Novelty Pte Ltd v Amanresorts Ltd: Passing Off & Well-Known Trade Marks

In Novelty Pte Ltd v Amanresorts Ltd, the Singapore Court of Appeal addressed claims of passing off and infringement of well-known trade marks. Amanresorts Ltd, operating luxury resorts under the 'Aman' name, sued Novelty Pte Ltd for using 'Amanusa' for a housing project. The court dismissed Novelty's appeal, affirming that Amanresorts had goodwill in the 'Aman' names, Novelty's use created a likelihood of confusion, and this use would cause damage to Amanresorts' goodwill and interests. The court upheld the injunction against Novelty's use of the 'Amanusa' name.

1. Case Overview

1.1 Court

Court of Appeal

1.2 Outcome

Appeal dismissed with costs; the court upheld the High Court's decision that the Respondents' passing off claim and claim under Section 55(3)(a) of the Trade Marks Act had been made out.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Singapore Court of Appeal case concerning passing off and protection of well-known trade marks; housing developer vs luxury resort.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Novelty Pte LtdAppellantCorporationAppeal DismissedLost
Amanresorts LtdRespondentCorporationJudgment for RespondentWon
Amanresorts International Pte LtdRespondentCorporationJudgment for RespondentWon

3. Judges

Judge NameTitleDelivered Judgment
Chan Sek KeongChief JusticeNo
Andrew Phang Boon LeongJustice of the Court of AppealNo
V K RajahJustice of the Court of AppealYes

4. Counsels

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

4. Facts

  1. Amanresorts operates luxury resorts under the 'Aman' name.
  2. Novelty Pte Ltd developed a cluster housing project named 'Amanusa'.
  3. Amanresorts claimed Novelty's use of 'Amanusa' constituted passing off.
  4. Amanresorts also claimed infringement of well-known trade marks.
  5. The Street and Building Names Board approved the name 'Amanusa' for the Project.
  6. The project was advertised as a 'Balinese-inspired' retreat.
  7. Amanresorts shifted its corporate headquarters from Hong Kong to Singapore in 1999.

5. Formal Citations

  1. Novelty Pte Ltd v Amanresorts Ltd and Another, CA 56/2007, [2009] SGCA 13
  2. Amanresorts Limited v Novelty Pte Ltd, , [2008] 2 SLR 32

6. Timeline

DateEvent
Amanresorts Ltd incorporated in Hong Kong.
Amanpuri resort opened in Phuket, Thailand.
Amanusa resort opened in Bali.
Amanresorts.com website registered.
Amanusa registered as a trade mark in Singapore.
Amanresorts International Pte Ltd incorporated in Singapore.
Amanusa trade mark registration expired.
Novelty Pte Ltd incorporated.
Novelty Pte Ltd purchased site off Old Yio Chu Kang Road.
JGP suggested the name 'Amanusa' for the Project.
Street and Building Names Board approved 'Amanusa' for the Project.
Marketing efforts for the Project began.
Amanresorts became aware of the Project.
Letter of demand sent to Novelty Pte Ltd.
Legal proceedings commenced against Novelty Pte Ltd.
Affidavit of evidence-in-chief of Mr. Manoj Dharmadas Kalwani affirmed.
Novelty Pte Ltd substantially changed contents of brochures.
Trial began.
Judgment reserved.

7. Legal Issues

  1. Passing Off
    • Outcome: The court found that Novelty Pte Ltd had passed off its accommodation as being associated with Amanresorts Ltd.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage to Goodwill
      • Dilution of Goodwill
      • Loss of Licensing Opportunity
      • Restriction on Expansion
      • Loss of Exclusivity
      • Erosion of Distinctiveness
    • Related Cases:
      • [1979] AC 731
      • [1990] 1 WLR 491
  2. Infringement of Well-Known Trade Mark
    • Outcome: The court found that Novelty Pte Ltd's use of the name 'Amanusa' would indicate a connection between its goods/services and Amanresorts, and was likely to damage Amanresorts' interests.
    • Category: Substantive
  3. Damage
    • Outcome: The court found a likelihood of prospective damage rather than immediate damage to the Respondents.
    • Category: Substantive
    • Sub-Issues:
      • Blurring
      • Tarnishment
      • Loss of Licensing Opportunity
      • Restriction on Expansion
      • Loss of Exclusivity
      • Erosion of Distinctiveness
      • Dilution of Goodwill
  4. Goodwill
    • Outcome: The court found that the 'Aman' names had goodwill in Singapore.
    • Category: Substantive
  5. Misrepresentation
    • Outcome: The court found that there was misrepresentation to the relevant sector of the public.
    • Category: Substantive

