 34 at 50 Such a strict approach is taken with regard to s 27 1 of the Act because once a case is shown to fall within that provision protection ipso facto follows irrespective of whether there is proof of likelihood of confusion on the part of the public Reed Executive plc v Reed Business Information Ltd 2004 RPC 40 provides a useful illustration There the court confronted with the question of whether Reed Business Information was identical to Reed held that it was not but instead held that they were similar 40 Based on our observation of the Solvil Flower and the Flower Quatrefoil mark we are of the view that they are not identical The Flower Quatrefoil mark has a distinctive circle in the middle of four equally spaced petals whereas the Solvil Flowers on the watchstrap as well as on the Solvil watch s outer dial are conspicuously lacking in this distinctive feature Although the Solvil Flower on the inner dial of the Solvil watch contains a single diamante in the middle of the petals which are also decorated with diamantes because the entire Sovil Flower is decorated with diamantes the circle in the centre of the Solvil Flowers on the inner watch dial is not obvious Given the absence of a distinctive circle in the centre of the Solvil Flower the Solvil Flower and the Flower Quatrefoil mark are not identical for purposes of s 27 1 of the Act 41 Furthermore as the trial judge rightly noted at 71 of the GD t he proportions of the Solvil Flower petals and their slightly rounded off tips may be marginally different from the Flower Quatrefoil mark albeit that it is a minute difference which the judge described as hardly noticeable when one is looking at the two designs holistically Nevertheless this difference together with the difference referred to in 38 above would all the more confirm that the Solvil Flower is not identical with the Flower Quatrefoil mark Section 27 2 of the Act Similarity 42 Given our finding above at 39 above that the Flower Quatrefoil mark and the Solvil Flower are not identical the next issue is whether they are similar within the meaning of s 27 2 b of the Act 43 In order to establish an infringement under s 27 2 b of the Act three factors must be shown namely a the alleged offending sign must be similar to the registered mark b both the sign and the mark must be used in relation to similar goods or services and c on account of the presence of the first two conditions there exists a likelihood of confusion on the part of the public see this court s decision in The Polo Lauren Co LP v Shop In Department Store Pte Ltd 2006 2 SLR 690 Polo at 8 44 This court at 8 of Polo explained the relationship between the first and third factor by stating that in a broad sort of sense the greater the similarity between a mark and a sign the greater will be the likelihood of confusion However the court expressly added that it does not mean that if the mark and the sign are similar and they are used on similar goods that there will ipso facto be confusion in the minds of the public The court also explained that if either of the first two conditions is not satisfied there will not be any need to go into the third question of determining whether there exists a likelihood of confusion 45 In the present case the trial judge made the following findings a that the two competing devices were at least similar for the purposes of s 27 2 of the Act at 73 of the GD and b the requirement of a likelihood of confusion had been satisfied on the grounds at 74 of the GD that first a customer of the Appellant may think that the Appellant had been licensed by the Respondent to use the trade mark or that there was some collaborative marketing with Solvil being a more affordable class of Louis Vuitton watches and second the Appellant s customers may buy the Solvil watches because they resemble Louis Vuitton watches 46 Given that it is not disputed that the Flower Quatrefoil mark and the Solvil Flower are used in relation to similar goods namely watches the present facts raise two issues under s 27 2 b of the Act a whether the Flower Quatrefoil mark and the Solvil Flower are at least similar for the purposes of s 27 2 b of the Act and b if the Solvil Flower and the Flower Quatrefoil mark are similar whether there is a likelihood of confusion on the part of the public 47 In determining whether the Flower Quatrefoil mark and the Solvil Flower are at least similar for the purposes of s 27 2 b of the Act it has been firmly established that this is a question of fact and degree for the court to determine by looking at the two signs as a whole see Polo at 8 48 The Flower Quatrefoil mark is essentially made up of two shapes namely a circle and a petal shape The circle is surrounded by four identically shaped petals which are arranged evenly around the circle so that they are equally spaced at 90 degrees from each other 49 The Solvil Flower is similar to the outline shape of the Flower Quatrefoil mark in that there are four petals arranged at 90 degrees from each other and they radiate from a common centre The only differences are firstly there is a lack of a distinctive circle in the centre of the Solvil Flower and secondly the shape of the petals on the Solvil Flower are minutely different from the shape of the Flower Quatrefoil mark s petals as mentioned at 38 39 above 50 We are of the view that looking at the two signs as a whole there are sufficient similarities in the Solvil Flower and the Flower Quatrefoil mark to conclude that they are similar for purposes of s 27 2 b of the Act Whether there exists a likelihood of confusion on the part of the public under s 27 2 of the Act 51 Turning next to the element of the likelihood of confusion this question is to be determined as at the time when the alleged infringing use of the sign commenced see the ECJ in Levi Strauss Co v Casucci SpA 2007 FSR 8 at 20 52 In considering the question of likelihood of confusion it should be addressed globally taking into account all the circumstances of the case including the closeness of the goods the impression given by the marks the possibility of imperfect recollection and the risk that the public might believe that the goods come from the same source or economically linked sources see Polo at 28 In Polo at 34 this court considered the locations at which the goods were sold the disparity in prices of the goods the packaging of the goods and the different target consumers of both parties to conclude that there was no confusion under s 27 2 b of the Act 53 Furthermore steps taken by the defendant to differentiate his goods from those of the registered proprietor are also pertinent see Polo also at 28 The judge at first instance in the Polo case recognised as much when he Lai Kew Chai J s judgment in The Polo Lauren Co LP v Shop In Department Store Pte Ltd 2005 4 SLR 816 at 21 opined that where the user of a potentially infringing sign had taken pains to distinguish his products from the registered proprietor s goods and services the effect might be that the likelihood of confusion if any was merely hypothetical or speculative 54 In relation to the interpretation of a likelihood of confusion on the part of the public Phang J held at 97 of Nation Fittings that t he case law appears to suggest that the average consumer need not depending on the specific facts necessarily mean the general public emphasis in original In that case which concerned dealing with trade marks for pipe fittings Phang J held at 103 that the average consumer of pipe fittings such as those produced by the plaintiff and Nation Fittings would not potentially be just any person but rather plumbers and contractors bearing in mind the fact that there might occasionally be customers who were neither plumbers nor contractors emphasis in original and this would impact on the criterion of the likelihood of confusion under s 27 2 b of the Act There Phang J also took into account relevant factors including the fact that the price of the pipe fittings of Nation Fittings was significantly lower than those produced by the plaintiff some 25 and this fact was held to be virtually decisive in the context of the case because it would serve to dispel any likelihood of confusion even if the average consumer was construed as extending beyond the category of plumbers and contractors to include potential customers Furthermore the packaging was relevant as the packets were themselves quite distinctive 55 In Polo at 2 the court noted that unlike the appellant s goods which were sold at upmarket boutiques located in prime shopping areas and were accordingly pricey the respondent operated five suburban stores selling clothing bags handbags shoes watches and household goods at prices affordable to the masses This court in Polo at 34 applied the test of the average consumer without specifying whether this was the general public or a more specific group In the context it seems to us clear that the court had in mind the general public 56 In the present case since a watch is a product which is commonly available and purchased by the general public the average consumer would be the general public It follows that the nature of the members of the public is a relevant consideration The average consumer is not an unthinking person in a hurry but someone who would exercise some care and good sense in making his purchases see Polo at 34 This is all the more so when it involves high end luxury products to which the Respondent s products belong In this regard we are reminded of the observations by PS Tan for the Registrar of Trade Marks in Samsonite Corp v Montres Rolex SA 1995 AIPR 244 cited at 99 of Nation Fittings that luxury goods are bought after careful inspection and deliberation 57 On the evidence adduced before the court in the present case we would respectfully differ from the trial judge s finding at 74 of the GD that a customer might think that the Appellant was licensed by the Respondent or that there was collaborative marketing This is because no evidence has been adduced to indicate such an association on account of either the advertisements methods of sale and or packaging of the Solvil watch or for any other reason The risk of confusion is merely hypothetical and speculative because there is simply no evidence of any such confusion arising on the part of the consumers Moreover there have been no business dealings between Stelux and LVMH Group in Singapore in the past see 4 above which could without more give rise to such an inference of a licence We would underscore that there is no evidence that the Respondent has in any part of the world manufactured and or offered for sale any sub brand product which is inferior to its normal range of high quality luxury products 58 Furthermore even though the Solvil Flower and the Flower Quatrefoil mark are similar the mere association of the public between the two signs based on their similar use is not in itself a sufficient basis for concluding that there is a likelihood of confusion on the part of members of the public in the absence of any possibility of a misapprehension as to the origin of the goods and services see the High Court decision in Richemont International SA v Goldlion Enterprise Singapore Pte Ltd 2006 1 SLR 401 at 20 in relation to a similar provision under s 8 2 of the Act 59 As noted by Phang J in Nation Fittings at 102 where the average consumer is ostensibly the general public the courts will still take the trouble to ascertain who precisely the target consumers are On the present facts the target consumers of the Solvil watch are likely to be young and trendy consumers looking for a bargain whereas the target consumers of the Respondent s watch are likely to be more sophisticated and of high income level We are of the view that neither the target consumers nor the general public would be confused bearing in mind that a the SOLVIL mark appears in the centre of the Solvil watch face and the overall appearances of the parties watches are distinct b the Solvil watches are sold at its stores in Singapore located throughout the island whereas the Respondent s watches are only sold in its boutiques at three upmarket locations in Singapore at that time c the Respondent forbids the sale of its goods by other retailers d the Respondent s watches are priced between S 4 000 and S 60 000 whereas the Solvil watches are generally priced below S 200 and e the Appellant s Solvil watches are marketed in a way that closely associates them with its SOLVIL mark 60 Accordingly we are of the view that the use of the Solvil Flower on the Solvil watch would not create a likelihood of confusion on the part of the average consumer as to the origin of the Solvil watches The trial judge himself held that the Appellant s customers may buy the Solvil watch because they resemble the Respondent s watch at 74 of the GD thereby implicitly recognising that the customers of the Appellant appreciate that they are not buying the Respondent s watches It cannot be over emphasised that price wise the price of a Solvil watch is only a minute fraction of that of a watch of the Respondent see 57 above and no potential purchaser of the Respondent would ever be confused into thinking that he was buying a Respondent s watch In the result we find that s 27 2 b of the Act has not been infringed Action for passing off 61 We now turn to the Respondent s claim based on passing off The trial judge held that the claim for passing off had been made out at 81 of the GD after finding that the Respondent possessed substantial goodwill at 77 of the GD that misrepresentation had been established at 79 of the GD and that there was a likelihood of damage by taking judicial notice of the fact that people do get put off certain luxury brands simply because there were so many fakes and cheap look alikes in the market The Appellant has appealed against the whole of the trial judge s decision on this cause Does the Respondent possess substantial goodwill in Singapore 62 In Novelty Pte Ltd v Amanresorts Ltd 2009 3 SLR 216 Novelty v Amanresorts at 39 this court held that the two essential features of goodwill are that it is the association of a good service or business on which the plaintiff s mark name labelling etc has been applied with a particular source and this association is an attractive force which brings in custom Proving goodwill or distinctiveness is a question of fact Relevant factors include advertising trading volume of sales and whether it has been registered But the fact that the mark or indicia is not novel does not mean that it cannot be distinctive of the plaintiff s goods or services see Halsbury Laws of Singapore vol 13 3 LexisNexis Singapore at para 160 8172007 63 The relevant date on which the reputation of the plaintiff in a passing off action should be considered is the date on which the conduct complained of commences see this court s decision in CDL Hotels International Ltd v Pontiac Marina Pte Ltd 1998 2 SLR 550 at 34 On the present facts the relevant date would be November 2006 which was the period of commencement of sale of the Solvil watches in Singapore 64 Given the law as set out above the trial judge erred in taking into account irrelevant evidence in determining the existence of goodwill of the Flower Quatrefoil mark as he relied on events after November 2006 such as the turnover of the Respondent s Singapore subsidiary LVMH Fashion Singapore Pte Ltd for the financial year ending 31 March 2008 crossed S 370m and for the first half of 2008 sales of its watches had hit S 1 45m at 77 of the GD 65 The only relevant information demonstrating goodwill which was cited by the trial judge was that the Respondent started selling its watches in 2004 and yet managed to achieve annual sales of S 1 7m to S 1 9m between 2005 and 2007 for its watches This information is derived from the affidavit and evidence in chief of Plane note 1 which reads I have been informed by LVMH Fashion Singapore Pte Ltd that since the launch of the watches in 2004 sales are as follows Year Approximate Sales 2005 S 1 9 million 2006 S 1 7 million 2007 S 1 9 million 2008 Till June S 1 45 million 66 Taking into account the relevant date of November 2006 the only applicable figures in this regard would be the 2005 and 2006 sales figures S 1 9m and S 1 7m respectively However as noted by the Appellant note 2 these sales figures include all watches sold by LVMH Fashion Singapore Pte Ltd which encompass other watch brands such as Tag Heuer and Ebel In any case even if there was goodwill in the Respondent s own watches for which there is no specific evidence there is no evidence to show that the goodwill in the watches was on account of the Flower Quatrefoil mark as opposed to other marks on the Respondent s watches such as the LOUIS VUITTON mark 67 The trial judge at 78 of the GD also noted that there is no evidence of advertisement or sale of specific models of LV watches On the other hand he felt that this had been made up by the fact that the Respondent has product catalogues readily available in its LV stores However as the Appellant rightly pointed out there is no evidence that the catalogues were available prior to November 2006 Therefore this factor should not be taken into account to establish goodwill in the Flower Quatrefoil mark 68 On the present dispute between the parties the trial judge also fell into error when he took into consideration the goodwill of the Respondent generally because the Respondent must show that the goodwill was specifically in relation to the Flower Quatrefoil mark as opposed to the LOUIS VUITTON mark In Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd 1991 SLR 133 the appellant took out an interim injunction against

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  • Novelty Pte Ltd v Amanresorts Ltd and Another[2009] 3 SLR 216; [2009] SGCA 13
