An appeal of a developer, which named its Yio Chu Kang condo Amanusa, has been dismissed by the Court of Appeal. The name given is similar to that of Amanresorts-owned exclusive resort in Bali.
The judgement, consisting of 124 pages, was delivered by Justice VK Rajah last month. It is considered the first time that a ‘well-known mark’ has been recognised by Singapore since it made provisions 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 Amanresorts representative Alban Kang from Alban Tay Mahtani & de Silva.
Amanresorts sued Novelty, the local property developer, for the use of their name and won the case in 2007.
The action of Novelty has done damage to Amanresorts, according to the judge. In return, Novelty made an appeal to the court.
Handling the case, Judge Rajah said Amanresorts had been successful in its ‘passing off’ claim and its claim for infringement protection under the Marks Act, despite not registering Amanusa for protection.
Judge Rajah clarified whether the Section 55(3) (a) of the Trade Marks Act in 2004 requires a complainant, who claims for infringement to show that aside from the damage done, there may be confusion between the complainant’s services and goods and that of the defendant’s.
The section needs a possibility of confusion to be shown due to the trade marks’ ‘widespread availability’ in Singapore, said Judge Rajah.
He said a trade mark only needs to be known to the public’s relevant sectors to become renowned in Singapore – an easy criterion to complete.
”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”, said Rajah.
He distinguished the difference of such marks from trade marks having the ‘coveted status’, which is being ‘well-known to the public at large in Singapore’, with which a protection can be applied even if there is no possibility of confusion – for example, when products that are offered are 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 added.
Senior Counsel Christopher de Souza, Lim Ke Xiu, and Tan Tee Jim of Lee & Lee were Novelty’s lawyers.
The appeal of Novelty was dismissed with charges.