Developer fails in ‘Amanusa’ appeal

Source : Business Times - 15 Apr 2009

THE Court of Appeal has dismissed an appeal by a developer that called its Yio Chu Kang condominium Amanusa - the name of an exclusive Bali resort owned by Amanresorts.

The 124-page judgement, delivered last month by Justice VK Rajah, is said to be the first time that Singapore has recognised a ‘well-known mark’ since provisions were made in 2004.

‘This case shows one cannot simply use a well-known name or mark, even though the name or mark is not registered in Singapore as a trade mark or company name,’ said Alban Kang, of Alban Tay Mahtani & de Silva, who represented Amanresorts.

Amanresorts sued local property developer Novelty over its use of the Amanusa name and won in the High Court in 2007.

The judge found Novelty’s action was likely to damage the goodwill of Amanresorts. Novelty appealed to the Court of Appeal.

Setting out the case, Justice Rajah said that Amanresorts, despite not having registered Amanusa for protection here, had succeeded in its claim of ‘passing off’ and its claim for protection from infringement under the Trade Marks Act.

The judge clarified the ‘crucial and difficult area’ of whether Section 55(3)(a) of the 2004 Trade Marks Act requires a plaintiff who is claiming infringement to show that besides damage, there may have been confusion between the plaintiff’s goods and services and the defendant’s.

Justice Rajah said that the section requires that a likelihood of confusion be shown because of ‘the widespread availability’ of trade marks ‘well-known in Singapore’.

He said that a trade mark need only be known to any relevant sector of the public here to be regarded as well-known in Singapore - a fairly easy criterion to fulfil, for instance, with niche products.

‘We do not think that trade marks which are merely well-known in Singapore should be given protection against the use of a similar or identical mark on dissimilar goods or services where such use does not give rise to confusion,’ he said.

He made the distinction between such marks and trade marks which have the ‘coveted status’ of being ‘well-known to the public at large in Singapore’, for which action can be brought to protect the trade mark even if there is no likelihood of confusion - for instance, when the products offered are very different.

‘These trade marks, which form a rare and exclusive class, are entitled to protection from use (by others) on dissimilar goods or services even in the absence of a likelihood of confusion,’ he said.

Novelty’s appeal was dismissed with costs.

Senior Counsel Tan Tee Jim, Christopher de Souza and Lim Ke Xiu of Lee & Lee were the lawyers for Novelty.