    In the New Zealand case of Tot Toys Ltd v Mitchell 1993 1 NZLR 325 Fisher J said at 362 It is axiomatic that damage must be proved or presumed as one of the ingredients of passing off It has never been sufficient for plaintiffs to fill this gap by arguing that their loss is loss of the right to charge the defendant a fee for continuing conduct the lawfulness of which is the subject currently under inquiry To accept that proposition would be to deny that damage is an essential and independent ingredient of the tort And if the defendant s conduct is otherwise lawful it cannot be rendered unlawful upon the ground that it might induce others to act in the same way without the plaintiff s permission 111 In our view there is much force in Fisher J s analysis Even if the plaintiff does have an existing business of licensing its get up for use by others this might only mean that its licensees mistakenly think that a licence is necessary before they can use the plaintiff s get up In fact it is only if passing off is first proved that the plaintiff then has the right to demand that those who wish to use its distinctive get up must first obtain a licence from it We agree with Wadlow s argument in The Law of Passing Off 73 supra that at para 4 38 It might be said that the misrepresentation in passing off could always have been sanctioned by the claimant for payment and therefore that the claimant has automatically been damaged by the unauthorised making of the misrepresentation This does not represent English law If right it would mean that there would never be any independent need to prove likelihood of actual damage in passing off 112 It has also been noted that developments in this area of law ie recognising loss of licensing opportunity or licensing income as a recoverable head of damage appear to be extensions of the classical trinity of passing off delineated at 37 above such that what appears to be protected is really the plaintiff s fame rather than the goodwill attached to the plaintiff s business goods or services see for instance Hazel Carty Advertising Publicity Rights and English Law 2004 IPQ 209 113 In our view the recognition of loss of licensing opportunity or licensing income as a distinct head of damage should be approached conservatively In the present case even if we accept that this head of damage is recoverable in passing off actions under our law it is not clear that the evidence adduced by the Respondents of their licensing agreements with real estate developers overseas really proves damage arising from misrepresentation and confusion in Singapore the Respondents may be entitled to license the Aman names overseas because they have been registered as trade marks overseas or for other reasons but this does not mean that the Aman names have a natural capacity for generating licensing opportunity or licensing revenue in Singapore for the Respondents 114 That said the loss of licensing opportunity or licensing revenue is not entirely irrelevant to the equation If passing off is proved based on some other head of damage which is well established as being recoverable the plaintiff in addition to claiming for any loss of sales occasioned by such damage can also claim for loss of licensing revenue Thus the loss of licensing opportunity or licensing revenue goes towards quantifying rather than proving damage 115 The Respondents claim for misappropriation of goodwill and reputation see the Judgment at 63 is closely linked to the claim for loss of licensing opportunity or licensing income The Respondents argued that the Appellant s use of the name Amanusa amounted to an unlicensed appropriation of the Respondents goodwill and reputation Our views stated earlier at 110 114 above also apply to this argument 4 Restriction on the Respondents expansion into the residential real estate business 116 The Respondents claimed that if the Appellant were permitted to use the name Amanusa for the Project they would be prejudiced in any future commercial plans to expand into residential development in Singapore It was submitted that damage should be inferred in this case because the Respondents not only had every intention of expanding into the field of residential accommodation but were in fact already involved in that field 117 We accept the principle that a plaintiff who has established goodwill in one form of commercial activity the established activity may be entitled to protection from passing off vis à vis another form of commercial activity which is a natural expansion of the first the extended activity Thus in Alfred Dunhill Limited v Sunoptic SA 1979 FSR 337 it was understandable why the English Court of Appeal prevented the defendant from marketing sunglasses under the name Dunhill given that the plaintiff a well known producer of tobacco goods under the same name had expanded its business to include the sale of luxury goods for men likewise under the name Dunhill The plaintiff had also showed that although it had not sold sunglasses in England it was planning to produce sunglasses itself 118 It is however important to stress the close connection which must exist between the established activity and the extended activity for that connection forms the foundation for this head of damage Wadlow in The Law of Passing Off 73 supra cites at para 4 42 the following extract from the American case of S C Johnson Son Inc v Johnson 116 F 2d 427 2nd Cir 1940 at 429 per Hand J as being representative of the English position in this regard It is true that a merchant who has sold one kind of goods sometimes finds himself driven to add other lines in order to hold or develop his existing market in such cases he has a legitimate present interest in preserving his identity in the ancillary market which he cannot do if others make his name equivocal there But if the new goods have no such relation to the old and if the first user s interest in maintaining the significance of his name when applied to the new goods is nothing more than the desire to post the new market as a possible preserve which he may later choose to exploit it is hard to see any basis for its protection ie for the protection of the merchant s name in the new market The public may be deceived but the merchant has no claim to be its vicarious champion his remedy must be limited to his injury and by hypothesis he has none In our view this passage is representative of the position in Singapore as well 119 Some of the English cases in which claims for passing off have succeeded despite the apparent gulf between the established activity and the extended activity of the plaintiff can be understood on their particular facts One such case is the English High Court s decision in The Eastman Photographic Materials Company Ld v The John Griffiths Cycle Corporation Ld and The Kodak Cycle Company Ld 1898 15 RPC 105 the KODAK case In that case the plaintiff carried on a business involving cameras and other related goods under the trade mark Kodak It also made cameras called Cycle Kodaks or Bicycle Kodaks which were suitable for use on bicycles The plaintiff sought an injunction to restrain the defendant from carrying on a bicycle business under the name The Kodak Cycle Company Ld This application was successful Romer J noted at 110 S o great is the connection between the two classes of business ie the plaintiff s camera business and the defendant s bicycle business that in all probability I may say the p laintiff may wish hereafter to manufacture and sell cycles specially adapted to carry its Kodaks It is important to note that not only were the plaintiff s Kodak cameras very well known indeed throughout the length and breadth of the UK ibid but the defendant s fraudulent intention so Romer J found was really to try and get a monopoly of the word Kodak as connected with cycles in the hope and intention of in some shape or other identifying the defendant company with the p laintiff ibid It also appears from the judgment that at the time the case was decided viz in the late 19th century the camera industry and the bicycle industry were not quite as distinct as they are today Apparently many shops sold both cameras and bicycles 120 In the LEGO case 109 supra it was held that the toy brick industry was close enough to the garden sprinkler industry to warrant the protection of the Lego mark against passing off in the latter industry It should be noted that Falconer J was assisted in this conclusion by the fact that the plaintiffs in that case had established a high reputation in the mark which had become very widely known in the UK in relation to toy construction sets made of moulded coloured plastic materials as denoting the goods of the plaintiffs at 157 158 and by the fact that the word Lego was a household word at 160 Also there were similarities in the plaintiffs products and the defendant s garden sprinklers as both consisted of brightly coloured plastic goods 121 In our view in the instant case the Respondents field of business which in the context of this appeal is the high end hotel and resort business see 65 above and the Appellant s field of business viz the residential accommodation business are closely connected Both fields concern accommodation The fact that the Respondents have already expanded into the residential accommodation business overseas see 8 9 above buttresses this conclusion The Respondents and the Appellant s respective fields of business are certainly much closer than the camera and the bicycle industries see the KODAK case or the toy brick and the garden sprinkler industries see the LEGO case The use by the Appellant of the name Amanusa or of other names similar to the Aman names in the field of residential accommodation in Singapore would prevent the Respondents from expanding into the residential accommodation business in this country For this reason we hold that this head of damage viz restriction on the Respondents expansion into the residential accommodation business has been proved 5 Loss of exclusivity and erosion of the distinctiveness of the Aman names as well as dilution of the goodwill attached to these names 122 The Respondents argued that that the use of the name Amanusa by the Appellant for the Project would lead to the gradual whittling away and erosion of the uniqueness and exclusivity associated with the Aman names and would lessen the capacity of these names to identify and distinguish the Respondents goods and services from the goods and services of others The Respondents contended that T he distinctiveness of the AMAN brand would be eroded by the haphazard and random use of the brand for example where geographical exclusivity is compromised or where there is indiscriminate and widespread use and the use is not protected by the involvement of the Respondents The Judge agreed with the Respondents holding that the most potent form of likely damage is the intangible loss that may be occasioned by the insidious process of dilution such that the famous name in question loses its uniqueness see the Judgment at 65 123 The Respondents cited Taylor Bros Ltd v Taylors Group Ltd 1988 2 NZLR 1 the Taylor Bros case in support of the proposition that these heads of damage viz loss of exclusivity and erosion of the distinctiveness of the plaintiff s get up as well as dilution of the goodwill attached to that get up ought to be recognised The plaintiff in that case operated inter alia a dry cleaning business under the style Taylors Taylors Drycleaners and Taylors Drycleaning It sought an injunction to restrain the defendant which likewise ran inter alia a dry cleaning business from trading in the Wellington region under the name Taylors The question before the court was whether damage had been caused in the form of the loss of the distinctiveness of the name Taylors or a risk of inundation or dilution of the plaintiff s goodwill through the incorrect association of the plaintiff with the defendant The Wellington Court of Appeal upheld the High Court of Wellington s decision to grant the plaintiff the injunction sought stating at 37 38 I n some cases it is legitimate to infer damage from a tendency to impair distinctiveness Here there is ample evidence that Taylors is at present distinctive of the plaintiff in Wellington in the particular field of businesses associated with textile cleaning If the defendant is permitted to use the name in Wellington albeit in a special branch of cleaning business in which the plaintiff do sic not engage there will be not only the natural tendency to treat the parties as associated but also a loss by the plaintiff of control and licensing capacity and therefore revenue of the same kind as that illustrated by the LEGO case 124 We find it difficult to determine if the Taylor Bros case really established a separate head of damage It is clear that the Wellington Court of Appeal thought that damage had been caused to the plaintiff in two ways namely due to a a natural tendency to treat the parties as associated id at 38 and b a loss by the plaintiff of control and licensing capacity and therefore revenue ibid With regard to the first type of damage it is hard to see how this constitutes damage as opposed to mere proof that there has been a misrepresentation by the defendant which has led to confusion between the business goods or services of the plaintiff and those of the defendant As for the second form of damage we have already dealt with it earlier at 107 114 above 125 The Respondents also cited the Dawnay Day case 104 supra in which it was held by Sir Scott VC at 706 that the use of Dawnay Day as a trading style by a company that was not a member of the Dawnay Day group would dilute and potentially might destroy the distinctiveness of the name No further elaboration on what this meant was given by Sir Scott VC although he referred to Taittinger SA v Allbev Ltd 1993 FSR 641 the Elderflower Champagne case In that case the issue was whether it was permissible for the defendants to sell a non alcoholic fruit flavoured soft drink called Elderflower Champagne in a bottle and a get up that looked much like the bottle and the get up used for champagne which term was used only in respect of sparkling wines from the Champagne region in France Peter Gibson LJ said at 670 that the erosion of the distinctiveness of the name champagne in the UK was a form of damage to the goodwill of the business of the champagne houses 126 Sir Thomas Bingham MR came to the same conclusion He said at 678 of the Elderflower Champagne case The first plaintiff s reputation and goodwill in the description Champagne derive not only from the quality of its wine and its glamorous associations but also from the very singularity and exclusiveness of the description the absence of qualifying epithets and imitative descriptions Any product which is not Champagne but is allowed to describe itself as such must inevitably in my view erode the singularity and exclusiveness of the description Champagne and so cause the first plaintiff damage of an insidious but serious kind I cannot see despite the defendants argument to the contrary any rational basis upon which if the defendants product were allowed to be marketed under its present description any other fruit cordial diluted with carbonated water could not be similarly marketed so as to incorporate the description champagne The damage to the first plaintiff would then be incalculable but severe 127 The concept of loss of exclusivity or erosion of the distinctiveness of the plaintiff s get up as a separate head of damage in passing off actions is not an immediately obvious one The danger of recognising such a head of damages lies in truism In almost all cases where the defendant is alleged to have applied the plaintiff s distinctive get up not on the same or similar goods or services as those of the plaintiff but rather on different goods or services there will likely be a loss of exclusivity by definition On this matter Wadlow in The Law of Passing Off 73 supra warns that at para 4 44 Considered as a head of damage in its own right loss of exclusivity in a name mark or get up needs to be treated with caution It lends itself to circular arguments thereby undermining the importance of damage as an essential element of passing off and it leads easily to the fallacy that the property which is being protected is the name or mark or get up itself rather than the goodwill in the claimant s business In the normal course of events there is little to be gained by enumerating loss of exclusivity as a separate head of damage since it overlaps with or is an intermediate cause of several other heads of damage which are better established 128 This is certainly the case on the facts of the present appeal We have found that the application of the name Amanusa to the Project is likely to tarnish the goodwill attached to the Aman names because of the difference between the quality of the accommodation provided by the Appellant and that of the accommodation provided by the Respondents One can also recast this by saying that the Aman names which have hitherto been used exclusively in respect of high end hotels resorts and residential accommodation would be in danger of losing their distinctiveness if the Appellant were allowed to continue using the name Amanusa for the Project as consumers might mistakenly think that the goodwill in the Aman names extends to middle class residential accommodation in suburban Singapore Thus the inclusion of a claim for loss of exclusivity or erosion of distinctiveness does not in our view add anything to the Respondents claim 129 The same is to be said of the Respondents claim for dilution of the goodwill attached to the Aman names The Respondents cited the Millenia case 36 supra in support of the proposition that this head of damage is recognised in Singapore In the Millenia case this court stated at 84 It would be commercially damaging for the business of a super deluxe five star hotel as The Ritz Carlton Millenia Singapore is to be associated with that of a four star hotel which the defendant s Millennium hotels admittedly are The reason for this is simple and is best illustrated in the sale or provision of goods or services If there is a misrepresentation induced by the defendant such that the public is led to believe erroneously that the plaintiff s and the defendant s goods or services are the same or that their businesses are connected the plaintiff s goodwill in his business would be likely to be diluted if the defendant s goods or services are of a quality or class lower than that of the plaintiff s Deceived into thinking that the plaintiff s and the defendant s goods or services are the same or that their businesses are connected the public would mistakenly perceive the plaintiff as having a range of lower quality goods or services which in reality belong not to him but to the defendant The public would not perceive the plaintiff as supplying solely top of the range goods or services but goods or services of varying qualities The prestigious image of the plaintiff would in these circumstances be likely to be undermined emphasis added 130 We do not see this passage as holding anything more than that the association of The Ritz Carlton Millenia Singapore the plaintiff s five star establishment with the defendant s four star Millennium hotels would cause tarnishment of the goodwill attached to the name Millenia This as we have seen at 97 98 above is a conventional head of damage 131 We shall have occasion to consider the technical and statutory definitions of dilution in due course in the context of the Respondents claim under s 55 of the current TMA It suffices for the moment to say that to avoid unnecessary confusion it is better to avoid using the word dilution in a passing off action when what is meant is simply tarnishment or blurring of the goodwill in the plaintiff s get up Our conclusion on the passing off claim 132 We agree with the Judge s finding that the Respondents claim for passing off has been made out Goodwill exists in the Aman names but not in Aman prefixed names Although the goodwill in the Aman names in Singapore may not have reached across the entire spectrum of the public here it certainly does exist in respect of high income individuals who form the Respondents core clientele as well as once in a lifetime visitors to the Respondents resorts and aspiring visitors who have somewhat less means but who are nonetheless attracted by the exclusivity and luxury embodied in the Aman names in the field of hotel and resort accommodation This section of the public would have been exposed