Amanresorts vs Novelty

In Novelty Pte Ltd v Amanresorts Ltd [2009] SGCA 13, a landmark decision delivered on 31 March 2009, the Singapore Court of Appeal considered whether a modest cluster housing project in Singapore should be allowed to use the same name as an exclusive luxury resort in Bali.
 
Novelty Pte Ltd was a local property developer who had successfully obtained authorization from the Street and Building Names Board to use the name “Amanusa” for its cluster housing project. The Respondents (“Amanresorts”) were members of the Amanresorts group, known for its chain of ultra-luxurious resorts around the world. Amanusa was the name of one of its resorts in Bali. Amanresorts had sought to restrain Novelty’s use of the word “Amanusa” by alleging passing-off and infringement of a well-known trade mark (pursuant to Section 55(3)(a) of the Trade Marks Act).

On appeal, the Court of Appeal held that Amanresorts had established the “classic trinity of passing off” - namely, goodwill, misrepresentation and damage. The court recognized that Amanresorts had goodwill in the word “Aman” as well as in the names of Amanresorts’ various resorts and hotels (the “Aman” names). This goodwill existed among extremely well heeled individuals who formed Amanresorts’ core clientele, 'once-in-a-lifetime' guests and visitors who aspired to stay at the resorts. These persons would have been exposed to and likely confused by Novelty’s use of “Amanusa”, which constituted a misrepresentation that its project had the same source as the Respondents’ resorts or that the two were somehow connected. As there was a likelihood of damage in the form of (1) tarnishment of Amanresorts’ goodwill due to the difference in quality of the project and the Respondents’ resorts, and (2) restriction of Amanresorts’ expansion into the residential accommodation business in Singapore, the court upheld the passing off claim.

The court went on to examine Amanresorts’ alternative claim under Section 55(3)(a) of the Trade Marks Act, and took the view that marks which were merely “well known in Singapore” (i.e. recognized or known by any relevant sector of the public in Singapore) should not be protected against the use of similar or identical marks on dissimilar goods or services where such use did not give rise to confusion. Only marks which were “well known to the public at large in Singapore” would be entitled to protection against the use of similar or identical marks on dissimilar goods or services where there was no likelihood of confusion.

Further, the court held that the tests to be adopted for the purposes of the “connection” and “likely to damage the [claimant’s] interests” requirements in Section 55(3)(a) of the Trade Marks Act were substantively similar to those relating to misrepresentation and damage under passing off, with one important distinction: the passing off tests concern a claimant’s goodwill whereas the tests under Section 55(3)(a) concern the claimant’s interests.

Based on its findings under the passing off claim, the court found that the “Aman” names were well known in Singapore and that the claim under Section 55(3)(a) had been made out.

By Ang Kai Hsiang
Associate
Intellectual Property & Technology Group
ATMD Bird & Bird LLP