Court of Appeal · Decided 31 March 2009

Novelty Pte Ltd v Amanresorts Ltd and Another

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[2009] SGCA 13Case no. CA 56/2007

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Laws this judgment relies on

Interpretation Act 1965

Grounds of decision

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Introduction
[1] Should a modest cluster housing project in Yio Chu Kang be allowed to share the same name as an ultra-exclusive luxury resort in Bali where that name is not a registered trade mark in Singapore? In the present appeal against the decision of the High Court judge (“the Judge”) in Amanresorts Limited v Novelty Pte Ltd [2008] 2 SLR 32 (“the Judgment”), we were asked to consider this question from two angles: first, at common law under the tort of passing off, and, second, under s 55 of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the current TMA”), which provides for the protection of well-known trade marks. To facilitate the reading of this judgment, we set out below the outline of its contents:
Introduction...................................................................................................
1
The facts........................................................................................................
3
The respondents...................................................................................
3
The Respondents’ resort business................................................
4
The Respondents’ residential accommodation business.................
6
Other products and services offered by the Respondents..............
8
The Respondents’ marketing-cum-publicity efforts and the exposure received........................................................................
8
The Respondents’ trade marks....................................................
11
The appellant........................................................................................
12
The dispute between the parties.............................................................
15
The decision in the court below........................................................................
18
The passing off claim.......................................................................................
19
Goodwill...............................................................................................
20
The nature of goodwill.................................................................
21
Whether goodwill exists in the “Aman” names...............................
21
(1) The specific sector of the public to be considered....................
22
(2) Whether the “Aman” names have an attractive force for custom among the relevant sector of the public..............................
32
(3) The type of business in respect of which goodwill in the “Aman” names exists....................................................................
35
(4) Our conclusion on the extent of the goodwill attached to the “Aman” names............................................................................
36
The “foreign business problem”....................................................
36
Misrepresentation..................................................................................
37
The misrepresentation in the present case......................................
38
(1) The content of the misrepresentation........................................
38
(2) The target audience of the misrepresentation............................
38
(3) Whether the misrepresentation resulted in confusion.................
41
Damage.................................................................................................
48
Analysis of the heads of damage claimed by the Respondents........
49
(1) Inferiority of the Appellant’s residential accommodation...........
49
(2) Likelihood of damage should the Appellant get into financial, legal or other trouble....................................................................
51
(3) Loss of licensing opportunity or licensing income, and misappropriation of goodwill and reputation..................................
54
(4) Restriction on the Respondents’ expansion into the residential real estate business.......................................................................
58
(5) Loss of exclusivity and erosion of the distinctiveness of the “Aman” names as well as dilution of the goodwill attached to these names.................................................................................
61
Our conclusion on the passing off claim..................................................
66
The claim under section 55 of the current TMA: Infringement of a well-known trade mark......................................................................................................
67
What is a “well known trade mark”?......................................................
67
The protection afforded by section 55(3)(a) of the current TMA.............
79
The meaning of “use … in the course of trade … of any trade mark” in section 55(3)..................................................................
79
The meaning of “would indicate a connection between those goods or services and the proprietor” in section 55(3)(a)...............
81
(1) International developments.....................................................
84
(2) The US law of dilution............................................................
90
(3) The EU Directive....................................................................
96
(4) The Joint Recommendation.....................................................
102
(5) The current TMA...................................................................
109
(6) The position in Australia.........................................................
119
(7) Our view on whether confusion is required under section 55(3)(a) of the current TMA............................................
122
Our decision on the Respondents’ claim for trade mark infringement........
122
Conclusion......................................................................................................