to the Appellant s use of the name Amanusa for the Project ie to the Appellant s misrepresentation that the Project had the same source as or was in some way connected with the Respondents resorts They would have been likely to have been confused by this misrepresentation into assuming that the Project was either developed by the Respondents or somehow connected with the latter s resorts The Respondents have not succeeded in convincing us on all their pleaded heads of damage but this is not significant as the Respondents have successfully demonstrated a likelihood of damage in the form of a tarnishment of the goodwill attached to the Aman names due to the difference in quality between the Aman resorts and the Project see 101 above and b restriction on the Respondents expansion into the residential accommodation business in Singapore see 121 above The claim under section 55 of the current TMA Infringement of a well known trade mark 133 Apart from pursuing a claim for passing off the Respondents also claimed that the Aman names were well known trade mark s within the meaning of s 2 1 of the current TMA and were entitled to the protection set out in s 55 of that Act Specifically the Respondents alleged that the use of the name Amanusa by the Appellant in the course of trade without the Respondents consent on goods or services related to residential accommodation would indicate a connection between the Appellant s residential accommodation related goods or services specifically the Project and the Respondents and was likely to damage the Respondents interests see s 55 3 a of the current TMA What is a well known trade mark 134 The first question to ask in considering a claim under s 55 of the current TMA is what the term well known trade mark in this section means According to the definition set out in s 2 1 of the current TMA well known trade mark means a any registered trade mark that is well known in Singapore or b any unregistered trade mark that is well known in Singapore and that belongs to a person who i is a national of a Convention country ie a country which is a party to the Paris Convention for the Protection of Industrial Property of 20 March 1883 or a member of the World Trade Organization or ii is domiciled in or has a real and effective industrial or commercial establishment in a Convention country whether or not that person carries on business or has any goodwill in Singapore 135 This definition was adopted in order for Singapore to comply with its obligations under the Paris Convention for the Protection of Industrial Property of 20 March 1883 the Paris Convention and the Agreement on Trade Related Aspects of Intellectual Property Rights the TRIPS Agreement which is set out in Annex 1C of the Agreement Establishing the World Trade Organization signed in Marrakesh on 15 April 1994 we shall have occasion to refer to both the Paris Convention and the TRIPS Agreement in greater detail at a later stage The important development which underlies the current TMA is the recognition that some unregistered trade marks should be entitled to protection and that such protection does not depend on whether the proprietor of the trade mark in question carries on business or has any goodwill in Singapore For ease of discussion we shall in the context of the Respondents claim under the current TMA refer to the proprietor of a trade mark as the plaintiff and the party whose trade mark allegedly infringes or is in conflict with the plaintiff s trade mark as the defendant we shall also use the terms the plaintiff s goods or services and the defendant s goods or services to denote the goods or services to which the plaintiff s trade mark and the defendant s trade mark respectively are applied This constitutes a workaround the hard line stance taken towards the foreign business problem discussed earlier at 67 68 above in the context of the tort of passing off This development also to some extent represents the erosion of the principle of the territoriality of trade marks viz that trade marks are entitled to protection only within the national borders of the countries in which they are registered but at the same time it must be stressed that s 55 of the current TMA does not dispense with the territoriality element entirely A trade mark must still be well known in Singapore emphasis added see s 2 1 of the current TMA before it is entitled to enjoy the protection conferred by s 55 136 In assessing whether a trade mark is well known in Singapore within the meaning of s 2 1 of the current TMA regard must be had to s 2 7 which states Subject to s 2 8 in deciding for the purposes of this Act ie the current TMA whether a trade mark is well known in Singapore it shall be relevant to take into account any matter from which it may be inferred that the trade mark is well known including such of the following matters as may be relevant a the degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore b the duration extent and geographical area of i any use of the trade mark or ii any promotion of the trade mark including any advertising of any publicity given to or any presentation at any fair or exhibition of the goods or services to which the trade mark is applied c any registration or application for the registration of the trade mark in any country or territory in which the trade mark is used or recognised and the duration of such registration or application d any successful enforcement of any right in the trade mark in any country or territory and the extent to which the trade mark was recognised as well known by the competent authorities of that country or territory e any value associated with the trade mark 137 This definition is based on Art 2 1 of another document which we shall examine in greater detail in due course viz the Joint Recommendation Concerning Provisions on the Protection of Well Known Marks the Joint Recommendation which was adopted at the Thirty Fourth Series of Meetings of the Assemblies of the Member States of the World Intellectual Property Organization WIPO held from 20 to 29 September 1999 the 34th WIPO Meeting The factors laid out in ss 2 7 a 2 7 e of the current TMA which collectively correspond to Art 2 1 b of the Joint Recommendation are not an exhaustive list in that the court is obliged to take into account any matter from which it may be inferred that the trade mark is well known emphasis added per s 2 7 of the current TMA It appears that the court is ordinarily free to disregard any or all of the factors listed in s 2 7 as the case requires subject to one particular factor which we shall discuss at 139 140 below and to take additional factors into consideration The list of factors in s 2 7 can thus be more accurately described as a set of guidelines This conclusion is supported by Art 2 1 c of the Joint Recommendation which refers to the factors listed in Art 2 1 b ie the equivalent of our ss 2 7 a 2 7 e in the following manner The above factors which are guidelines to assist the competent authority to determine whether the mark is a well known mark are not pre conditions for reaching that determination Rather the determination in each case will depend upon the particular circumstances of that case In some cases all of the factors may be relevant In other cases some of the factors may be relevant In still other cases none of the factors may be relevant and the decision may be based on additional factors that are not listed in subparagraph b above ie Art 2 1 b Such additional factors may be relevant alone or in combination with one or more of the factors listed in subparagraph b above emphasis added 138 This somewhat ambivalent passage gives an inkling of how difficult it is to determine whether a trade mark is well known in Singapore There is no single universally applicable test but the guidelines in s 2 7 of the current TMA strive toward some semblance of objectivity 139 There has been some significant and interesting debate among legal commentators on the actual scope of ss 2 7 c 2 7 e of the current TMA However as the instant case does not turn on the consideration of these factors we shall limit our discussion to s 2 7 a primarily and s 2 7 b of the current TMA Despite what has been said earlier it can be persuasively said that s 2 7 a is arguably the most crucial factor when determining whether a trade mark is well known in Singapore This is because by virtue of s 2 8 of the current TMA Where it is determined that a trade mark is well known to any relevant sector of the public in Singapore the trade mark shall be deemed to be well known in Singapore 140 This deeming provision suggests that the court cannot disregard s 2 7 a which looks at the degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore emphasis added in its deliberations Indeed it appears that all the other factors listed in s 2 7 are irrelevant once it is determined that the trade mark in question is well known to any relevant sector of the public in Singapore per s 2 7 a 141 Section 2 9 of the current TMA elaborates on who constitutes the relevant sector of the public in Singapore as follows In ss 2 7 and 2 8 relevant sector of the public in Singapore includes any of the following a all actual consumers and potential consumers in Singapore of the goods or services to which the trade mark is applied b all persons in Singapore involved in the distribution of the goods or services to which the trade mark is applied c all businesses and companies in Singapore dealing in the goods or services to which the trade mark is applied 142 The ambit of these categories in particular s 2 9 a is in dispute in this case The Appellant argues that s 2 9 a should be read as covering all actual consumers and potential consumers in Singapore of the type of goods or services to which the plaintiff s trade mark is applied while the Respondents contend that the provision should be taken to mean what it says ie one considers actual consumers and potential consumers of specifically the plaintiff s goods or services only The former interpretation which encompasses a wider group of persons within the relevant sector of the public in Singapore makes it harder for the plaintiff to show that its trade mark is well known in Singapore and this is presumably the Appellant s aim in advancing this particular interpretation in the present appeal 143 There is an overarching policy question applicable to the general construction of all provisions on the protection of well known trade marks which reflects a tension between two key positions On the one hand well known trade marks are usually the result of careful planning hard work large investments in branding and marketing as well as an established presence in a market From this perspective well known trade marks deserve to be protected because of the time effort and money which have been expended on their development and promotion Alternatively one could justify protection of well known trade marks from a consumer welfare perspective in that such trade marks perform crucial signalling symbolic and even myth making roles in society These views may lead one to conclude that well known trade marks should be given greater protection than what may loosely be called ordinary trade marks ie trade marks which do not satisfy the definition of well known trade mark s in s 2 1 of the current TMA 144 On the other hand one may legitimately ask whether well known trade marks deserve any better protection than ordinary trade marks There are strong economic and social reasons why the answer to this question may well be no Monopolies and barriers to entry created by strong trade mark protection are disincentives to competition and distort the proper functioning of the free market economy Socially the commercial monopolisation of words and symbols is detrimental to free enterprise whether of a commercial or a private nature in so far as well known trade marks are likely to be important subjects of everyday commentary comparison and critique Even if strong protection of well known trade marks is justified some argue that the extra special rights which accompany such protection should be strictly limited to an extremely small group of particularly well known trade marks 145 On the present point of how s 2 9 a of the current TMA should be construed see 142 above we are of the view that the Respondents have a stronger case The point made by the Appellant is that the Respondents interpretation of s 2 9 a ie that the consumers referred to in that provision are limited to actual consumers and potential consumers of specifically the plaintiff s goods or services only would make it too easy for a trade mark to be deemed to be well known in Singapore It is argued that the nature of the test itself which is based on the viewpoint of any relevant sector of the public emphasis added see s 2 7 a and s 2 8 of the current TMA already means that any trade mark which is known to even the smallest and most exclusive of niche markets can become well known in Singapore Furthermore according to the Appellant the miniscule size

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  • CDL Hotels International Ltd v Pontiac Marina Pte Ltd[1998] 2 SLR 550; [1998] SGCA 23
    was rejected by Goulding J The learned judge held that the principle stated in Pub Squash by Lord Scarman did not defeat a plaintiff s claim in a quia timet action The learned judge having referred to the principle stated by Lord Scarman in Pub Squash supra said at p 100 So says Mr Nicholls for the defendant here on the 17 and morning of 18 October no reputation among the general public connected with the tree theme can possibly have been acquired by the plaintiff because its television programme did not begin to be shown until some later time on the 18 I do not believe that the Privy Council s reasons fairly read in relation to the facts of the Australian case do contain any principle that would defeat a quia timet action on the facts of the present case The field in the United Kingdom as I see it was entirely clear for the use of the tree theme by the first to get in The plaintiff before October had already incurred very considerable expense It was to be expected and there is some evidence that reputation would be almost immediately acquired by television advertising The defendant knew the plaintiff s position and the defendant had no motive of promoting a present trade of its own in the United Kingdom but only that of defeating the plaintiff s campaign for some possible future utility to the defendant In those circumstances it seems to be consistent with the equitable principle which governs the granting of injunctions in passing off cases to give the quia timet relief as an interlocutory measure that the plaintiff seeks 38 We now revert to the case at hand The appellants contended that the relevant date by which the respondents must show that they had established goodwill in the name Millenia was a 9 December 1994 being the date on which the appellants applied to register with the Registry of Trade Marks their service mark Millennium for hotel and related services or b 25 August 1995 or thereabouts being the date on which there appeared in the 25 31 August 1995 issue of the publication Trade and Travel Gazette Asia in which it was stated that the appellants were expected to use the name Millennium 39 In our opinion neither of these dates could be accepted as the relevant date When the appellants applied for registration of the mark Millennium as a service mark for their hotels prima facie they evinced an intention to use the mark for their hotels But as of that date they did not use the mark for any of their hotels anywhere or for any of their services They had not even announced that they would use the mark as a brand name for their hotels in Singapore Hence at its highest there was then only an intention entertained by the appellants to use the mark in the future It is doubtful whether the respondents could at that stage successfully maintain a quia timet action against the appellants had they known of the application made by the appellants There was then no threatened infraction of the respondents pre existing goodwill in the name Millenia 40 The situation here has some similarity with the New Zealand case of Crusader Oil NL v Crusader Minerals NZ Ltd 1984 3 IPR 171 There the plaintiffs established a large resource company in Queensland Australia and had generated goodwill in relation to that business However they had no goodwill in New Zealand In November 1982 the defendant company was registered in New Zealand with a very similar name and similar objects However it did not begin to trade At that point in time the plaintiff still had no goodwill in New Zealand It was established that the plaintiffs acquired sufficient goodwill in New Zealand by April 1983 In June 1983 the defendant published its prospectus seeking for investors Jeffries J of the High Court of New Zealand held that the relevant date for determining whether the plaintiffs had established any goodwill was in June 1983 when the defendant published its prospectus and sought investors and not the earlier date of November 1982 when the defendant company was registered in New Zealand but had not begun trading June 1983 was held to be the date on which the defendants commenced their conduct of passing off as that was the date they commenced their act of infringement 41 In 124 of his judgment Chao Hick Tin J made the following finding in relation to the appellants application for registration of the service mark Millennium with the Registrar of Trade Marks The defendants claim that by 21 November 1994 they had decided to adopt Millennium as the global brand is not borne out by the circular of 21 November 1994 which talked of strong support for the name Millennium and not it has been decided by the chairman or the board It seems to me that the instruction to register was really a preemptive move to reserve the name leaving the option to the defendants whether they would eventually adopt it I see that in February 1995 Stevenson produced a strategic marketing plan which included the Millennium brand On 22 February 1995 Stevenson wrote to the chairman If we incorporate the name Millennium as our new branding By end March 1995 invitations were extended to various advertising agencies to submit designs for the Millennium brand and Orchard brand Emphasis is ours We agree with the learned judge entirely The learned judge went further and found that the appellants did not finally decide to adopt Millennium as the brand name until the end of March 1995 On the evidence before him this finding was fully justified 42 Turning to the issue of the Travel Trade Gazette for 25 31 August 1995 we found that there was only an isolated statement to the effect that CDL was expected to launch its own hotel management company Millennium later that year The statement did not say in which country that name was to be used and in particular whether it was to be used in Singapore Nor did it say that the hotels owned or run by CDL would be renamed with Millennium as part of their names Lastly it did not appear to have been written with the authority of the appellants and hence it