Singapore Professional Golfers’ Association v Chen Eng Waye: Passing Off & Unauthorised Use of 'Singapore Senior PGA' Name

The Singapore Professional Golfers’ Association sued Chen Eng Waye, Chen Xiangyi Roy, and Singapore Senior PGA LLP in the High Court of Singapore, alleging unauthorized use of the name 'Singapore Senior PGA LLP'. The plaintiff claimed passing off, seeking injunctions and damages. Tan Lee Meng J dismissed the plaintiff's action, finding that the plaintiff's name was descriptive and that there was no misrepresentation by the defendants.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Plaintiff's action dismissed with costs.

1.3 Case Type

Civil

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

The Singapore Professional Golfers’ Association sued Chen Eng Waye for unauthorized use of 'Singapore Senior PGA'. The court dismissed the claim, finding no misrepresentation.

1.7 Decision Date

23 May 2012

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
The Singapore Professional Golfers' Association	Plaintiff	Association	Claim Dismissed	Lost	Tan Tee Jim of Lee & Lee Jeremiah Chew of Lee & Lee
Chen Eng Waye	Defendant	Individual	Judgment for Defendant	Won	Wun Rizwi of RHT Law LLP Ow Shi Jack of RHT Law LLP
Chen Xiangyi Roy	Defendant	Individual	Judgment for Defendant	Won	Wun Rizwi of RHT Law LLP Ow Shi Jack of RHT Law LLP
Singapore Senior PGA LLP	Defendant	Limited Liability Partnership	Judgment for Defendant	Won	Wun Rizwi of RHT Law LLP Ow Shi Jack of RHT Law LLP

3. Judges

Judge Name	Title	Delivered Judgment
Tan Lee Meng	Judge	Yes

4. Counsels

Counsel Name	Organization
Tan Tee Jim	Lee & Lee
Jeremiah Chew	Lee & Lee
Wun Rizwi	RHT Law LLP
Ow Shi Jack	RHT Law LLP

4. Facts

The plaintiff is a non-profit golfing association registered in 1973.
Mr. Chen, a professional golfer, was a member of the plaintiff but resigned in 2008.
In 2010, Mr. Chen registered 'Singapore Senior PGA LLP'.
The plaintiff claimed the defendants' use of the name 'Singapore Senior PGA LLP' constituted passing off.
The plaintiff did not have a separate category for senior professional golfers before the 3rd defendant was set up.
The defendants registered trademarks for 'Singapore Senior PGA'.
The plaintiff did not oppose the registration of the trademarks.

5. Formal Citations

The Singapore Professional Golfers’ Association v Chen Eng Waye and others, Suit No 290 of 2011, [2012] SGHC 113

6. Timeline

Date	Event
1973-01-01	Plaintiff registered under the Societies Act.
1999-09-01	Mr. Chen certified as a teaching professional.
2007-07-12	Mr. Chen suspended by the plaintiff.
2007-12-10	Mr. Chen terminated his membership with the plaintiff.
2008-01-31	Plaintiff accepted Mr. Chen's resignation.
2010-11-25	Singapore Senior PGA LLP registered as a limited partnership.
2011-01-01	Singapore Senior PGA LLP advertised Senior Pro-test.
2011-02-01	Plaintiff announced a new test for senior professionals.
2011-03-01	Plaintiff's solicitors issued a cease-and-desist letter to the defendants.
2011-03-21	Defendants' solicitors replied to the cease-and-desist letter.
2011-03-01	Defendants cancelled the Senior Pro-test.
2011-04-04	Singapore Senior PGA LLP trademarks registered.
2011-04-25	Plaintiff instituted action against the defendants for passing off.
2012-05-24	Judgment reserved.

7. Legal Issues

Passing Off
- Outcome: The court found that the plaintiff failed to prove misrepresentation, a necessary element for a passing off claim.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage
Descriptive Name Distinctiveness
- Outcome: The court held that the plaintiff's name was descriptive and had not acquired a secondary meaning to make it distinctive.
- Category: Substantive
- Sub-Issues:
  - Secondary Meaning
  - Inherent Distinctiveness

8. Remedies Sought

Injunction
Mandatory Injunction
Delivery-up or destruction of materials
Inquiry as to damages or account of profits

