Singapore Professional Golfers’ Association v Chen Eng Waye: Passing Off & Trademark Infringement

The Singapore Professional Golfers’ Association (“SPGA”) appealed against the High Court's decision to dismiss its passing off claim against Chen Eng Waye and others (“Respondents”). The SPGA alleged that the Respondents' use of the name “Singapore Senior PGA LLP” (“SSPGA”) and its initials infringed on the SPGA's goodwill. The Court of Appeal allowed the appeal in part, finding the 1st and 3rd Respondents liable for passing off, holding that the Respondents' name and initials were deceptively similar to the Appellant's, creating a likelihood of confusion among the public. The appeal against the 2nd Respondent was dismissed.

1. Case Overview

1.1 Court

Court of Appeal

1.2 Outcome

Appeal Allowed in Part

1.3 Case Type

Civil

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

The Singapore Court of Appeal allowed the appeal, finding the respondent liable for passing off due to the similarity of names and activities.

1.7 Decision Date

19 February 2013

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
The Singapore Professional Golfers' Association	Appellant	Association	Appeal Allowed in Part	Partial	Tan Tee Jim, Jeremiah Chew, Joel Cheang
Chen Eng Waye	Respondent	Individual	Appeal Allowed in Part	Lost	Wun Rizwi, Ow Shi Jack, Sim Shi Qiang
Chen Xiangyi Roy	Respondent	Individual	Appeal Dismissed	Won	Wun Rizwi, Ow Shi Jack, Sim Shi Qiang
Singapore Senior PGA LLP	Respondent	Limited Liability Partnership	Appeal Allowed in Part	Lost	Wun Rizwi, Ow Shi Jack, Sim Shi Qiang

3. Judges

Judge Name	Title	Delivered Judgment
Andrew Phang Boon Leong	Justice of the Court of Appeal	Yes
V K Rajah	Justice of the Court of Appeal	Yes
Sundaresh Menon	Chief Justice	Yes

4. Counsels

Counsel Name	Organization
Tan Tee Jim	Lee & Lee
Jeremiah Chew	Lee & Lee
Joel Cheang	Lee & Lee
Wun Rizwi	RHT Law Taylor Wessing LLP
Ow Shi Jack	RHT Law Taylor Wessing LLP
Sim Shi Qiang	RHT Law Taylor Wessing LLP

4. Facts

The Singapore Professional Golfers’ Association (SPGA) is a non-profit golfing association registered in Singapore.
Chen Eng Waye was a member of the SPGA but resigned in 2008.
Chen Eng Waye and his son, Chen Xiangyi Roy, formed Singapore Senior PGA LLP (SSPGA).
SSPGA's activities include organizing golf tournaments and golf-related activities.
SPGA claimed SSPGA's name and initials were similar, leading to passing off.
SSPGA registered the mark “Singapore Senior PGA” and its logos on the Singapore trade mark register.
SPGA argued SSPGA's actions caused confusion and potential loss of sponsorships and income.

5. Formal Citations

The Singapore Professional Golfers’ Association v Chen Eng Waye and others, Civil Appeal No 72 of 2012, [2013] SGCA 18

6. Timeline

Date	Event
1973-01-01	Singapore Professional Golfers’ Association registered under the Societies Act.
2007-07-12	Chen Eng Waye suspended from SPGA membership for one year.
2007-12-10	Chen Eng Waye informed SPGA of his wish to terminate his membership.
2008-01-31	SPGA accepted Chen Eng Waye's resignation.
2010-11-25	Chen Eng Waye and Chen Xiangyi Roy registered Singapore Senior PGA LLP.
2011-01-01	Singapore Senior PGA LLP advertised a Senior Professional Qualifying Test.
2011-02-01	SPGA announced a test for golfers aged 50 and above.
2011-03-01	SPGA issued a cease-and-desist letter to the Respondents.
2011-03-21	Respondents' solicitors responded to the cease-and-desist letter.
2011-04-04	Singapore Senior PGA LLP registered the mark “Singapore Senior PGA” and its logos.
2011-04-25	SPGA commenced Suit 290 in the High Court.
2012-01-01	High Court judge dismissed the action.
2013-02-20	Court of Appeal delivered its judgment.

7. Legal Issues

Passing Off
- Outcome: The Court of Appeal found the 1st and 3rd Respondents liable for passing off, holding that the Respondents' name and initials were deceptively similar to the Appellant's, creating a likelihood of confusion among the public.
- Category: Substantive
- Sub-Issues:
  - Misrepresentation
  - Goodwill
  - Likelihood of Confusion
  - Damage to Goodwill
- Related Cases:
  - [2012] 3 SLR 699
  - [2010] 1 SLR 512
  - [1998] 1 SLR(R) 975
  - [1990] WLR 491
Personal Liability of Partners in a Limited Liability Partnership
- Outcome: The Court of Appeal held that the 2nd Respondent was not personally liable for the tort of passing off merely by virtue of being a partner of the 3rd Respondent, but the 1st Respondent was personally liable for his own wrongful acts.
- Category: Substantive