could not even be said that it was a declaration of intent made on their behalf That statement was much too vague and nebulous to serve any useful purpose it certainly could not found a quia timet action by the respondents against the appellants for any threatened passing off 43 The learned judge found that the relevant date was 17 October 1995 which was the date the appellants launched their brand name Millennium for their three hotels overseas namely Millennium Broadway in New York and Millennium Queenstown and Millennium Christchurch in New Zealand In our view it was more than a launch or introduction of their three hotels It was a launch by the appellants of their global brand name Millennium for their hotels They announced inter alia that they had 23 Millennium Partner Hotels including three hotels in Singapore namely Orchard Hotel Harbour View Dai ichi Hotel and King s Hotel and that these hotels would be converted into full fledged Millennium Partner Hotels over the ensuing 18 to 24 months Hence by that announcement the appellants indicated publicly that they intended to use the brand name Millennium for their three hotels in Singapore Admittedly it was not a launch of any of their Millennium hotels in Singapore in the sense that thenceforth they would be calling the three hotels with Millenium as part of their names The appellants therefore had not yet embarked on any conduct which amounted to a passing off But in our judgment what they did was a threatened infraction of the respondents right to the name Millenia and was clearly sufficient to found a quia timet action by the respondents against them for threatened passing off Hence for our purpose it is sufficient to take that date that being the earliest date as the relevant date by which the respondents must show that they had established a goodwill in their business in using the name Millenia as their brand name It is not necessary for us to consider whether in this case the date of commencement of the action by the respondents namely 25 October 1995 would be the relevant date as contended by the respondents The difference between the two dates has no practical significance Goodwill 44 The first element which needs to be established in a passing off action is goodwill Lord Macnaghten described goodwill in Inland Revenue Commissioners v Muller Co s Margarine Ltd 1901 AC 217 as the attractive force which brings in custom He said at pp 223 224 What is goodwill It is a thing very easy to describe very difficult to define It is the benefit and advantage of the good name reputation and connection of a business It is the attractive force which brings in custom It is the one thing which distinguishes an old established business from a new business at its first start The goodwill of a business must emanate from a particular centre or source However widely extended or diffused its influence may be goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates 45 The goodwill relevant in a passing off action is not in the mark logo or getup It is the goodwill between a trader and his customers which is protected by this tort Lord Parker of Waddington in AG Spalding Bros v AW Gamage Ltd 1915 32 RPC 237 at p 284 said There appears to be considerable diversity of opinion as to the nature of the right the invasion of which is the subject of what are known as passing off actions The more general opinion appears to be that the right is a right of property This view naturally demands an answer to the question property in what Some authorities say property in the mark name or get up improperly used by the defendant Others say property in the business or goodwill likely to be injured by the misrepresentation Lord Herschell in Reddaway v Banham LR 1906 AC 139 expressly dissents from the former view and if the right invaded is a right of property at all there are I think strong reasons for preferring the latter view 46 The terms goodwill and reputation have often been used interchangeably giving rise to some confusion Goodwill does not exist on its own and it attaches to a business On the other hand reputation may and often does exist without any supporting business Lord Macnaghten in Muller said at p 224 For my part I think that if there is one attribute common to all cases of goodwill it is the attribute of locality For goodwill has no independent existence It cannot subsist by itself It must be attached to a business Destroy the business and the goodwill perishes with it though elements remain which may perhaps be gathered up and be revived again 47 Lord Lindley in the same case said at p 235 Goodwill regarded as property has no meaning except in connection with some trade business or calling In that connection I understand the word to include whatever adds value to a business by reason of situation name and reputation connection introduction to old customers and agreed absence from competition or any of these things and there may be others which do not occur to me In this wide sense goodwill is inseparable from the business to which it adds value and in my opinion exists where the business is carried on Such business may be carried on in one place or country or in several and if in several there may be several businesses each having a goodwill of its own 48 The distinction between goodwill and reputation was clearly brought out in the case of Anheuser Busch Inc v Budejovicky Budvar NP 1984 FSR 413 at p 470 There the plaintiffs were the brewers of a beer known as Budweiser and had been selling their beer in North America for a long time The defendants were also brewers of a beer in a town known as Budweis in Czechoslovakia and their beer was also known as Budweiser and they had been selling their beer in Europe Apart from the name there was no similarity of taste and appearance between the two beers and their containers were different Prior to 1973 the plaintiffs had been exporting their beer and selling it in the United Kingdom but in a limited way their sales were mainly confined to United States military and diplomatic establishments In 1973 the defendants actively entered the United Kingdom market and made significant sales of their beer there In 1979 the plaintiffs commenced an action against the defendants seeking an injunction to restrain the defendants from selling or dealing in any beer bearing the name of Budweiser The defendants counterclaimed against the plaintiffs and in turn also sought an injunction to restrain the plaintiffs from selling or dealing in beer under the name of Budweiser Whitford J dismissed both the claim and the counterclaim holding that neither party could be disentitled to use the name Budweiser for their beer The plaintiffs appealed and the appeal was dismissed Oliver LJ in his judgment said at p 464 As mentioned above Whitford J found as a fact that the plaintiffs name Budweiser was well known to a substantial number of people in this country leaving aside for the moment US servicemen temporarily resident here as a name associated with the beer brewed by the plaintiffs in the United States The plaintiffs can thus legitimately claim that before the defendants entry into the market here they had a reputation as the brewers of a beer Budweiser with a substantial section of the public The question is whether this reputation associated with a beer which for practical purposes nobody could buy here constituted a goodwill in any relevant sense Emphasis is added 49 In dealing with the plaintiffs argument that by their sales in the United Kingdom they had acquired goodwill in their Budweiser beer Oliver LJ said at p 467 The plaintiffs in the instant case submit that they are not in any difficulty They have proved they submit the existence here of a reputation with a substantial section of the public and they have adduced evidence of sales here to such members of the public as have been admitted to bases and Embassy canteens and bars and as have attended from time to time those open days and air displays which have been organised at United States Air Force bases I confess that for my part I am quite unable to treat these sporadic and occasional sales as constituting in any real sense the carrying on by the plaintiffs of a business in this country The fact is that no ordinary member of the public whether he be indigenous or a foreign tourist could consider himself a customer in this country for the plaintiffs beer 49 His Lordship later said at p 470 It cannot in my judgment be right to treat the sale in this separate artificial and special market as the foundation for a business goodwill in the market at large into which the plaintiffs had never ventured Mr Kentridge argues that once a goodwill exists it is for the owner of the goodwill to choose when and how he will go into the market with his product But this with respect begs the question because it assumes the existence of the goodwill apart from the market and that as it seems to me is to confuse goodwill which cannot exist in a vacuum with mere reputation which may no doubt and frequently does exist without any supporting local business but which does not by itself constitute a property which the law protects 50 Thus having a widespread reputation in a particular place does not necessarily mean that the trader has a goodwill in his business The requirement of a business on which the goodwill hinges has been emphasised in the following cases Star Industrial Co Ltd v Yap Kwee Kor 1976 1 MLJ 149 1975 1977 SLR 20 and Athletes Foot Marketing Associates Inc v Cobra Sports Ltd 1980 RPC 343 51 In determining whether the respondents had at the relevant date established goodwill in their businesses associated with the name Millenia two questions arise First how was the goodwill established Second what is the nature of the goodwill that has been established 52 Goodwill is normally generated from trading As at 17 October 1995 the businesses at RCMS Millenia Tower and Millenia Walk had not commenced and the question is whether in these circumstances an action for passing off could be brought by the respondents In the older English cases the courts adopted a strict approach and held that pre trading activities could not generate goodwill In Maxwell v Hogg 1867 LR 2 Ch 307 it was held that trading must actually have commenced before there was any cause of action Thus a defendant who had entered the market before the plaintiff could do so with impunity even if it was the plaintiff s pre trading advertising that spurred him the defendant to take that step This sentiment was echoed by Farwell J in Chivers v Chivers 1900 17 RPC 420 at p 431 Advertisement distinguished from trade is nothing No doubt if you have the trade the advertisement assists the trade but to say that a man can by advertising alone make his name known in connection with particular goods so as to assist him in obtaining a monopoly of the goods seems to be untenable as a proposition 53 In contrast in the more recent English authorities namely WH Allen Co v Brown Watson Ltd 1965 RPC 191 and British Broadcasting Corpn v Talbot 1981 FSR 228 it was accepted that pre trade activities could generate goodwill and as such there was a cause of action in passing off 54 In WH Allen the plaintiffs obtained a licence to publish the work called My Life and Loves by Frank Harris in an unexpurgated form The intended publication was widely advertised and a great deal of interest had been generated since the book when it was first written could not be published in its entirety in view of the frank portrayal of the author s amorous adventures By virtue of the wide publicity given the plaintiffs had acquired a considerable reputation as the publisher of that title The defendants acquired the licence to publish an abridged and expurgated version of the book which had hitherto been sold under the title Frank Harris My Life and Adventures They advertised that they would be publishing that work and adopted the title My Life and Loves by Frank Harris The plaintiffs took proceedings and sought an interlocutory injunction to restrain the defendants from publishing the abridged version under that title Pennycuick J granted the injunction He said at p 194 In the present case the plaintiffs have acquired a distinctive reputation in this title and if anyone else publishes a book under that identical title then the proper conclusion must be that that person is doing something which is calculated to deceive that is that people are likely to buy the defendants book in a belief that it is that of the plaintiffs So far there seems to be no answer to the plaintiffs case but there is no doubt I think that the title of a book for this purpose is in the same position as the title of a newspaper The title My Life and Loves has now become distinctive of the book published by the plaintiffs It seems to me that if at this stage the defendants bring out their book under the title My Life and Loves they will be passing off their book as the plaintiffs book just as much as if they never had whatever rights they have acquired under those two agreements One need have no sympathy for the defendants in this matter because it is abundantly clear from the facts and the dates that they acquired whatever rights they did acquire under the agreement of 15 October 1964 to use the words used by the plaintiff although the defendants will not accept them simply in order to cash in on the advertisement and reputation of the plaintiffs book 55 In British Broadcasting Corpn the plaintiff had developed a traffic information system capable of being fitted in a motor vehicle by adapting the car radio and it named the system as CARFAX Before the launch of that system the defendant had introduced to the market certain motor vehicle fittings under the name of CARFAX The plaintiff initiated proceedings and sought an interlocutory injunction restraining the defendant from using the name CARFAX in relation to their motor vehicle fittings One of the grounds for resisting the injunction was that the plaintiff had not at the date of commencement of the action launched the system and therefore had no goodwill in the name This was rejected and it was held that there was ample evidence that a significant part of the public knew about the name CARFAX as distinctive of the plaintiff s product and that the fact that the system had not been launched did not prevent the plaintiff from having a goodwill in the name Sir Robert Megary VC said at p 233 I begin with the goodwill claimed by the BBC to have been built up in CARFAX as applied to their scheme Although that scheme has not yet been launched that does not prevent the BBC from having built up goodwill in it which is entitled to protection see WH Allen Co v brown Watson 1965 RPC 191 where the title of an unpublished book was held to have become distinctive of that book so that it could be protected against publication of a rival book under the same name Here there is ample evidence that a significant part of the public knew about the name CARFAX as distinctive of the BBC s system 56 In Australia it has been decided that pre trading advertisements would suffice In Turner v General Motors 1929 42 CLR 352 the American car manufacturer General Motors Co marketed and sold their cars in Australia through their agents It subsequently decided to set up a new company in Australia to be called by the same name to assemble and sell cars there It advertised its intention and following that it formed a company and proceeded to erect a factory for the purpose The defendant started a business dealing in second hand cars under a name resembling that of General Motors Co and put up a sign which gave the impression that his business was a branch or a depot of the plaintiff s business Harvey CJ of the Supreme Court of New South Wales granted an injunction restraining the defendants from using the word General Motor or General Motors The defendants appealed to the High Court of Australia and the appeal was dismissed Dixon J said at pp 368 369 It was then contended that the plaintiff when the acts complained of first commenced had not begun business and had no goodwill and no reputation for the appellant to appropriate and that if his use of the name General Motors was no violation of the plaintiff s rights when he assumed it nothing which occurred afterwards could make it wrongful But the plaintiff from 24 May 1926 was carrying on business here and its existence objects and relation to the American Corporation had been widely advertised The public had been told that in a reorganization of the Corporation s business methods the plaintiff had been constituted to conduct its Australian operations When the appellant pretended that his business was part of or connected with General Motors Australian undertaking he necessarily represented that his business was part of or connected with that which in fact the plaintiff conducted This entitled the plaintiff to complain whether the American Corporation might also do so or not 57 In the Canadian case of Windmere Corpn v Charlescraft Corp Ltd 1989 23 CPR 3d 60 the plaintiff adopted the mark VIBRA SHAVE for its razors early in 1988 and by March of that year it had taken advance orders for its products Over the next six months it distributed samples and promotional materials of its products bearing the mark In April of that year it exhibited its products at the Home Hardware Show and samples of its razors were available there together with promotional and other materials In June 1988 or thereabouts both the plaintiff and defendant filed the trade mark applications for the mark VIBRA SHAVE The plaintiff instituted proceedings against the defendant and applied for an interlocutory injunction against the defendant Rouleau J of the Federal Court in granting the injunction held at p 68 that the plaintiff had made out a strong prima facie case that it had established a reputation in the trade for its products under the mark VIBRA SHAVE although the use of the mark was conducted over a relatively short period In coming to this conclusion he said at p 67 The evidence shows that although the plaintiff only entered the Canadian market at the very earliest in March of 1998 it did so as part of a concerted effort to introduce the trade mark to a wide segment of its purchasers in a short period of time As a distributor of its products to major retailing chains in Canada the first and most significant part of its drive was completed before the defendant even raised the notion of marketing a product under a similar trade mark Although the distribution of samples and promotional materials might not in all circumstances constitute use of a trade mark it would not make commercial sense to conclude that the plaintiff s actions integrally linked as they were to the receipt of large numbers of orders for the product bearing the trade mark did not build up substantial goodwill in the trade mark which accrued solely to the benefit of the plaintiff The providing of samples and specification sheets to prospective customers was clearly in the normal course of trade for a party dealing at the wholesale level 58 On the basis of these authorities pre business activities can generate goodwill This is a commonsense approach