8. Remedies Sought

  1. Injunction
  2. Declaration that the 'Aman' names were well-known trade marks in Singapore
  3. Damages
  4. Account of Profits

9. Cause of Actions

  • Passing Off
  • Trade Mark Infringement

10. Practice Areas

  • Commercial Litigation
  • Intellectual Property Litigation

11. Industries

  • Hospitality
  • Real Estate Development

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Erven Warnink Besloten Vennootschap v Townend & Sons (Hull) LtdHouse of LordsYes[1979] AC 731United KingdomCited for the five characteristics necessary to create a valid cause of action for passing off.
A.G. Spalding & Bros. v A.W. Gamage Ltd.N/AYes(1915) 32 RPC 373N/ACited as a case that informs the characteristics necessary to create a valid cause of action for passing off.
Reckitt & Colman Products Ltd v Borden IncN/AYes[1990] 1 WLR 491N/ACited for the elements a plaintiff must prove to succeed in a passing off action: goodwill, misrepresentation, and damage.
CDL Hotels International Ltd v Pontiac Marina Pte LtdCourt of AppealYes[1998] 2 SLR 550SingaporeCited for summarizing the law of passing off in terms of goodwill, misrepresentation, and damage.
Consorzio del Prosciutto di Parma v Marks & Spencer PlcEnglish Court of AppealYes[1991] RPC 351EnglandCited for the 'classical trinity' of goodwill, misrepresentation, and damage in a passing off action.
Star Industrial Company Limited v Yap Kwee KorN/AYes[1976] FSR 256N/ACited to emphasize that a passing-off action is a remedy for the invasion of a right of property in the business or goodwill likely to be injured by the misrepresentation.
The Commissioners of Inland Revenue v Muller & Co’s Margarine, LimitedN/AYes[1901] AC 217N/ACited for the clearest exposition of what goodwill is: the benefit and advantage of the good name, reputation, and connection of a business.
The Clock, Ld v The Clock House Hotel, LdN/AYes(1936) 53 RPC 269N/ACited as an example of geographically limited goodwill.
Sutherland v V2 Music LtdN/AYes[2002] EMLR 28N/ACited to support the point that the law of passing off will not intervene to protect goodwill which any reasonable person would consider trivial.
800-FLOWERS Trade MarkN/AYes[2000] FSR 697N/ACited for the principle that the mere fact that websites can be accessed anywhere in the world does not mean that the law should regard them as being used everywhere in the world for trade mark purposes.
800-FLOWERS Trade MarkEnglish Court of AppealYes[2002] FSR 12EnglandCited for the requirement of 'use' of a trade mark within a certain area requiring some active step in that area on the part of the trade mark owner.
HFC Bank Plc v Midland Bank PlcN/AYes[2000] FSR 176N/ACited to support the view that the alleged misrepresentation must be analyzed from the perspective of those who have goodwill in the plaintiff's get-up.
Anheuser-Busch Inc v Budejovicky Budvar NPN/AYes[1984] FSR 413N/ACited as an example of a situation where a well-known good is unavailable for sale, thus limiting goodwill.
Parker-Knoll Limited v Knoll International LimitedN/AYes[1962] RPC 265N/ACited for the principle that the court must trust to its own perception into the mind of the reasonable man when assessing likelihood of confusion.
Office Cleaning Services, Ld v Westminster Window and General Cleaners, LdN/AYes(1946) 63 RPC 39N/ACited to support that fraudulent intentions in using a name increases the likelihood of confusion.
Miss World (Jersey) Ltd v James Street Productions LtdN/AYes[1981] FSR 309N/ACited as an example where the differences between the business, goods or services of the plaintiff and those of the defendant were so great and so obvious that no one would mistake the former for the latter and vice versa.