8. Remedies Sought

Injunction
Damages
Costs

9. Cause of Actions

Passing Off

10. Practice Areas

Commercial Litigation
Intellectual Property Litigation

11. Industries

Sports
Golf

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
The Singapore Professional Golfers’ Association v Chen Eng Waye and others	High Court	Yes	[2012] 3 SLR 699	Singapore	The judgment being appealed from.
Mobil Petroleum Co, Inc v Hyundai Mobis	Court of Appeal	Yes	[2010] 1 SLR 512	Singapore	Cited for the principle that the tortious acts must deceive the relevant segment of the public, leading them to think that the respondents’ activities were either those of the appellant or were in some way connected with them.
CDL Hotels International Ltd v Pontiac Marina Pte Ltd	Court of Appeal	Yes	[1998] 1 SLR(R) 975	Singapore	Cited for the principle that the tortious acts must deceive the relevant segment of the public, leading them to think that the respondents’ activities were either those of the appellant or were in some way connected with them; also cited to distinguish goodwill from reputation.
Reckitt & Colman Products Ltd v Borden Inc and Others	House of Lords	Yes	[1990] WLR 491	England and Wales	Cited for the three basic elements of passing off: goodwill, misrepresentation, and damage.
The Commissioners of Inland Revenue v Muller & Co’s Margarine, Limited	House of Lords	Yes	[1901] AC 217	England and Wales	Cited for the definition of goodwill as the attractive force which brings in custom.
The Chinese Calligraphy Society of Singapore v Khoo Seng Kong	High Court	Yes	[2008] SGHC 121	Singapore	Cited as an example of a passing off claim where the claimant was an association consisting of members bound by a common interest.
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 distinctiveness is more easily acquired for fancy words and that a descriptive name may become distinctive when it acquires a secondary meaning.
Office Cleaning Services, Ltd v Westminster Office Cleaning Association	Court of Appeal	Yes	[1944] 2 All ER 269	England and Wales	Cited as an example of a fancy word.
Frank Reddaway and Frank Reddaway & Co, Limited v George Banham and George Banham & Co, Limited	House of Lords	Yes	[1896] 1 AC 199	England and Wales	Cited as an example of a descriptive term acquiring a secondary meaning.
British Telecommunications plc and Another v One in a Million Ltd and Others	Court of Appeal	Yes	[1999] 1 WLR 903	England and Wales	Cited for the principle that if the intention of the defendant is to appropriate the goodwill of another, the court can infer that it will happen.
Novelty Pte Ltd v Amanresorts Ltd and another	Court of Appeal	Yes	[2009] 3 SLR(R) 216	Singapore	Cited for the principle that misrepresentation must give rise to actual confusion or a likelihood of confusion before it would be actionable under the tort of passing off.
Erven Warnink Besloten Vennootschap and Another v J Townend & Sons (Hull) Ltd and Another	House of Lords	Yes	[1979] 1 AC 731	England and Wales	Cited for the principle that deception is at the heart of the tort of passing off.
British Medical Association v Marsh	High Court	Yes	(1931) 48 RPC 565	England and Wales	Cited for the determination of the relevant segment of the public in passing off cases involving associations.
British Association of Aesthetic Plastic Surgeons v Cambright Ltd and Others	High Court	Yes	[1987] 1 RPC 549	England and Wales	Cited for the determination of the relevant segment of the public in passing off cases involving associations.
Society of Accountants and Auditors v Goodway and London Association of Accountants, Limited	High Court	Yes	[1907] 1 Ch 489	England and Wales	Cited for the determination of the relevant segment of the public in passing off cases involving associations.
The British Diabetic Association v The Diabetic Society and Others	High Court	Yes	[1996] 1 FSR 1	England and Wales	Cited for the principle that the relevant segment of the public includes patients, care-givers, medical practitioners, and donors.
Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd	High Court	Yes	[1991] 1 SLR(R) 903	Singapore	Cited for the principle that regard must be had to the imperfect recollection of the relevant segment of the public in assessing the likelihood of confusion.
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA	Court of Appeal	Yes	[2013] 1 SLR 531	Singapore	Cited for the principle that regard must be had to the imperfect recollection of the relevant segment of the public in assessing the likelihood of confusion.
British Legion v British Legion Club (Street) Ld	High Court	Yes	(1931) 48 RPC 555	England and Wales	Cited for the principle that damage can arise if the defendant falls into legal or financial difficulties, affecting the repute of the claimant association.
Office Cleaning Services, Ld v Westminster Window and General Cleaners, Ld	Court of Appeal	Yes	(1946) 63 RPC 39	England and Wales	Distinguished from the present case regarding the similarity of the words 'Society' and 'Association'.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Societies Act (Cap 262, 1970 Rev Ed)	Singapore
Limited Liability Partnerships Act (Cap 163A, 2006 Rev Ed)	Singapore
Limited Liability Partnerships Act (Cap 163A, 2006 Rev Ed) s 4(1)	Singapore
Limited Liability Partnerships Act (Cap 163A, 2006 Rev Ed) s 8	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Passing Off
Goodwill
Misrepresentation
Likelihood of Confusion
Singapore Professional Golfers’ Association
Singapore Senior PGA LLP
SPGA
SSPGA
Limited Liability Partnership
Tort
Senior Golfers
Professional Golfers

15.2 Keywords

Passing Off
Goodwill
Misrepresentation
Likelihood of Confusion
Singapore Professional Golfers’ Association
Singapore Senior PGA LLP
SPGA
SSPGA
Golf
Trademark
Singapore

16. Subjects

Tort
Passing Off
Intellectual Property
Trademark
Partnership Law

17. Areas of Law

Tort Law
Passing Off
Intellectual Property Law
Trademark Law