and is in line with commercial reality where promoters of businesses usually embark on massive advertising campaigns before the commencement of trading to familiarise the public with the service or product In every case whether the pre trading activity suffices in generating goodwill is a question of fact and depends on the nature and intensity of the activity in question Heavy advertising as in Allen v Brown Watson supra will be adequate On the other hand mere preparations for trading will not as in Amway Corpn v Eurway International Ltd 1974 RPC 82 where the foreign plaintiffs apart from minor trading activities had merely begun organising promotion of their business by seeking premises and interviewing prospective employees in England 59 We now turn to the facts in this case It is necessary to look at the events prior to the relevant date to see if the respondents activities had by then established sufficient goodwill in the business under the name Millenia By January 1994 the respondents had obtained approval from the Advisory Committee of Street Names for naming the complex Millenia Starting from the second quarter of 1994 to the commencement of the action they had spent more than 1m on marketing and promoting the name Millenia in relation to the complex extolling the outstanding features in the hotel office block and shopping mall According to Mr Kwee Liong Tek the strategy was to control the release of news about the Millenia complex so that there would be a steady stream of press releases and media events This was to ensure a continuous flow of information about the project to the public and to keep the project in the forefront of the public s awareness The numerous advertisements and extensive coverage of the complex in the media no doubt brought to the public s minds the existence of the Millenia complex and the high potential and grandeur it promised The advertisements highlighted the features and virtues of the complex and emphasised the synergistic effect in the integration of the hotel the office towers and the shopping mall 60 Besides large scale advertising the respondents had actively sourced for tenants for Millenia Tower and Millenia Walk and hotel guests for RCMS and in that connection they took their advertising campaign abroad by actively seeking out clients largely through personal letters and distribution of brochures As early as 22 July 1994 the first tenant for Millenia Tower was confirmed On 10 July 1994 they entered into the operating agreement with Ritz Carlton whereby the latter would operate the hotel on their behalf for a fee and on the following day they made the announcement that their project was to be called the Millenia On 17 October 1994 there was held the topping up ceremony of RCMS attended by a large number of guests and the event was publicised on television and the press Since December 1994 there were the pre opening sales and marketing campaign for RCMS which were aimed at top grade customers In early April 1995 the first room reservation at the RCMS was made On 17 April 1995 there was the topping up ceremony for Millenia Tower and that occasion was again graced by many guests By this date 50 of the floor space of Millenia Tower had already been let By the date of the commencement of the action RCMS had confirmed reservations for a total of 2 840 room nights for the period between February 1996 and December 1996 Millenia Walk had among its tenants many famous or wellknown designer boutiques and retail outlets such as Guess Valentino Escada Burberry s DFS The Hour Glass and Cortina Watch There was much publicity surrounding the various top of the line tenants in the newspapers 61 Having regard to what had transpired the sourcing of tenants for Millenia Tower and Millenia Walk and hotel guests for RCMS were more than non trading activities They were in fact business activities which had gone into full swing and which generated considerable income for the respondents In our judgment these trading activities had generated goodwill to the respondents in the conduct of their business at the Millenia complex Nature of goodwill 62 The next question relates to the nature of the goodwill The appellants argued that the respondents were in the business of property development and not hotel operators and they had no goodwill in the business of hoteliers That being so they have no claim in passing off against the appellants who are reputed as hoteliers We rejected this argument First the respondents are not only property developers they are also engaged in the business of providing various types of accommodation such as hotels offices and retail mall Ritz Carlton operates RCMS on behalf of and as agents of the respondents for a fee and at the owners expense The respondents as principals are in the business of providing hotel accommodation Goodwill has been acquired by the respondents in respect of their business of providing accommodation at RCMS Millenia Tower and Millenia Walk All three components are parts of the same general field of activity in which the respondents are involved providing different types of accommodation and these three components operate in synergy 63 Secondly it is well settled that the parties in a passing off action need not be in mutual competition The parties may be engaged in different fields of business activities Lord Diplock in Erven Warnink Besloten Vennootschap v J Townend Sons Hull Ltd 1979 AC 731 at pp 741 742 said Spalding s case 84 LJ Ch 449 led the way to recognition by judges of other species of the same genus as where although the plaintiff and the defendant were not competing traders in the same line of business a false suggestion by the defendant that their businesses were connected with one another would damage the reputation and thus the goodwill of the plaintiff s business There are several cases of this kind reported of which Harrods Ltd v R Harrod Ltd 1923 41 RPC 74 the moneylender case may serve as an example 64 In Annabel s Berkeley Square Ltd v G Shock 1972 RPC 838 a well known London club named Annabel s Club instituted a passing off action against an escort agency trading under the same name Whitford J granted an interlocutory injunction against the defendant restraining him from trading under that name He appealed and the Court of Appeal dismissed the appeal holding that there was a likelihood of confusion being occasioned as there was in the minds of the public sufficient association between the field of activity of the club and the field of activity of the escort agency Russell LJ delivering the main judgment of the court said at pp 844 845 In this question of confusion of course as a matter of common sense one of the important considerations is whether there is any kind of association or could be in the minds of the public any kind of association between the field of activities of the plaintiff and the field of activities of the defendant as it is sometimes put Is there an overlap in the fields of activity But of course when one gets down to brass tacks this is simply a question which is involved in the ultimate decision whether there is likely to be confusion If there is no overlapping then of course it is in the highest degree relevant in considering whether there is a case for an injunction based on a likelihood of confusion Here I have no doubt at all as at present advised that there is a sufficient association between what the public would consider the field of activity in which Annabel s Club is conducted and the field of activity in which Mr Schock indulges in the course of his escort business Both are concerned with what might be described as night life or night entertainment 65 A case which is more in point is Lego System Aktieselskab v Lego M Lemelstrich Ltd 1983 FSR 155 where the makers of the well known children s building blocks were granted a permanent injunction against the admittedly bona fide use by the defendants of the name for garden irrigation equipment Falconer J held that the passing off by the defendants was established despite both parties having completely different fields of business activity The plaintiffs there were found to have such substantial and widespread goodwill with the word Lego that the public would associate the company with other forms of unrelated trade The learned judge held that there was no rule of law requiring a common field of activity if deception was shown He elaborated this at p 187 it is to the law as stated in the Advocaat case that we now have to look and in Lord Diplock s formulation of the characteristics that are necessary ingredients to found a cause of action in passing off there is no limitation as to the relation of the field of activity of the defendant to that of the plaintiff Lord Diplock specifically recognises that a cause of action for passing off

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  • Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another
    personal name it is not as distinctive as an inventive word like Volvo It follows that a great number of distinguishing elements need not be added for the marks to be dissimilar Nevertheless it is distinctive enough that a higher threshold for dissimilarity would apply than that used in Ozone where the court had to determine the similarity of the marks HYSTERIC GLAMOUR and GLAMOUR Although the Opponents emphasised the word REGIS the registered mark is ST REGIS and the Opponents Mark must be looked at as a whole in comparison with the Application Mark as a whole ie PARK REGIS However even taking the whole of the mark ST REGIS that name when applied to a hotel is as fanciful as Regis on its own since a saint is not generally associated with a hotel of any sort let alone a luxurious one Thus the addition of St does not change the mark s place on the scale of distinctiveness 21 Moving on to the similarities between the marks as stated visual dissimilarity had been found by the PAR and was not disputed on appeal The PAR found that the marks were similar aurally because with imperfect recollection members of the public are likely to hear Regis as the dominant word when either mark is read out Staywell submitted that there was dissimilarity in this respect as well In the Application Mark the words PARK and REGIS would be read and pronounced as two separate and distinct words and for the Opponents Mark the words ST and REGIS would be read as two separate and distinct words The target customers of the St Regis hotel are the rich who are likely to be educated and such customers would be able to appreciate the difference between PARK REGIS and ST REGIS It argued that a consumer of the Opponents services would certainly understand that the Application Mark is PARK REGIS while the Opponents Mark is ST REGIS 22 There are aural dissimilarities in the marks Each mark consists of two separate words and each of those two separate words would be read and pronounced as separate and distinct elements The situation is somewhat akin to that in Ozone where the court had to deal with the addition of the word hysteric to the word glamour The judge observed at 56 that I t must be borne in mind that Ozone s word mark starts with the entirely separate word hysteric preceding the word glamour Also Ozone s HYSTERIC GLAMOUR word mark would be read and pronounced as two separate and distinct words in the order of hysteric and glamour AMP s GLAMOUR word mark on the other hand would be read as a single word 23 Whilst this is not a case of a single word versus two separate words the observation that words are read and pronounced as separate and distinct elements is equally applicable The words Park and Saint are separate words heard as a distinct element additional to the word Regis The PAR pointed out in the context of discussing aural similarity at 55 that there were many other place names which contained the prefix St such as St James Power Station and the prefix St would not be striking This does not mean however that the prefix St would not be pronounced or aurally remembered Even taking into account imperfect recollection the mark ST REGIS would not be pronounced Regis anymore than St James Power Station is pronounced James Power Station or St Joseph s Institution is pronounced Joseph s Institution Similarly the word Park would not easily be dropped from the mark PARK REGIS in the same way that the Goodwood Park Hotel is not referenced as the Goodwood Hotel The fact that the words Park and Saint are commonly used in place names actually eliminates the risk that careless pronunciation and speech would result in dropping the prefixes from an aural rendering of the marks 24 Having said that however it remains the case that the second word element of each mark is the same name and that name is an unusual one in the context of Singapore Therefore persons enunciating both marks may pay more attention to the second distinctive word in each mark rather than to the more common first word even though they do give that first word its due pronunciation In this respect there would be some perhaps slight degree of aural similarity between the marks 25 Next conceptual similarity The PAR found that there was conceptual similarity Staywell argued that this finding was wrong and that the marks were conceptually dissimilar as the name ST REGIS conjures up the picture of the historical figure St John Regis while the word PARK REGIS brings to mind the idea of an open space or park The Opponents submitted that there was no reason to interfere with the PAR s approach in this regard 26 The argument that the name ST REGIS conjures up the historical figure St John Regis is far fetched as he is not a well known saint or personage in Singapore Singaporeans who know about The St Regis Singapore would probably conjure up that hotel when hearing these words but those who are unfamiliar with the hotel and simply hear the words ST REGIS without the appendage hotel are likely to think that it signifies a person who is a Catholic saint even though they have never heard of him before Therefore the Opponents Mark used on its own would import the notion of a saintly person The concept behind PARK REGIS is less certain While the common meaning of the word Park is a large public garden in a town used for recreation see Concise Oxford Dictionary 11 th Ed revised 2008 when this word is used in Singapore as part of a name it can refer to an actual park or a building or shopping centre or a condominium or even a hotel To quote some examples from Singapore it can be part of the name of a hotel eg Park Sheraton a road eg Parklane a shopping centre eg Park Mall or People s Park a condominium eg Ardmore Park or a green recreational space eg Pasir Ris Park or Fort Canning Park Persons hearing or reading the mark PARK REGIS would probably not think that it refers to a city park Rather park being a common word used in a variety of ways they are likely to think that it refers to some place without being able to specify a particular type of place Thus conceptually ST REGIS as a whole and PARK REGIS as a whole are not close 27 However there is some force to the Opponents submission that since St and Park are very common words persons who come across them in conjunction with the word Regis are more likely to be struck by Regis and remember it rather than the common prefixes St and Park Regis therefore adds distinctiveness to both marks Although both rex and regina are Latin words people who are familiar with English may be aware that they mean king and queen respectively in Latin and such people would therefore likely associate Regis with royalty as well They may think therefore that both PARK REGIS and ST REGIS have something to do with royalty 28 It should be noted here that both Staywell and the Opponents have tried to emphasise a connection with royalty royal treatment in relation to their hotels The device which Staywell uses in the Application Mark before the words is a stylised fleur de lis symbol which is reminiscent of French royalty and as stated above at 4 the device in one of the marks in the series is coloured royal purple which is a colour associated with royalty in some societies In advertisements for ST REGIS brand hotels which appeared in magazine articles there were references to royalty or the royal treatment at those hotels Further the device used by the St Regis Hotel group is designed to look like a crest with similarly elaborate lettering reminiscent of royal opulence Therefore both marks employ the concept of royalty or aristocracy pictorially and aurally and they imply class status and luxury In this way at least the marks are conceptually similar 29 I have accepted above that because of the word Regis the Opponents mark ST REGIS is fairly distinctive and that a higher threshold for dissimilarity should be applied to it In Ozone the court found that because the marks were visually and aurally dissimilar and the word glamour was merely descriptive conceptual similarity did not make the marks similar This followed the orthodox approach that conceptual similarity is not overriding or determinative see McDonald s Corp v Future Enterprises Pte Ltd 2004 2 SLR R 652 at 44 McDonald s quoted with approval at 59 of Ozone However given that Regis is more than merely descriptive this may not be the appropriate approach to take here It was further observed in Ozone at 61 that T he relative importance of each type of similarity must necessarily vary with the circumstances in hand in particular the goods and the types of mark being compared To adopt an overly generalised and restrictive principle that conceptual similarity is only relevant to determining similarity between marks when either visual or aural similarity has been made out would be to ignore the fact that each aspect of similarity can vary in different degrees vis à vis each other depending on the circumstances and trade offs are entirely possible between the three aspects of similarity for example conceptual similarity can offset visual and aural dissimilarities emphasis original The fact that the word glamour was merely descriptive and not distinctive was a controlling factor in the Ozone court s finding that conceptual similarity did not offset visual and aural dissimilarities see 73 As Regis is a more distinctive word in this case I consider that the fact that in some respects the marks are conceptually and aurally similar should offset the visual dissimilarity and the fact that some people might not perceive such aural and conceptual similarities because of unfamiliarity with the Latin meaning of the word regis This has been a difficult balancing exercise but I have come to the conclusion that in the global assessment the marks are similar Are the services similar 30 In my judgment there is no doubt that the services provided by Staywell and the Opponents are similar This was the conclusion of the PAR as well 31 Staywell argued that since the Opponents mark is not registered in class 35 it cannot be the provision of a similar service and is an unwarranted expansion Class 35 covers the following Advertising marketing promotion and publicity services business management business administration office functions provision of office facilities