Protection of well known trade marks in Singapore

21 June 2010

Karol Goh

On 31 March 2009, the Singapore Court of Appeal issued, in deciding whether a modest cluster housing project in Singapore should be allowed to use the same name as an exclusive luxury resort in Bali, a landmark decision on the protection of well known trade marks in Singapore. In Novelty Pte Ltd v Amanresorts Ltd [2009] SGCA 13, the Court of Appeal considered, for the first time, Section 55 of the Trade Marks Act, the relevant provision affording a well known trade mark proprietor a statutory right to an injunction to restrain use of its well known trade mark.

The dispute in this case arose when Novelty Pte Ltd (“Novelty”), a local property developer, used the name “Amanusa” for its cluster housing project. The Respondents, Amanresorts Ltd and Amanresorts International Pte Ltd (“Amanresorts”), are members of the Amanresorts group, known for its chain of ultra-luxurious resorts around the world. “Amanusa” was the name of one of its resorts in Bali. Amanresorts had sought to restrain Novelty’s use of the word “Amanusa” by alleging passing off and infringement of a well-known trade mark (pursuant to Section 55(3)(a) of the Trade Marks Act).

In the High Court, the trial judge upheld Amanresorts’ claim, having found that Amanresorts had successfully established the elements of passing off in relation to Novelty’s use of the word “Amanusa”. The trial judge also held that Amanresorts’ trade marks, including the “Aman” and “Amanusa” trade marks, were well known trade marks in Singapore, and that Amanresorts was accordingly entitled to an injunction to restrain Novelty’s use of the “Amanusa” name.

On appeal, the Court of Appeal held that Amanresorts had established the “classic trinity of passing off” - namely, goodwill, misrepresentation and damage. The court recognised that Amanresorts had goodwill in the word “Aman” as well as in the names of Amanresorts’ various resorts and hotels (the “Aman Names”). This goodwill existed among extremely well heeled individuals who formed Amanresorts’ core clientele, “once-in-a-lifetime” guests and visitors who aspired to stay at the resorts. These persons would have been exposed to and likely confused by Novelty’s use of “Amanusa”, which constituted a misrepresentation that its project had the same source as the Respondents’ resorts or that the two were somehow connected. As there was a likelihood of damage in the form of (1) tarnishment of Amanresorts’ goodwill due to the difference in quality of the project and the Respondents’ resorts; and (2) restriction of Amanresorts’ expansion into the residential accommodation business in Singapore, the Court of Appeal upheld the passing off claim.

The Court of Appeal went on to examine Amanresorts’ alternative claim under Section 55(3)(a) of the Trade Marks Act, and took the view that marks which were “well known in Singapore” (i.e. recognised or known by any relevant sector of the public in Singapore) should not be protected against the use of similar or identical marks on dissimilar goods or services where such use did not give rise to confusion. The only exception to the requirement of confusion was for marks which were “well known to the public at large in Singapore”. If a proprietor could show that his mark was “well known to the public at large in Singapore” (i.e. having a higher level of recognition as compared to merely being recognised or known by any relevant sector of the public in Singapore), the mark would be entitled to protection against the use of similar or identical marks on dissimilar goods or services where there was no likelihood of confusion.

To enjoy protection under Section 55(3)(a) of the Trade Marks Act, the proprietor of a well known trade mark must show that use of the offending trade mark “would indicate a connection between [the goods or services on which the offending mark is used] and the well known mark proprietor, and is likely to damage the interests of the [well known mark proprietor]”. The Court of Appeal held that the tests to be adopted for the purposes of the “connection” and “likely to damage the [claimant’s] interests” requirements in Section 55(3)(a) of the Trade Marks Act were substantively similar to those relating to misrepresentation and damage under passing off, with one important distinction: the passing off tests concern a claimant’s goodwill whereas the tests under Section 55(3)(a) concern the claimant’s interests. Even if a proprietor of a well known trade mark did not have goodwill in Singapore, he could nevertheless rely on protection under Section 55(3)(a) of the Trade Marks Act if his interests were damaged.

The Court of Appeal accordingly found that the Aman Names were well known in Singapore and that the claim under Section 55(3)(a) had been made out.

The Court of Appeal’s decision brings much-needed clarity to the position in Singapore regarding the protection of well known trade marks. Rights owners who previously had to rely primarily on the common law tort of passing off for protection of their goodwill will also welcome the Court of Appeal’s comments on the symmetry between the tests for misrepresentation and damage in passing off and the corresponding tests under Section 55(3)(a).