First decision recognizing mark as well known issued by High Court

In Amanresorts Ltd v Novelty Pte Ltd (Case 276 of 2006, May 11 2007), the High Court of Singapore has, for the first time, recognized a trademark as being well known in Singapore.

The plaintiffs, Amanresorts Limited and Amanresorts International Pte Ltd, are members of the Amanresorts Group, known for its chain of exclusive boutique resorts around the world. The defendant, Novelty Pte Ltd, a property developer, is part of the Novelty Group of companies, which has dealings in the hotel and resort business as well as in the development and sale of residential properties.

The plaintiffs brought the claim in relation to the defendant's use of the name Amanusa for a residential project, as it is identical to the name of the plaintiffs' Amanusa resort in Bali, and sought declaratory and injunctive relief under provisions in the Trademarks Act, which allow for recognition of a trademark as a well-known mark. The plaintiffs also alleged that the defendant's use of the Amanusa name for its residential project constituted the tort of passing off, as it would lead people to think that the residential project was somehow associated with or connected to the plaintiffs.

The court accepted that the plaintiffs enjoyed goodwill and reputation in Singapore, and that the use of the name Amanusa was a misrepresentation which would give the impression that the defendant's residential project was somehow related or connected to the plaintiffs. Although the court found that no damage had been suffered thus far, given that no buyers had purchased units in the defendant's residential project thinking that it was in some way related to the plaintiffs, there was a likelihood of damage in the form of intangible loss caused by the process of dilution. Such damage would result from the Amanusa name being associated with residential projects that were not of the same standard of luxury, class and quality of upkeep as the plaintiffs' resort, causing the Amanusa name to lose its uniqueness or "evoke suppressed laughter".

The court also accepted that the defendant did not have a fraudulent intention to deceive, but was instead "inspired" by the plaintiffs' Amanusa resort in Bali. However, the court rejected the defendant's evidence that it had come up with the project's name by the creative combination of two words, as it was:

"much too coincidental that the defendant chanced on the same two foreign words and decided to fuse them in exactly the same way that the plaintiffs did some 15 years earlier."

The court also held that the plaintiffs' trademarks, including the AMAN and AMANUSA trademarks, are well-known trademarks in Singapore. This is the first time the Singapore courts have declared a trademark to be well known in Singapore. The court also granted an injunction, pursuant to Section 55(3)(a) of the Trademarks Act 1998, to restrain the defendant from using the name Amanusa in relation to any form of accommodation.

Ang Kai Hsiang, Alban Tay Mahtani & De Silva, Singapore