administration of the business affairs of retail stores advisory information and consultancy services relating to all the aforesaid all the aforesaid services also provided on line from a computer database or via the global communications network 32 The relevance of the opposition to registration in Class 35 is limited because the services covered by that class are not the main services provided by Staywell as part of the Park Regis hotel business Regardless of the choice to challenge the mark in Class 35 both marks are registered in Class 43 which covers the following Services for providing food and drink temporary accommodation hotel services resort hotel services hotel accommodation services hotel catering services hotel reservation services hotel restaurant services provision of hotel venues for business exhibitions business fairs conferences congresses lectures and meetings providing facilities accommodation for conducting conferences conventions exhibitions fairs and holidays rental of meeting rooms hospitality services accommodation hospitality suites provision of accommodation food or drink holiday information and planning relating to accommodation inn keeping bar restaurant and accommodation restaurants cafes bar and catering services advisory information and consultancy services relating to all the aforesaid all the aforesaid services also provided on line from a computer database or via the global communications network 33 It is not disputed that Class 43 is the primary business of both parties The dichotomy between Staywell s Class 35 and Class 43 services is false The PAR rightly observed at 63 of her judgment that the intention of Staywell is to go into a business complementary to their hotel services It is difficult to imagine and Staywell made no submissions on what its Class 35 business would look like if it was severed from its hotel services As a consequence I agree with the PAR that these services cannot be separated 34 Staywell further contended that the services provided by its hotel group are different from those provided by the Opponents because it specialises in 4 star hotel services and the St Regis hotel brand is a 6 star brand It contended that neither brand would appear in each other s search categories and therefore the products were dissimilar While the target clientele of a Park Regis hotel is different from that of a St Regis hotel it does not follow that the services are dissimilar Their registration in the same category establishes a prima facie case for similarity Lai Kew Chai J who was the first instance judge in Polo stated at 33 of his judgment see 2005 4 SLR R 816 Polo HC it would be a very rare case if ever that a defendant could claim that its products if listed in the same classification as the plaintiff s were not similar Lai J went on to observe in the same passage that the considerations of price design and quality of the goods went to the likelihood of confusion and not the similarity of goods and services This issue was not appealed in Polo 35 While Polo was a decision on s 27 of the Act the criteria under s 27 and s 8 are substantially the same and are two different routes to getting the same result ie exclusive rights to the mark Staywell s argument in the present case is a replay of the defendant s argument in Polo the difference between a 4 star and 6 star brand is one of price and quality but does not go towards the nature of the services provided This is relevant to the enquiry on confusion and not on the similarity of services There is therefore no need to apply the test in British Sugar Plc v James Robertson Sons Ltd 1997 ETMR 118 British Sugar Is there a likelihood of confusion 36 The likelihood of confusion must be looked at globally taking into account all the circumstances including Polo at 28 a The closeness of the services b The impression given by the marks c The possibility of imperfect recollection d The risk that the public might believe that the services come from the same source or economically linked sources e The steps taken by the applicant to differentiate the services from those of the opponent and f The kind of customer who would be likely to buy the services of the applicant and opponent The closeness of the goods and services 37 Staywell s argument is essentially that Park Regis Singapore is a hotel for the down to earth traveller wanting a convenient place to stay but not necessarily craving the luxury that The St Regis Singapore provides This is an overstatement As observed earlier both Park Regis Singapore and The St Regis Singapore draw on the idea of royalty and luxury Park Regis Singapore is not a budget hotel built for the backpacker In its pre opening promotional material it was described as an unbeatable choice for both business and leisure with impressive facilities and brand new highly modern furniture and fittings Other Park Regis properties are sold as offering guests luxury and comfort and your ideal home away from home Park Regis Singapore provides the same goods and services as The St Regis Singapore for the discerning traveller comfortable and well appointed hotel rooms facilities such as a swimming pool and gymnasium convention halls and dining facilities all the while drawing on the concept of luxury and comfort Park Regis Singapore is a business hotel targeting the lower end of the same business traveller category as The St Regis Singapore it is not a qualitatively different good or service The impression given by the marks 38 The impression given by the marks taken as a whole is determined by the dominant concept that of royal or luxurious treatment However the marks are visually dissimilar and these differences would at least raise some questions as to whether they originated from the same source The marks are displayed prominently on both websites and printed on the towels stationary and coasters in the rooms of the respective hotels The marks are also displayed in the hotel lobbies Thus the impression given is likely to be mixed The possibility of imperfect recollection 39 It is difficult to ascertain what the recollection of the average customer would be whether he would remember the ST REGIS and PARK REGIS marks conceptually or whether he would remember the marks visually and aurally The possibility of imperfect recollection does not take us very far The risk that the public might believe that the goods come from the same source or economically linked sources 40 What is relevant in this enquiry is how both hotels are marketed and whether there is likelihood of confusion when customers or potential customers book a room in either of these hotels 41 As a preliminary point I agree with the holding of the PAR on the inadmissibility of the letters from travel agents that Staywell sought to introduce as part of the evidence regarding confusion These letters each contain a confirmation from the agent writing it that they had never witnessed any confusion in the travel and tourism market between the PARK REGIS and the ST REGIS brands These letters are not statutory declarations they are letters of unverified origin put forward to prove the truth of the statements within them ie that the St Regis and Park Regis hotels are not easily confused The application of the hearsay rule means that such evidence has to be excluded see Soon Peck Wah v Woon Che Chye 1997 3 SLR R 430 42 It was observed in Polo HC that trading circumstances are important for this analysis Customers may book a hotel room in four ways a Booking through the website The websites are completely different The website of Park Regis Singapore is a simply formatted website on a green background with the marks PARK REGIS and LEISUREINN displayed at the top left hand corner and alternating every few seconds The mark Staywell Hospitality Group is also prominently displayed at the top right hand corner The website is simply designed with a few hyperlinks to a video on the hotel Staywell s loyalty and discount programmes and their email address with other information in basic font At the bottom of the page there is a reference to the Staywell Hospitality Group and clicking on this takes the customer to details of other hotels in the group The website of The St Regis Singapore has a black background and presents a much more sophisticated image At the bottom of each page the mark Starwood Preferred Guest and the names of the other hotels owned by Starwood and the other hotel brands operated by the Opponents are displayed The cover page provides little practical information about the hotel and instead piques the visitor s interest with captions such as the Address of Luxury Epicurean Voyages and the Art of Living in gold type The mark ST REGIS is displayed at the top right hand corner It would be clear to the reasonable and discerning customer booking online that these are not economically linked entities and that they belong to different groups It is worth emphasising that a reasonable customer looking at the lists of related hotels in either site would notice that there is no reference to the other This omission is particularly significant in the case of the Park Regis Singapore site since the operators of a 4 star hotel would definitely advertise any association they had with a 6 star hotel brand b Booking through travel agent When this method is used whilst there may be some confusion because there would be no opportunity for the would be customers to see the marks such confusion can be easily cleared up since the travel agents would be knowledgeable about the attributes of each hotel and would be able to explain the different category each belongs to and that one is not connected with the other c Telephone bookings Telephone bookings also do not give customers the opportunity to see the mark There is a greater likelihood of confusion for those who book over the telephone since they would be dealing with staff of the hotel rather than an independent agent who would ask questions to determine the identity of the hotel required d Walk ins the PARK REGIS and ST REGIS marks are prominently displayed on both the hotel buildings and in the lobbies There would be less likelihood of confusion when guests walk into the hotel see the different standards of decor and can be immediately disabused of their earlier misconceived notions if any 43 No statistics have been adduced as to which is the most popular method of booking Starwood has however adduced evidence showing a large spike in the number of page views in Singapore for both its St Regis hotel site and its Starwood hotels site from 2007 to 2008 There are no statistics for 2009 2012 In the modern world it is likely that many would be guests of the respective hotels would use either the internet or a travel agent to make their bookings Unless guests book over the telephone it would appear that there is little scope for confusion This is not a case like Reckitt Colman Products Ltd and Borden Inc and Others 1990 1 WLR 491 where the label was readily detachable from the product and customers were likely to associate the brand with the product packaging The marks in the present case cannot readily be detached from the hotel itself Even if a guest booked over the telephone any confusion is likely to be dispelled when he checks in 44 The Opponents contentions regarding the likelihood of confusion were based more on arguments than on evidence They did not submit survey results showing a likelihood of confusion which was not merely speculative or hypothetical see Polo HC at 22 The situation in the present case is not unlike the situation faced by Belinda Ang J in MacDonald s She observed at 61 that No survey was carried out The arguments are founded on nothing more than mere speculative use of the caused to wonder test Lord Upjohn warned against in Bali Trade Mark The lack of survey evidence was clearly a factor in the Judge s mind in finding no likelihood of confusion In other cases where likelihood of confusion has been found survey evidence has been adduced eg Clinique where survey results showed that 46 of people surveyed were confused 45 The evidence in the present case is sparse The Opponents rely on three isolated incidents of confusion a magazine article attributing the St Regis property to Staywell Hospitality Group a Tripadvisor website review from a guest who connected the Park Regis Hotel with the Regis Brand and a guest who had stayed in the Park Regis Hotel in Sydney and asked whether it was part of the St Regis Group It is impossible to tell from these pieces of evidence whether the confusion was caused by the similarity between the marks and goods or whether it resulted from other factors which ought not to be taken into account eg a mere typo in the magazine article which had confused the St Regis and Park Regis properties see Polo HC at 23 Moreover out of the three instances of confusion one was a query which could have easily been answered by a quick internet search The PAR rightly observed at 68 of her judgment that the evidence raised by the Opponents was from an unidentifiable source and the nature of such internet entries is that it makes such evidence even if admissible not very reliable 46 The Opponents submission that a Park Regis hotel would be seen as a ST REGIS hotel near a park is also not persuasive The CDL Hotels case is of little help to the Opponents The addition of the word Millenia was found at 83 to be a distinguishing mark which set apart that particular Ritz Carlton Hotel from the normal standards of the Ritz Carlton The present case is different The Opponents other ST REGIS properties have not dropped the prefix St These properties include the St Regis Residence Club Aspen the St Regis Aspen Resort the St Regis Grand the St Regis Punta Mita and the Grand Hotel St Regis The prefix ST is clearly an integral part of the brand ST REGIS REGIS is not a distinguishing mark which qualifies the brand in the same way that Millenia set apart the Ritz Carlton Millenia Singapore in CDL Hotels The steps taken by the Applicant to differentiate the goods from those of the Opponent 47 The prominent display of the Staywell Hospitality Group mark on Park Regis Singapore s website the attempt to classify the hotel as a 4 star hotel in a different category from The St Regis Singapore and the marketing of Park Regis Singapore as a business rather than as a luxury hotel deliberately differentiating it from the Park Regis Piermonde are all steps taken by Staywell to differentiate their goods and to reduce confusion The kind of customer who would be likely to buy the goods of the applicant and opponent 48 It is not possible to state categorically that only rich Singaporeans would patronise The St Regis Singapore while Park Regis Singapore would cater to the middle income guest People who would not regard themselves as rich may on occasion treat themselves by patronising The St Regis Singapore This does not mean however that the choice would be made because they are confused The average Singaporean consumer is not an unthinking person in a hurry but someone who would exercise some care and good sense in making his purchases Polo at 34 This would particularly be the case with discerning guests who choose The St Regis Singapore because of its exclusivity and reputation for luxury Given that ST REGIS hotels are not cheap hotels potential guests are likely to either do a quick internet search or seek clarification from the travel agent or hotel before making their booking and this would suffice to dispel any confusion Conclusion on s 8 2 b of the Act 49 Having considered all the factors I have come to the conclusion that the marks are not likely to be confused despite the fact that I have found that they are similar Accordingly I reverse the PAR s findings on s 8 2 b of the Act Section 8 4 of the Act 50 The relevant portions of s 8 4 of the Act for the purposes of this part of Staywell s appeal are the body of the section and ss a and b i These provisions read as follows 4 Subject to subsection 5 where an application for registration of a trademark is made on or after 1 st July 2004 if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark the later trade mark shall not be registered if a The earlier trade mark is well known in Singapore and b The use of the later trade mark in relation to the goods and services for which the later trade mark is sought to be registered i would indicate a connection between those goods and services and the proprietor of the earlier trade mark and is likely to damage the interests of the proprietor of the earlier trademark 51 The PAR found that the Opponents Mark was well known in Singapore as of 3 March 2008 when Staywell sought to register the Application Mark She also held that the use of the Application Mark would lead to a real likelihood that the interests of the Opponents would be damaged because potential customers would be misled into thinking that Staywell s services originated from the Opponents or that there was some connection between the two parties Is the St Regis mark a well known mark connected to the unique St Regis brand 52 The definition of a well known trade mark is set out in s 2 1 a of the Act and is any registered trade mark that is well known in Singapore This is subject to the deeming provision in s 2 8 of the Act which reads Where it is determined that a trade mark is well known to any relevant sector of the public in Singapore the trade mark shall be deemed to be well known in Singapore 53 What a well known trademark is was considered in Novelty Pte Ltd v Amanresorts Ltd and another 2009 SGCA 13 Amanresorts in the context of s 55 of the Act The wording of s 55 3 is almost identical to that of s 8 4 The only difference is that s 8 entitles the party who successfully pleads it to remove a mark from the register while s 55 entitles the same party to get an injunction against the proprietor of the offending mark regardless of whether it is registered The Court of Appeal considered the intention of the legislature to give better protection to well known marks and concluded that the relevant sector of the population was the actual and or potential consumers of the opponent s goods and services and not the actual and or potential consumers of the type of goods and services to which the opposing mark applied In construing s 2 8 the Court of Appeal added the following caveats a The additional protection granted to a well known trademark is not very extensive as compared to the protection granted to ordinary trademarks see 147 b The likelihood of confusion between the marks and its accompanying goods and services must still be proved and the fact that a good or service is only known in a niche market may make proving the likelihood of confusion more difficult see 148 and c The requisite level of knowledge of the mark should tend towards the higher end of the scale to qualify for protection as a well known mark see 149 54 On the basis of the holdings of the Court of Appeal in Amanresorts the ST REGIS mark would be a well known trademark if at the material time it was well known to the actual and or potential client base of The St Regis Singapore 55 To establish that The St Regis Singapore was well known