Mechanical Handling Engineering (S) Pte Ltd v Material Handling Engineering Pte LtdN/AYes[1993] 2 SLR 205N/ACited to define the 'hard line' approach to the foreign business problem in the law of passing off.
Conagra Inc v McCain Foods (Aust) Pty LtdFederal Court of AustraliaYes(1992) 33 FCR 302AustraliaCited as an example of a less traditional approach to the foreign business problem.
Orkin Exterminating Co Inc v Pestco Co of Canada LtdOntario Court of AppealYes(1985) 19 DLR (4th) 90CanadaCited as an example of a less traditional approach to the foreign business problem.
Nation Fittings (M) Sdn Bhd v Oystertec PlcN/AYes[2006] 1 SLR 712N/ACited to define 'a badge of trade origin'.
Annabel’s (Berkeley Square) Limited v G SchockN/AYes[1972] RPC 838N/ACited as a classic case of tarnishment, where the defendant's business had an unsavoury reputation.
C A Sheimer (M) Sdn Bhd’s Trade Mark ApplicationN/AYes[2000] RPC 484N/ACited as a classic case of tarnishment, where it was sought to register the word 'Visa' as a trade mark for use in relation to condoms and contraceptive devices.
British Legion v British Legion Club (Street) LdN/AYes(1931) 48 RPC 555N/ACited as an example of a case where the threshold for proving the likelihood of damage to goodwill was relatively low.
Dawnay Day & Co Limited v Cantor Fitzgerald InternationalN/AYes[2000] RPC 674N/ACited as an example of a case where a lenient approach was adopted vis-à-vis proof of the likelihood of damage.
Habib Bank Ltd v Habib Bank AG ZurichN/AYes[1981] 1 WLR 1265N/ACited to support that it is not sufficient for the plaintiff to merely allege that evil days may befall the defendant to establish a likelihood of damage to its goodwill.
Irvine v Talksport LtdN/AYes[2002] 1 WLR 2355N/ACited as an example where loss of licensing opportunity was recognized as a recoverable head of damage.
Lego System Aktieselskab v Lego M Lemelstrich LtdN/AYes[1983] FSR 155N/ACited as an example where loss of licensing opportunity was recognized as a recoverable head of damage.
Tot Toys Ltd v MitchellN/AYes[1993] 1 NZLR 325N/ACited to support the argument that accepting the loss of licensing opportunity or licensing revenue as a recoverable head of damage in passing off actions will lead to a circularity in reasoning.
Alfred Dunhill Limited v Sunoptic SAN/AYes[1979] FSR 337N/ACited to support the principle that a plaintiff who has established goodwill in one form of commercial 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 Eastman Photographic Materials Company, Ld v The John Griffiths Cycle Corporation, Ld and The Kodak Cycle Company, LdN/AYes(1898) 15 RPC 105N/ACited as an example where claims for passing off have succeeded despite the apparent gulf between the established activity and the extended activity of the plaintiff.
Taylor Bros Ltd v Taylors Group LtdN/AYes[1988] 2 NZLR 1N/ACited in support of the proposition that 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 recognized.
Taittinger SA v Allbev LtdN/AYes[1993] FSR 641N/ACited to support 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.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
Section 55 Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
Section 2 Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Passing off
  • Well-known trade mark
  • Goodwill
  • Misrepresentation
  • Dilution
  • Tarnishment
  • Likelihood of confusion
  • Trade mark infringement
  • Exclusivity
  • Distinctiveness

15.2 Keywords

  • passing off
  • trade mark
  • well-known trade mark
  • Amanresorts
  • Amanusa
  • Novelty Pte Ltd
  • dilution
  • goodwill
  • misrepresentation

17. Areas of Law

Area NameRelevance Score
Passing Off90
Intellectual Property Law70
Trademarks70
Torts60
Civil Litigation40
Litigation40
Contract Law20
Breach of Contract20

16. Subjects

  • Intellectual Property
  • Trade Mark Law
  • Passing Off