123
The facts
The respondents
[2] The first respondent, Amanresorts Ltd (“the First Respondent”), was incorporated in Hong Kong in 1981 while the second respondent, Amanresorts International Pte Ltd (“the Second Respondent”), was incorporated in Singapore in 1999. The First Respondent and the Second Respondent (referred to collectively as “the Respondents”) operate under the umbrella of the Amanresorts group of companies (“the Amanresorts Group”), which comprises over 80 companies, all of which are either wholly or partially-owned subsidiaries of Silverlink Holdings Limited, a company incorporated in the British Virgin Islands. The Amanresorts Group was founded in the mid-1980s by Adrian Zecha, a Javanese-born Dutch national and businessman.
The Respondents’ resort business
[3] According to the Respondents’ main witness, Mr Gregory Sirois (“Mr Sirois”), a director of the Respondents:[note: 1]
[4] The first of the Respondents’ resorts was Amanpuri, which opened in Phuket, Thailand, in 1988. Since then, the Respondents have developed a string of 15 other resorts across the world, all with the prefix “Aman” in their names, namely: Amandari, Amankila, Amanusa, Amanwana, Amanpulo, Amanjiwo, Amangani, Amanjena, Amansara, Aman-i-Khás, Amankora, Amanbagh, Amangalla, Amanwella and Amanyara. The Respondents’ resorts (which we shall also refer to as “Aman resorts”) can be found in many different countries such as India, the US, Morocco, Cambodia, Sri Lanka and the Philippines. There are even resorts in more exotic locations such as the misty Himalayan kingdom of Bhutan and the Turks and Caicos Islands in the sunny Caribbean. Indonesia plays host to five Aman resorts (one on Moyo Island, one at Borobudur and three in Bali). The Respondents also own two hotels in France and French Polynesia named Le Mélézin and Hotel Bora Bora respectively.
[5] It is undisputed that quality and exclusivity are the signatures of the Aman resorts. This is evinced by the numerous international awards showered upon the resorts as well as the high rankings which they have consistently garnered in prestigious guides such as The Gallivanter’s Guide (published in the UK) and Zagat (published in the US). One magazine gushed that the Aman resorts were “the most exclusive group of intimate resorts and hotels in the world”[note: 2] while an Australian newspaper proclaimed the resorts to be “the cocoon of luxury”.[note: 3] Despite the growing number of Aman resorts, the Respondents have chosen to keep the supply of rooms at these resorts very small. There are only 626 rooms worldwide between the 18 establishments run by the Respondents, not many more than the number of rooms usually found in a single large five-star hotel.
[6] As befitting their high standards, the Aman resorts lay claim to be the playgrounds of the rich and famous – albeit with quiet understatement and elegant restraint. The following extracts from various reviews raving about the resorts illustrate this point:[note: 4]
People from this “rarefied world of the luxury retreat”,[note: 5] as one UK newspaper enthused, often become repeat visitors, earning the affectionate soubriquet, “Amanjunkies”.[note: 6] According to another magazine, the Respondents can boast of “more than 130,000 self-proclaimed ‘Amanjunkies’”.[note: 7] Such devotees are not deterred by the stratospheric room rates charged at the Respondents’ resorts (a night’s stay at Amanyara in the Turks and Caicos Islands, for instance, can cost as much as US$10,900, excluding a 10% service charge and 10% government tax).
[7] One particular Aman resort is of especial interest to us. This is Amanusa, which opened in Bali in 1992 (“the Amanusa Bali”). It is the latest of the Respondents’ three resorts on that island. Room rates at the Amanusa Bali range between US$700 and US$1,500 per night, excluding taxes. The word “aman” means “peace” or “peaceful” in Bahasa Indonesia, and the word “nusa” means “island” or “isle”. The phrase “peaceful island” in Bahasa Indonesia is “nusa aman”, but the Respondents deliberately created an ungrammatical portmanteau word, “Amanusa”, by inverting the order of the two component words (viz, by placing “aman” before “nusa”), combining the two words and dropping one of the ‘n’s.