to its actual or potential client base in Singapore the Opponents relied on inter alia a statutory declaration from one Michael Dojlidko who is employed by Starwood Mr Dojlidko stated that Starwood s customer loyalty programme which covered the St Regis hotels worldwide had more than 30 000 Singaporean members as of 2007 The number of visitors in Singapore to the St Regis website was 690 941 in 2008 Further the Opponents referred to and produced numerous newspaper and magazine articles available in Singapore about the ST REGIS brand and its hotel in Singapore This evidence was not effectively disputed by Staywell except for a throwaway line in its written submissions asserting without explaining that the Opponents have not adduced any evidence that they are well known for the earlier mark ST REGIS in Singapore The evidence substantiates the PAR s finding that the requisite level of knowledge was high enough to qualify the Opponents Mark as a well known trademark Is the PARK REGIS mark similar or identical to the ST REGIS mark 56 I have already found at 29 above that the marks are similar Does this similarity indicate a connection between Staywell s and the Opponents hotels 57 This question is another way of asking whether there is a likelihood of confusion Considering this question in the context of s 55 3 a in Amanresorts the Court of Appeal held at 233 that T he widespread availability of protection to trade marks which are well known in Singapore should be balanced by interpreting s55 3 a of the current TMA as requiring a likelihood of confusion to be shown before an injunction to restrain the use of the defendant s trade mark on inter alia goods or services dissimilar to those of the plaintiff can be obtained Section 55 3 a of the Act is identical to s 8 4 b i save that the latter has the additional words of the earlier trademark as it specifically allows proprietors of marks which have been registered earlier in time to oppose the entry of similar or identical marks subsequently sought to be registered It may be argued that the availability of an injunction under s 55 3 a necessitates a stricter test than for s 8 4 b i However the removal of Staywell s trademark from the register is no less draconian than an injunction to prevent its use Once the Application Mark is deprived of the protection accruing to a registered trademark the Opponents can easily prevent the use of the mark Section 55 3 a fulfils the same substantive aims as s 8 4 a and the Court of Appeal s findings in Amanresorts therefore apply to the present case 58 I have held above at 49 that there is no real possibility of confusion The fact that ST REGIS is a well known mark does not affect this analysis The difference between s 8 2 and s 8 4 b i is that the former requires that both marks be tied to similar goods and services while the latter allows a proprietor of an earlier mark to prevent registration of a later mark even though the goods and services offered by the later mark are dissimilar The additional protection granted to a well known mark is thus not much more extensive than that granted to a normal mark The fact that ST REGIS is a well known mark clearly does not a warrant a relaxation of the test of likelihood of confusion This additional avenue is of little use to the Opponents where there is no likelihood of confusion Is there a likelihood of damage to the St Regis brand from use of the Park Regis mark 59 Given that there is no likelihood of confusion the question of likelihood of damage is moot In any event it appears to me that there is no real likelihood of damage to the ST REGIS brand from use of the PARK REGIS mark Even if the hotels were perceived to be economically linked it is clear from the marketing of both hotels that Park Regis Singapore is pitched at a class or two below The St Regis Singapore The standards expected of Park Regis Singapore would accordingly be lower The fact that this hotel does not offer luxury services such as a Bentley limousine pick up from the airport would not cause damage to the ST REGIS brand The Opponents argument that being associated with the 3 to 4 star Park Regis hotel group affects their reputation for luxury is not persuasive 60 It may be thought that there is damage as allowing registration of the

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  • The Singapore Professional Golfers’ Association v Chen Eng Waye and others
    its historical origins in the common law action for deceit Misrepresentation in the tort of passing off can take many forms but a common form is where the defendant by its choice of mark or name misrepresents to the relevant segment of the public that its goods or services are actually those of or are related to or associated with the claimant s To put it another way the question may be asked whether the defendant is tapping on the claimant s established goodwill by using the mark name or get up in question Is the Appellant s goodwill associated with its name or initials 26 The learned authors of Bently Sherman explain the particular connection between the tort of passing off and the goodwill that subsists in the business and is associated with the claimant s name or logo as follows at p 729 The law of passing off is concerned with goodwill when it manifests itself in certain ways Passing off is usually concerned with the signs or badges that are understood as indicating that a product or service emanates from a particular trade source These badges can take a variety of forms Typically passing off is concerned with the goodwill that arises in relation to the name symbol or logo that has been employed by a trader and thus has come to be associated with the business 27 The goodwill that subsists in relation to an organisation s business is commonly associated with its name or its sign or other badge of identity because this becomes a proxy for the organisation and the name or badge in question serves to distinguish the products or services of that organisation from those of another 28 It is however important to emphasise that what the tort of passing off seeks to protect is not the use of a mark or name per se rather it prohibits the tortfeasor from misrepresenting his goods as if they are or are connected to the claimant s goods When he does this by using a name or mark or choice of words that is associated with the claimant it is the actual or prospective damage to the claimant s goodwill or business that the tort of passing off seeks to prevent even though the focus of the inquiry shifts to the tortfeasor s use of the name or mark in question A threshold question that arises in such cases is whether the claimant s goodwill is sufficiently associated with its name or with the logo or mark that it uses or to put it another way whether that logo mark or name is distinctive of the claimant s goods and services 29 The use of a name or a choice of words that is either meaningless or has no discernible correlation to the product or service in question or its key elements in short a fancy word generally serves no purpose other than as a mark or badge of the origin or source of that product or service The author of The Law of Passing Off at para 8 075 describes a fancy word as one which has no obvious relevance to the character or quality of the goods or business in relation to which it is used such as Eureka for shirts June for toiletries and Puffin or Penguin for chocolate coated sandwich biscuits see also Office Cleaning Services Ltd v Westminster Office Cleaning Association 1944 2 All ER 269 at 270 Unsurprisingly this court in Lifestyle 1 99 Pte Ltd v S 1 99 Pte Ltd trading as ONE 99 SHOP 2000 1 SLR R 687 Lifestyle 1 99 at 27 accepted the proposition advanced in The Law of Passing Off that distinctiveness is very much more easily acquired for fancy words 30 But sometimes a name may be nothing more than a mere description of the activities of an organisation that does little to distinguish its products as those emanating from a particular organisation This inevitably presents a difficulty because merely descriptive words tend just to describe their subject and may not readily be understood to be distinctive of the claimant or to denote the source of the goods activities or services in question and also because the law resists granting a legal monopoly over words of general usage 31 The learned authors of Bently Sherman explain this point thus at p 730 While it is possible for a descriptive term to become associated with a claimant the courts are extremely reluctant to allow a person to obtain a monopoly in descriptive words In part this is because policy considerations favour allowing other traders to make use of words that are part of the common stock in trade It is also because in relation to descriptive words it will be more difficult for a trader to show that the words indicate source rather than what they ordinarily describe In short the more descriptive the words are of the goods or services which the trader sells the more difficult it will be to establish the existence of goodwill attaching to those words For a trader to show that they have goodwill in a descriptive word the trader needs to demonstrate that the words have acquired a secondary meaning not only of goods or services of that description but also specifically of the goods or services of which they are the source It is also necessary to show that descriptive terms are distinctive of one source Thus where two publishers are competing to launch magazines with a title such as Leisure News it is unlikely that either will be able to bring a passing off action until the magazine has been in the market place for a sufficient period of time to build up a public association between the name and a particular source 32 Thus the cases recognise that words that are merely descriptive to begin with can become so associated with a particular claimant s business as to become distinctive To put it another way a name that is no more than a word or a collection of words that describes a product or service in a generic way may yet become distinctive when it acquires a secondary meaning ie when these words become closely associated with and thus distinctive of the claimant s business Lifestyle 1 99 at 27 But the burden of establishing this tends to be a heavy one Lifestyle 1 99 at 37 33 In Frank Reddaway and Frank Reddaway Co Limited v George Banham and George Banham Co Limited 1896 1 AC 199 Reddaway the claimant s product was termed camel hair belting The words camel hair belting though descriptive of the material used for the claimant s goods were held to have acquired a secondary meaning thus distinguishing the product as that of the claimant The words did not merely convey the idea that the belting was manufactured from camel s hair but rather through use and promotion the words had come to be understood specifically to mean belting manufactured by the claimant see Reddaway at 213 and 217 34 But as observed by the learned author of The Law of Passing Off at para 8 003 the distinctiveness of a name or mark is just one aspect of the wider question of whether there has been a misrepresentation He puts it thus at para 8 003 I t should be borne in mind that the question of whether a particular mark is distinctive of a certain trader is only one aspect of the wider question of whether there has been a misrepresentation If the claimant in a typical case is successful it may be assumed that the mark relied on was distinctive of him that the defendant s corresponding mark was confusingly similar and that there were no other factors to prevent deception On the other hand if the claimant fails then it does not necessarily mean that his mark as pleaded was not distinctive at all still less that it was in law incapable of distinguishing his goods It may have been that the defendant took adequate steps to differentiate his goods or simply that his own mark was sufficiently different Distinctiveness is a matter of degree and marks of low inherent distinctiveness may be protected against precise copying but not against slight variations In most cases where the claimant fails it is because of a combination of factors the points of resemblance between his goods and the defendant s are so slight that he is driven to assert distinctiveness in the trivial or commonplace or the points of difference are marked enough to outweigh the effect of any similarities 35 It is therefore unsurprising that even where a name that is primarily descriptive has come to acquire a secondary meaning and so be associated with the claimant s business the degree of protection that is conferred on the claimant may in general be less than would be the case with purely fancy names In The Law of Passing Off the learned author states at para 8 064 that Even if the claimant succeeds in proving that a prima facie descriptive term has acquired some degree of secondary meaning he will find that the scope of protection for his mark is narrower than for a wholly arbitrary term There is a rule of law that relatively minor differences will suffice to distinguish the defendant s goods or business when both use a mark that is descriptive of the goods or services they provide Office Cleaning Association was sufficiently different to Office Cleaning Services even though it was the trading name of the defendant The plaintiff was free to choose a name of higher inherent distinctiveness and the penalty for his failing to do so was that a degree of confusion would be tolerated as the only alternative to giving him an unfair monopoly emphasis added 36 It will be evident from the foregoing that in the tort of passing off concerning names brands or marks it will be essential for the claimant to establish that its goodwill is sufficiently associated with its name or brand such that its name or brand is distinctive in that it denotes the goods and services of the claimant to the exclusion of those of other traders Lifestyle 1 99 at 27 either inherently or because the name or brand in question has acquired a secondary meaning The separate but related question of whether the name or mark is fancy or descriptive will be relevant in assessing both distinctiveness as to which see 29 above as well as the degree of protection the law will afford the claimant This is reflected in the level of scrutiny that is applied by the court in assessing whether the defendant has misrepresented its goods or services as those of or associated with the claimant as to which see 34 35 above 37 In this respect i t is the significance which the relevant public attaches to the supposed mark which is all important The Law of Passing Off at para 8 004 Whether a word is fancy or descriptive may of course depend on how it is used and for that matter in what context it is used see Lifestyle 1 99 at 27 it is also a matter of degree on a continuous spectrum between the highly fanciful and the obviously descriptive The Law of Passing Off at para 8 075 see also Lifestyle 1 99 at 27 38 We turn to consider the facts before us in the light of the foregoing principles It was not seriously disputed that the name The Singapore Professional Golfers Association carries a strong association with the Appellant However it was argued that the Appellant s name is a descriptive one in that it essentially describes the nature of the Appellant and hence its activities the Appellant being an association of professional golfers 39 It is of course possible that a collection of generic or descriptive words may yet become distinctive when used in combination with one another But in the case that is before us the Appellant s full name is in essence a straightforward description of an association for professional golfers The use of the definite article The in conjunction with the word Singapore might indicate that the Appellant is the only or the pre eminent association dedicated to the interests and activities of professional golfers in Singapore but this cannot be said to be sufficient in and of itself to confer a significant degree of distinctiveness on the Appellant s name 40 Be that as it may through use it is evident that the name The Singapore Professional Golfers Association has come to be associated with the Appellant when used in this combination This is even more so in relation to the Appellant s shortened name Singapore PGA and its initials SPGA The Appellant was established in 1973 note 26 almost 40 years ago and has been using its full name its shortened name and its initials regularly since then Various local newspaper articles and publicity materials as well as golf publications note 27 which have reported on the Appellant s activities have continually referred to the Appellant using these same names ie the Appellant s full name its shortened name and its initials Moreover the Appellant s use of the initials PGA in its shortened name and in its initials must also be seen in the light of the fact that these initials are widely used and understood in the sport of golf throughout the world to mean Professional Golfers Association Hence this strengthens the association of the Appellant s shortened name and initials with the Appellant In these circumstances we find that the Appellant s name in both its full and shortened forms and initials have come to be identified with the Appellant such that they are no longer merely descriptive of the Appellant in a generic sense Simply put to the extent that the Appellant s name and initials lack a high degree of distinctiveness in and of themselves they have nonetheless acquired a secondary meaning by virtue of their clearly being identified with the Appellant and with the activities that it organises and promotes In this regard we consider that the Judge erred in holding at 38 39 and 48 of the Judgment that the Appellant had not shown that its name and initials had acquired a secondary meaning such that they had come to be associated with the Appellant Likelihood of confusion 41 In ascertaining whether there is an actionable misrepresentation while the defendant s intention or motive in choosing a particular mark name or get up may be relevant the focus is rather on the actual or anticipated effect of the defendant s actions on the minds of those constituting the relevant segment of the public However although it is not essential that fraudulent intent on the defendant s part be shown before liability for passing off may be imposed where this is shown to exist it becomes easier to establish that there is a likelihood of deception on the facts on the simple premise that one will tend to achieve that which one specifically sets out to do and the courts are inclined to infer that this is so see the observations of Aldous LJ in British Telecommunications plc and Another v One in a Million Ltd and Others 1999 1 WLR 903 at 920 that If it be the intention of the defendant to appropriate the goodwill of another or to enable others to do so I can see no reason why the court should not infer that it will happen even if there is a possibility that such an appropriation would not take place See also Tan Tee Jim SC Law of Trade Marks and Passing Off in Singapore Sweet Maxwell Asia 2nd Ed 2005 at para 17 75 and The Law of Passing Off