9. Cause of Actions

Passing Off

10. Practice Areas

Intellectual Property Litigation
Commercial Litigation

11. Industries

Sports
Recreation

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Reckitt & Colman Products Ltd v Borden Inc	N/A	Yes	[1990] 1 WLR 491	N/A	Cited for the classical trinity test for passing off: goodwill, misrepresentation, and damage.
Star Industrial Company Limited v Yap Kwee Kor	N/A	Yes	[1974-1976] SLR(R) 581	Singapore	Cited to explain 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 Limited	N/A	Yes	[1901] 1 AC 217	N/A	Cited for the definition of goodwill as the benefit and advantage of the good name, reputation, and connection of a business.
Novelty Pte Ltd v Amanresorts Ltd	Court of Appeal	Yes	[2009] 3 SLR(R) 216	Singapore	Cited for the principle that goodwill is the bedrock of the tort of passing off and must be properly defined.
CDL Hotels International Ltd v Pontiac Marina Pte Ltd	N/A	Yes	[1998] 1 SLR(R) 975	Singapore	Cited for the principle that parties in a passing off action need not be in mutual competition.
Annabel’s (Berkeley Square) Limited v G Schock	N/A	Yes	[1972] RPC 838	N/A	Cited as an example where a well-known London club obtained an injunction against an escort agency trading under the same name.
Lego System Aktieselskab v Lego M Lemelstrich Ltd	N/A	Yes	[1983] 9 FSR 155	N/A	Cited as an example of a highly distinctive name being protected.
Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd	N/A	Yes	(1946) 63 RPC 39	N/A	Cited for the principle that slight differences between names may suffice to defeat a claim of passing off when descriptive words are used.
Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd (trading as ONE.99 SHOP)	Court of Appeal	Yes	[2000] 1 SLR(R) 687	Singapore	Cited for the principle that a name or mark which is prima facie descriptive will only be protected if it has acquired a secondary meaning.
Frank Reddaway and Frank Reddaway & Co Limited v George Banham and George Banham & Co, Limited	N/A	Yes	[1896] 1 AC 199	N/A	Cited for the principle that where the name of a place precedes the name of an article sold, it prima facie means that this is its place of production or manufacture and is descriptive.
Huntley and Palmer v The Reading Biscuit Company Limited	N/A	Yes	(1893) 10 RPC 277	N/A	Cited as an instance where the name of a town or country has become distinctive of a produce.
Cellular Clothing Co Ltd v Maxton and Murray	N/A	Yes	[1899] AC 326	N/A	Cited for the principle that the burden is very great to show that by using a descriptive name, one is affecting to sell the goods of somebody else.
The Chinese Calligraphy Society of Singapore v Khoo Seng Kong	N/A	Yes	[2008] SGHC 121	Singapore	Cited by the plaintiff to buttress its claim of distinctiveness, but distinguished by the court.
British Legion v British Legion Club (Street) Ld	N/A	Yes	(1931) 48 RPC 555	N/A	Cited by the plaintiff, but distinguished by the court due to the distinctiveness of the plaintiff's name in that case.
Society of Accountants and Auditors v Goodway and London Association of Accountants Limited	N/A	Yes	[1907] 1 Ch 489	N/A	Cited by the plaintiff, but distinguished by the court on the ground that the court in that case was dealing not with descriptive words but with fanciful words.
British Medical Association v Marsh	N/A	Yes	(1931) 48 RPC 565	N/A	Cited by the plaintiff, but distinguished on the facts, as the names and initials of the plaintiff and 3rd defendant are not identical in the present case.
Parker-Knoll Limited v Knoll International Limited	N/A	Yes	[1962] RPC 265	N/A	Cited for the principle that the judge’s decision does not depend solely or even primarily on instances of actual deception.
Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd	Court of Appeal	Yes	[2000] 2 SLR(R) 214	Singapore	Cited for the rule that minor differences would suffice to distinguish one name or mark from another in the case of descriptive names or marks.
Mothercare UK Ltd v Penguin Books Ltd	N/A	Yes	[1988] RPC 113	N/A	Cited as an example of largely descriptive words that have been proven to have acquired a secondary meaning.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Societies Act (Cap 311, 1985 Rev Ed)	Singapore
Trade Marks Act (Cap 332, Rev Ed 2005)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Passing Off
Goodwill
Misrepresentation
Descriptive Name
Secondary Meaning
Distinctiveness
Senior Professional Golfers
Societies Act
Trade Marks Act
Injunction

15.2 Keywords

Passing Off
Singapore Senior PGA
Singapore Professional Golfers Association
Trademark
Goodwill
Misrepresentation

17. Areas of Law

Area Name	Relevance Score
Passing Off	95
Trademarks	60
Company Law	20
Contract Law	10

16. Subjects

Intellectual Property
Passing Off
Trademark Law