The Respondents’ residential accommodation business
[8] Apart from the resort business, the Respondents are also engaged in the residential accommodation business. They claim that they have received many requests from real estate developers for licences to use the word “Aman” as well as other words bearing the prefix “Aman” for real estate projects in return for a “branding fee”. Where the Respondents agree to grant such a licence, they typically charge a fee of 10% of the selling price of a unit in the project concerned. As part of the agreement, the Respondents also assume responsibility for the design of the development as well as for its management upon completion of construction. Such “branding agreements” have been entered into with respect to various residential projects in the Turks and Caicos Islands, Arizona, New York, Mexico and Greece. The development in Arizona comprises 31 residential units, while the one in New York consists of a hotel-cum-condominium complex. It is also claimed that the Respondents will be developing residential projects, to be owned exclusively by them, in New Delhi, Croatia and Turkey, all bearing the prefix “Aman”.
[9] In addition, the Respondents develop and market long-term residential accommodation known as “Aman Villas”. The Respondents’ first real estate development of this nature consisted of 31 Aman Villas at Amanpuri sometime around 1990. Since then, the Respondents have, together with various partners, developed and marketed Aman Villas at Amanjena, Amangani, Amanpulo, Amanyara and Amandari as well. According to Mr Sirois:[note: 8]
The Respondents claim that they may in future proceed to develop Aman Villas adjacent to the Amanusa Bali as their joint venture partner for the resort has acquired the adjacent land specifically for the development of such villas.
Other products and services offered by the Respondents
[10] The Respondents have associated luxury goods and services with the name “Aman”. Mr Sirois stated that:[note: 9]
[11] Mr Sirois also pointed out that:[note: 10]
The Respondents’ marketing-cum-publicity efforts and the exposure received
[12] The Respondents’ business is a successful one. Worldwide sales from the goods and services offered by the Aman resorts as well as from other accommodation related to the Respondents have risen from US$39,480,377 in 1995 to US$86,179,826 in 2006.
[13] There are no Aman resorts or residential accommodation bearing the name “Aman” in Singapore. However, the Amanresorts Group shifted its corporate headquarters from Hong Kong to Singapore in 1999 with the setting up of the Second Respondent. Since 2001, the Respondents’ international corporate office and international reservations office have been located in Singapore. The latter handles approximately 30% to 40% of global reservations and inquiries which are not directed specifically to individual Aman resorts. In 2006, revenue from the Respondents’ international reservations office amounted to US$31,000,000 derived from room reservations, food and beverage services as well as spa services.
[14] Between 1995 and 2005, more than 300,000 Singaporeans visited Bali, where the Amanusa Bali and two other Aman resorts are located. Of these Singaporeans, some 1,382 visited the Amanusa Bali between 1995 and 2005. During the same period, some travel agents in Singapore (as opposed to the Respondents themselves) also processed reservations for the various Aman resorts.
[15] In 2006, the Respondents spent US$3,399,679 on promoting and marketing their goods and services globally. Over the years, they have also promoted their resorts regularly to travel agents and media personnel worldwide, participated in trade shows, sponsored prizes in charitable events as well as collaborated with airlines and credit card companies to advertise the resorts to individuals with high net worth.
[16] The Respondents have been distributing newsletters at their resorts, including the Amanusa Bali, since 1994. These newsletters are distributed to actual customers and potential customers of the resorts who have signed up to be on the Respondents’ mailing list. One such newsletter, Amanews, is sent to over 122,000 recipients worldwide (including over 2,700 in Singapore) every quarter. The same group of recipients also receive via e-mail a newsletter, Aman Express, every two to three weeks. In addition, the Respondents send a newsletter, Aman Advisory, to travel agents, including some in Singapore, at the same interval (ie, every two to three weeks).
[17] Brochures for the Respondents’ resorts are available in Singapore at the Respondents’ international corporate office and international reservations office. These brochures are also distributed to travel agents at trade shows and to guests at business or charitable functions.