at para 8 003 42 As to the effect of the misrepresentation it must give rise to actual confusion or a likelihood of confusion before it would be actionable under the tort of passing off Novelty Pte Ltd v Amanresorts Ltd and another 2009 3 SLR R 216 Amanresorts at 77 In Amanresorts at 77 this court noted that the two elements of misrepresentation and confusion together constituted the deception which was at the heart of the tort of passing off and which was referred to by Lord Diplock in Erven Warnink Besloten Vennootschap and Another v J Townend Sons Hull Ltd and Another 1979 1 AC 731 at 740 As such the key inquiry is to ascertain whether the relevant public would likely be led to believe that the goods services or activities offered by the defendant are those of the claimant Borden at 499 or of an entity connected to or associated with the claimant Hyundai Mobis at 51 52 There is no requirement for actual confusion to be shown though evidence of actual confusion may well be helpful Amanresorts at 80 43 Nor is the likelihood of confusion to be considered in the abstract Rather it is necessary to assess the effect of the misrepresentation on the relevant segment of the public which typically is that segment of the public in which the claimant s goodwill actually or potentially directly or indirectly subsists 44 This court in Amanresorts has previously emphasised the importance of identifying the relevant segment of the public that has goodwill in a trader s get up as associated with its business It would be helpful here to examine this issue in the context of associations that further commercial or non commercial interests In British Medical Association v Marsh 1931 48 RPC 565 British Medical Association the claimant association was one that represented the interests of the medical profession as a whole The defendant set up two shops and made use of the letters B M A At one shop B M A was displayed prominently at the window above the word Drug Stores and in the window display it was stated We guarantee followed by the words that all reproductions of patent medicines are prepared strictly to the analyses of and below those words The British Medical Association The court held at 571 It is perfectly plain on the evidence that the defendant and other chemists in the company set up by the defendant knew and must have known that B M A meant to a chemist or to a doctor or to the public British Medical Association 45 The court in British Medical Association appeared to conclude that the relevant segment of the public consisted of members of the claimant association ie medical professionals as well as the general public to the extent that they would have the occasion to deal with the claimant association or its members That medical practitioners should constitute a part of the relevant public is uncontroversial as the objective of the claimant association in British Medical Association was to promote the interests and maintain the honour of those in the medical and allied sciences But also uncontroversial is the holding that the wider public who used or would potentially need to use the services of the claimant association or its members would also form part of the relevant public To this extent this segment of the public indirectly constituted the claimant s goodwill because the claimant association was said to be recognised by the public and relied on by them as being representative of the views and interests of the medical profession in the British Empire see British Medical Association at 567 46 In British Association of Aesthetic Plastic Surgeons v Cambright Ltd and Others 1987 1 RPC 549 Cambright the claimant association catered to its members by among other ways seeking to promote knowledge relating to the advancement of plastic surgery and encouraging high standards of personal professional and ethical conduct among its members Its members included practising as well as retired surgeons with varying years of experience The claimant also indirectly catered to the general public by ensuring that there would be a body of proficient plastic surgeons available to service their needs The court examined the question of whether there was a misrepresentation from the perspective of professional doctors and consultants concerned with plastic surgery as well as from the perspective of members of the public Cambright at 551 This again illustrates the broad view taken of the segment of the public in whom the claimant s goodwill was thought to subsist 47 In Society of Accountants and Auditors v Goodway and London Association of Accountants Limited 1907 1 Ch 489 the claimant society was established with among others the object of promoting the status and advancing the interests of the profession of accountants Its members used the designation incorporated accountant In examining the question of confusion Warrington J noted at 497 that the relevant public comprised persons who had dealings with accountants The relevant segment of the public was thus not confined to members of the claimant society nor even to potential members but extended to those who might have the occasion to deal with members of the claimant society 48 Similarly in The British Diabetic Association v The Diabetic Society and Others 1996 1 FSR 1 The British Diabetic Association the claimant was a charity that promoted the interests of those suffering from diabetes The British Diabetic Association at 4 It was the largest and possibly the only national charity working permanently in this field at the time and it sought an injunction to prevent the defendants from using the words The Diabetic Society and The British Diabetic Society The claimant obtained the injunction on the basis of the similarity in the derivation and meaning of the words Society and Association although the court also observed that the small difference between the two words could be a sufficient differentiation depending on the factual circumstances of each case The British Diabetic Association at 22 Walker J assessed the likelihood of confusion from the perspective of the segment of the public made up of patients care givers medical practitioners and donors as well as persons who might use directories or digests listing such organisations and who might be trying to contact the claimant The British Diabetic Association at 11 49 From the foregoing authorities it is evident that the relevant segment of the public would consist of all those persons who have an actual or potential interest whether directly or indirectly in the claimant s products services or activities These would be persons who are drawn to the claimant or who seek the claimant when making their decisions on goods or services that are or may reasonably be believed to be of the sort that the claimant is engaged in or particularly in the context of non commercial organisations when seeking membership or directing donations and sponsorships to support the work of the organisation in question or when considering or seeking accreditations references or endorsements 50 Turning to the case at hand in our view the relevant segment of the public could include any person with a commercial interest in golf as well as those who have or intend to have either direct or indirect dealings with the Appellant in relation to its purposes objects and or activities note 28 The Appellant s objectives are the following the promotion of the sport of golf in Singapore the protection and advancement of the interests of its members who are professional golfers the periodic arrangement and holding of meetings and tournaments for its members the institution and operation of funds for its members benefit and caring for its members welfare note 29 It is clear that the objectives of the Appellant are wide ranging in relation to the sport of golf 51 Ultimately those with an interest in the Appellant s work and activities would not be limited only to its members To illustrate an aspiring golfer who is interested to learn how to play golf or to improve his standard of play would tend to seek an instructor or a coach An instructor or a coach who is accredited by the Appellant would likely hold out such accreditation as a point of interest to the aspiring golfer and it seems just as likely that the latter would rely on and have regard to the Appellant s trade name as an accreditating entity in helping him to make a choice when selecting a coach or an instructor Thus though the aspiring golfer might not immediately deal directly with the Appellant he would have indirect dealings founded on his reliance upon the Appellant as the representative of the interests of the professional golfing community of players coaches and instructors in Singapore 52 As to the characteristics of this segment of the public given the breadth of the class the members would have characteristics typical of an ordinary and sensible member of the public In The Law of Passing Off at para 8 050 the author suggests that such persons would be of average intelligence In our view much turns on the nature of the product in question and the type of customer it tends to attract If in a given case because of the peculiarities of the product or for any other reason the relevant public were made up of well informed particularly attentive and cautious customers who would likely remember a high level of detail slight differences between the claimant s and the defendant s respective signs may well be sufficient to avoid liability on the part of the defendant Bently Sherman at p 763 The characteristics of the relevant public thus also depend on the nature of the claimant s goods or services and whether these goods or services would call for or provoke particular recollection 53 In our view in the context of this case the members of the relevant segment of the public would be neither unusually discerning nor unusually careless They would exercise no more than ordinary caution Regard must also be had to the imperfect recollection of the relevant segment of the public in assessing the likelihood of confusion Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd 1991 1 SLR R 903 at 26 see also Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA 2013 1 SLR 531 Sarika at 18 in the context of trade mark law 54 This is the context against which the likelihood of confusion must be assessed This is ultimately a fact sensitive analysis The factors which may be relevant though not exhaustive would include a the strength of the public s association with the claimant s sign b the similarity of the claimant s and the defendant s respective signs c the proximity of the parties respective fields of business d the characteristics of the market and e the defendant s intention Bently Sherman at p 760 These are factors that serve to aid the court s evaluation of whether in all the circumstances there is a likelihood that the relevant segment of the public might be left with the mistaken impression that the defendant s business or organisation is in fact the same as or economically connected with the claimant s 55 It is relevant here to return to a point we earlier noted Where a claimant s name or sign is fancy and therefore highly distinctive in itself it will be easier to conclude that a likelihood of confusion exists if the defendant is using a similar sign This is so because the more distinctive or inventive a sign or name then the more likely it will be that the relevant segment of the public faced with a similar sign being used to brand goods or services in a similar field of business would either mistake one for the other or assume an economic association between them Consequently the stronger the association of the name in question with the claimant the greater and more readily will protection be conferred Whereas if purely descriptive words are used and the association is not demonstrably strong the degree of protection will be less and small differences may then be sufficient to enable a defendant to avoid liability Bently Sherman at p 761 However this is not a fixed rule of principle and the central question in each case is whether in all the circumstances there is a sufficient likelihood of confusion Misrepresentation on the present facts 56 In that light we turn to assess the likelihood of confusion in the case before us We have already touched on the association of the Appellant s name with the Appellant at 38 40 above and on the characteristics of the relevant segment of the public at 50 53 above The Appellant and the 3 rd Respondent both clearly operate in the same field of business Their activities consist in the main of the promotion of golf as a sport in Singapore and the organising of golf tournaments for their members Further they cater to the same market of consumers ie those who have an actual or potential interest in the sport of golf Although the Respondents emphasised that the 3 rd Respondent was only concerned with the interests of senior golfers and senior professional golfing activities note 30 it should be noted that the Appellant also caters to the interests of senior professional golfers by for example organising golf tournaments for such golfers note 31 As to the question of similarity between the Appellant s and the 3 rd Respondent s respective names and initials in our view there is undoubtedly a strong similarity between these names and initials when viewed as a whole given the order and combination in which the words in the names and the letters in the initials are used This is all the more so if account is had to the imperfect recollection of the relevant segment of the public In our view in all the circumstances the general idea that the 3 rd Respondent s name and initials would convey to a member of the relevant public is that it is a professional golfing organisation related to the Appellant 57 What is especially telling in this regard is that the 1 st Respondent in choosing the 3 rd Respondent s name decided that the letter A would be used in the name Singapore Senior PGA LLP and in the last letter of the initials SSPGA This was so even though it is abundantly clear that the 3 rd Respondent is not a society or an association but a limited liability partnership as is evident from the term LLP used in its full name Yet the 1 st Respondent consciously chose to retain the letter A in the 3 rd Respondent s name and initials when devising the same When we questioned the Respondents counsel on this point in the course of the oral arguments counsel indicated that the letter A stood for accreditation Indeed this was the very first inkling that we or anyone else had that this was the ostensible word for which the letter A stood The word accreditation had featured nowhere up to this point 58 Leaving aside the fact that it might not even make grammatical sense for the letter A to stand for accreditation in the context of the 3 rd Respondent s chosen name what is significant is that if indeed the Respondents intended this to be the real meaning of the initials used by the 3 rd Respondent then by deliberately choosing to use only the initials and not the full name they opened themselves to the inference being drawn against them that having regard to all the circumstances they intended to reap the benefit of the inevitable association which their choice of name would enjoy with the Appellant s name To anyone in the relevant segment of the public the letter A in the 3 rd Respondent s name and initials would have been understood to stand for Association This is especially so because as we have noted above at 40 the PGA combination of letters is widely used both here and internationally in the field of golf to mean Professional Golfers Association If accreditation was in fact the word which the Respondents had in mind a simple solution would have been to give the 3 rd Respondent a name that clearly reflected this 59 In our view the scope for confusion here is much greater than was the case in The British Diabetic Association which was cited by the Appellant in its supplementary submissions note 32 The court in The British Diabetic Association in distinguishing at 22 Office Cleaning Services Ld v Westminster Window and General Cleaners Ld 1946 63 RPC 39 held that unlike the words Services and Association the words Society and Association were very similar in derivation and meaning and not wholly dissimilar in form The use of the letter A in the 3 rd Respondent s name which is identical to the letter used by the Appellant in its initials over the last four decades and the particular combination of words and initials in this case gives rise to much greater scope for confusion 60 On this basis there are undoubtedly sufficient facts for us to conclude that there is a likelihood of confusion in the minds of members of the relevant segment of the public such that they would be led to believe that the Appellant and the 3 rd Respondent are one and the same or are connected We also reject the submission made and in this regard we respectfully disagree with the Judge that such minor differences as there are suffice to differentiate the 3 rd Respondent s name and initials from those of the Appellant to such a degree as to avert this likelihood of confusion We note the unmistakable degree of similarity in relation to the order and combination of the words and or letters used in the names and initials of both parties The slight differences here principally consist of the addition of the word Senior and the letters LLP in the 3 rd Respondent s name These differences in our view far from displacing the likelihood of confusion in fact serve to aggravate it The use of the word Senior in fact gives the distinct impression that the 3 rd Respondent is a branch of the Appellant that is catering exclusively to the Senior arm of the golfing community 61 As to the letters LLP to those who understand this to signify that the 3 rd Respondent is a limited liability partnership the use of these letters in conjunction with the word Singapore and the initials PGA could just as well underscore the perceived connection with the Appellant and the conclusion that might well be drawn in the circumstances is that the 3 rd Respondent is a related arm of the Appellant but constituted as a limited liability partnership for commercial reasons The element of confusing misrepresentation in the tort of passing off is therefore clearly made out in our view 62 It is not necessary for us in the circumstances to make a finding on whether the selection and the use of the 3 rd Respondent s name was actuated by bad faith However having regard to the matters stated at 56 58 above we are satisfied that it was so Damage 63 We turn to the final element namely the damage to the Appellant s goodwill An action in passing off protects a claimant s goodwill For this reason it is essential that the misrepresentation by the defendant must be shown to have damaged or at least be likely to cause damage to the claimant s goodwill Amanresorts at 94 The Law of Passing Off at para 4 001 In the court below the Appellant argued that it suffered or at least

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  • Singapore: Leading Asia In Dispute Resolution
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