Amanresorts v Novelty: Passing Off & Trademark Infringement over 'Amanusa' Brand

Amanresorts Limited and Amanresorts International Pte Ltd sued Novelty Pte Ltd in the High Court of Singapore, alleging passing off and trademark infringement due to Novelty's use of the name 'Amanusa' for a residential development. Amanresorts, which operates luxury resorts worldwide, claimed Novelty's use of the name, identical to one of its Bali resorts, infringed on its trademarks and goodwill. The court found in favor of Amanresorts, granting a declaration that their trademarks were well known and issuing an injunction against Novelty's use of the 'Amanusa' name in relation to any form of accommodation. The court did not find fraudulent intent to deceive, and did not order an inquiry as to damages or an account of profits.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiff

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Amanresorts sued Novelty for passing off and trademark infringement for using 'Amanusa' for a residential project. The court found in favor of Amanresorts.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Novelty Pte LtdDefendantCorporationInjunction GrantedLost
Amanresorts International Pte LtdPlaintiffCorporationJudgment for PlaintiffWon
Amanresorts LimitedPlaintiffCorporationJudgment for PlaintiffWon

3. Judges

Judge NameTitleDelivered Judgment
Tay Yong KwangJudgeYes

4. Counsels

Counsel NameOrganization
Tan Tee JimLee & Lee
Lim Ke XiuLee & Lee
Christopher de SouzaLee & Lee
Koh Chia LingAlban Tay Mahtani & de Silva
Alban KangAlban Tay Mahtani & de Silva
Ang Kai HsiangAlban Tay Mahtani & de Silva

4. Facts

  1. Plaintiffs operate luxury resorts worldwide under the 'Aman' brand.
  2. Defendant, a Singaporean real estate developer, named its residential project 'Amanusa'.
  3. Plaintiffs alleged passing off and trademark infringement.
  4. Plaintiffs own trademarks consisting of the word “Aman” and/or containing the prefix “Aman”.
  5. Plaintiffs' Amanusa trademark was not registered in Singapore at the material time.
  6. Defendant's residential project was marketed as having a Balinese-inspired theme.
  7. The plaintiffs have a website at www.amanresorts.com registered in December 1996 which, for the past several years, has attracted millions of “hits”.

5. Formal Citations

  1. Amanresorts Limited and Another v Novelty Pte Ltd, Suit 276/2006, [2007] SGHC 201

6. Timeline

DateEvent
Amanpuri resort opened in Phuket, Thailand
Amanpuri in Phuket built 31 villa homes
Amankila and Amanusa opened in Bali
Royal Woods Resort Pte Ltd bought land in Australia
Amanresorts.com website registered
Amanusa trademark registered in Singapore
Amanusa trademark registration in Singapore not renewed
Plaintiffs' International Reservations Office started operating in Singapore
Novelty Pte Ltd incorporated
Defendant bought the site on which the Yio Chu Kang project now stands
Architects applied to the Street and Building Names Board to name the Yio Chu Kang project as Amanusa
Defendant began marketing the Amanusa residential project
Plaintiffs issued a letter of demand to the defendant
Residential project in Indonesia named Amanusa Regency
Name of Indonesian project changed to Anugraha Regency
Action commenced
Defendant started issuing questionnaires to potential purchasers of the Yio Chu Kang project
Huttons took over the marketing of the Yio Chu Kang project
Leong Chee Wing visited the defendant’s sales office
Kelley Teo visited the sales office for the Yio Chu Kang project
Judgment reserved

7. Legal Issues

  1. Passing Off
    • Outcome: The court held that the plaintiffs had established the elements of passing off.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage
    • Related Cases:
      • [1998] 2 SLR 550
  2. Trademark Infringement
    • Outcome: The court held that the plaintiffs' trademarks were well-known trademarks and entitled to protection under s 55 of the Trade Marks Act.
    • Category: Substantive
  3. Fraudulent Misrepresentation
    • Outcome: The court was not satisfied that there was a fraudulent intention to deceive.
    • Category: Substantive

8. Remedies Sought

  1. Injunction
  2. Declaration
  3. Inquiry as to damages or an account of profits
  4. Delivery up and destruction of infringing materials

9. Cause of Actions

  • Passing Off
  • Trademark Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Trademark Law

11. Industries

  • Hospitality
  • Real Estate

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
CDL Hotels International Ltd v Pontiac Marina Pte LtdCourt of AppealYes[1998] 2 SLR 550SingaporeCited for the essential elements of the tort of passing off: goodwill, misrepresentation, and probability of damage.
Sheraton Corp of America v Sheraton Motels LtdN/AYes[1964] RPC 202N/ACited to support the point that the absence of an Aman resort in Singapore is immaterial to the existence of goodwill.
CDL Hotels International Ltd v Pontiac Marina Pte LtdN/AYes[1997] 3 SLR 726SingaporeCited to support the point that reports in the media extolling the virtues or excellence of a service can generate goodwill.
Neutrogena Corpn v Golden LtdN/AYes[1996] RPC 473N/ACited to support the point that a 'substantial number' does not necessarily mean a large proportion of the public.
Nation Fittings (M) Sdn Bhd v Oystertec Plc and anorN/AYes[2006] 1 SLR 712SingaporeCited to support the point that a probability of damage suffices but the actual or probable damage must be to their goodwill in respect of their trade or business.
Lego System Aktieselskab v Lego M LemelstrichN/AYes[1983] FSR 155N/ACited as an example of loss of licensing opportunity or income as a form of damage.
Rolls-Royce Motors Ltd v ZanelliN/AYes[1979] RPC 148N/ACited as an example of inferiority of the defendant’s goods and services as a form of damage.
British Legion v British Legion Club (Street) LtdN/AYes(1931) 48 RPC 555N/ACited as an example of likelihood of damage should the defendant get into financial, legal or other trouble as a form of damage.
Lloyd’s v Lloyd’s (Southampton) LtdN/AYes(1912) 29 RPC 433N/ACited as an example of misappropriation of the plaintiffs’ goodwill and reputation as a form of damage.
Eastman Photographic Materials Co Ltd v Griffiths (John) Cycle Corp LtdN/AYes(1898) 15 RPC 105N/ACited as an example of restriction on the plaintiffs’ natural expansion into residential real estate as a form of damage.
Taylor Bros v Taylor GroupN/AYes[1988] 2 NZLR 1N/ACited as an example of loss of exclusivity and erosion of distinctiveness as a form of damage.

13. Applicable Rules

Rule Name
Rules of Court (Cap 322, R 5)

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Aman
  • Amanusa
  • Passing off
  • Trademark infringement
  • Goodwill
  • Misrepresentation
  • Well-known trademark
  • Residential development
  • Luxury resorts

15.2 Keywords

  • Amanresorts
  • Novelty
  • Amanusa
  • Passing off
  • Trademark infringement
  • Singapore
  • Intellectual property
  • Real estate

17. Areas of Law

Area NameRelevance Score
Passing Off90
Trademarks85
Torts80
Fraud and Deceit75
Misrepresentation75
Defamation60
Commercial Law50
Contract Law40
Contracts40
Breach of Contract40
Property Law30
Commercial Real Estate30
Commercial Litigation30
Real Estate30
Estoppel25
Agency Law20
Civil Procedure20
Corporate Litigation20
Corporate Law20
Commercial Leasing20

16. Subjects

  • Intellectual Property
  • Trademark Law
  • Real Estate Law