[18] One particular marketing strategy which the Respondents have employed is the targeted advertisement of their goods and services to two groups of American Express card holders – namely, holders of American Express’s “Platinum” card (“American Express Platinum members”) and holders of American Express’s “Centurion” card (“American Express Centurion members”) – via the “Fine Hotels and Resorts Programme” since 1988. A media pack from American Express describes such card holders in the following terms:[note: 11]
There are approximately 900 American Express Centurion members and 4,200 American Express Platinum members in Singapore. The Respondents have similar marketing arrangements with The Hongkong and Shanghai Banking Corporation for holders of its “Platinum” card.
[19] As mentioned earlier (at [5]–[6] above), the Respondents’ resorts have been featured in various newspapers and periodicals around the world. These include international newspapers and periodicals such as The New York Times, Far Eastern Economic Review, Financial Times, Condé Nast Traveller, The Sydney Morning Herald, etc. Some local publications also contain references to the resorts: The Straits Times, Her World and Female, for instance.
[20] Finally, the Respondents maintain a stable of websites under the name “Aman” which are hosted in Singapore (“the Respondents’ ‘Aman’ websites”). The website, <http://www.amanresorts.com>, has been registered since 1996. Other websites are based on the names of the respective Aman resorts such as the website, <http://www.amanusa.com/amanusa/home.aspx>, for the Amanusa Bali. According to the Respondents, in respect of searches for the word “Amanusa” done via the search engines, Google and Yahoo!, 28 out of the top 30 search results and all of the top 30 search results respectively contain references to this particular resort.
The Respondents’ trade marks
The appellant
[22] The appellant, Novelty Pte Ltd (“the Appellant”), was incorporated on 3 May 2005. It is a subsidiary of Novelty Dept Store Pte Ltd, which was incorporated on 27 September 1995. The two are part of the larger Novelty group of companies. The group is involved in the development of residential properties in Singapore, in particular, condominiums targeted at Singapore citizens and residents wishing to own private housing or to upgrade from public housing. According to the Appellant, its developments are successful because of their reasonable prices, their convenient locations as well as the quality finishes and furnishings which the Appellant claims it is well known for. The names of the Appellant’s developments often have a common thematic flavour: eg, the “Taipan” theme was used for the condominiums, The Taipan, Taipan Jade and Taipan Regency; and a “metal” theme was used for the developments, Platinum Edge, Iridium and Vanadium.
[23] In July 2005, the Appellant completed the purchase of a 56,355 sq ft freehold site off Old Yio Chu Kang Road (“the Site”). The Site, a vacant plot of land surrounded by lush greenery, is situated in a quiet residential neighbourhood where established private housing estates such as Teachers’ Estate and Sembawang Hills Estate are located. After the purchase, the Appellant decided with its architect, JGP Architecture (S) Pte Ltd (“JGP”), to build a cluster housing project (“the Project”) comprising 36 three-storey terraced houses, each with a basement car park and a roof garden, at the Site. Various water-based features such as a lap pool and landscaped ponds were to be added to create a peaceful and soothing atmosphere. The Project would also feature modern and high-quality amenities and fittings. The Appellant decided to name the project “Amanusa”.
[24] In the affidavit of evidence-in-chief of Mr Manoj Dharmadas Kalwani (a director of the Appellant) affirmed on 5 March 2007, it was claimed (at para 8) that “JGP suggested the name ‘Amanusa’ (meaning ‘peaceful island’ in Malay) for the [P]roject sometime in August 2005”.[note: 12] At that time, the Appellant did not know of the Respondents’ resorts or the Amanusa Bali. During cross-examination, Mr Chan Sze Chin (“Mr Chan”), the concept architect from JGP, testified that when he and his team were brainstorming for a name for the Project, they sought a name which would be evocative of the peaceful surroundings of the Site. They considered the words “aman” and “sentosa”, which mean “peaceful” in Malay and Bahasa Indonesia respectively, but rejected the latter because of its association with Sentosa Island. The word “nusantara”, meaning “archipelago”, was also considered, but it was perceived as being too long and was thus shortened to “nusa” (meaning “island”) to convey the image of “an oasis and sanctuary” (see the Judgment at [37]). The phrase “aman nusa” was chosen instead of “nusa aman” because the former “rolled off the tongue more easily” (id at [38]). It was also decided that the two words should be combined and one of the ‘n’s dropped for ease of pronunciation. While the brainstorming team had not heard of the Amanusa Bali, Mr Chan admitted that he himself had heard of Amanpuri (the Respondents’ resort in Phuket); he had not, however, foreseen any difficulty with using the name “Amanusa” for the Project as Amanpuri was, in his view, “completely different in many aspects from the [Project]” (ibid). Mr Chan also claimed that he had not checked the name “Amanusa” on the Internet.
[25] On 8 September 2005, the Street and Building Names Board (“the Board”) approved the Appellant’s application for the name “Amanusa” to be used for the Project. This purportedly reinforced the Appellant’s view that the name was appropriate and acceptable because the Board would not have approved a proposed name that was identical or substantially similar to the name of an existing development, whether in Singapore or overseas. For instance, for another project, the Appellant had proposed the name “Twin Waters”, but that name had been rejected because there was an existing resort in Australia known as “Twin Waters”.
[26] The marketing efforts for the Project began in January 2006 via newspapers (eg, The Straits Times), Internet advertisements as well as mailers distributed in Housing Development Board estates at, inter alia, Ang Mo Kio, Hougang and Yishun. A showflat (“the Showflat”) was also constructed to promote the Project. The Project was advertised as a “Balinese-inspired”[note: 13] retreat that included a “water-themed backdrop”.[note: 14] The Appellant’s brochures and advertisements also described the Project as an exclusive “private hideaway”[note: 15] with luxury fittings.
The dispute between the parties
[27] The Respondents first became aware of the Project on 11 February 2006 after coming across advertisements placed in The Straits Times. A letter of demand was sent by the First Respondent’s then solicitors to the Appellant on 14 February 2006 demanding that the latter change the name used for the Project. The Appellant’s then solicitors replied by way of a letter dated 22 February 2006. In that letter, it was stated that the name “Amanusa”, a combination of Malay words meaning “peaceful motherland”, was appropriate for the Project given the quiet surroundings at the Site. The letter also stated that the Appellant had not had any knowledge of the Respondents or their resorts until the receipt of the letter of demand of 14 February 2006. This explanation (viz, that the word “Amanusa” meant “peaceful motherland” in Malay) was repeated in a letter dated 6 March 2006 from the Appellant’s then solicitors to the First Respondent’s then solicitors.
[28] Legal proceedings against the Appellant were commenced on 3 May 2006. The Respondents asserted that they were the owners of the reputation and goodwill attached, both in Singapore and worldwide, to the name “Amanusa” as well as to the rest of the “Aman” names, which were used for (inter alia) hotels, resorts and residential accommodation that were “high-end, top quality, exclusive” (see the Judgment at [17]). It was alleged that the Appellant, by using the name “Amanusa” for the Project, had passed off accommodation which was not the Respondents’, or not associated or connected with the Respondents, as the Respondents’ accommodation. Furthermore, the Respondents claimed, the Appellant had made such use of the name “Amanusa” with the intention of confusing or deceiving members of the public into thinking that the Project was provided by the Respondents or, alternatively, associated or connected with them.
[29] The Respondents later added a claim under s 55 of the current TMA. They asserted that the “Aman” names were well known in Singapore to one or more of the relevant sectors of the public, namely, actual consumers and potential consumers of goods and services provided under the “Aman” names as well as members of the hospitality, travel and/or property development industries. It was argued, relying on s 55(2), s 55(3)(a) and/or s 55(4)(a) of the current TMA, that the Appellant’s use of the name “Amanusa” for the Project was “likely to cause confusion” (see s 55(2)) or, in the alternative, would indicate a connection between the Project and the Respondents and would be likely to damage the Respondents’ interests (see s 55(3)(a)). (Eventually, the Respondents came to rely on only s 55(3)(a) of the current TMA.)
[30] As a result of the First Respondent’s letter of demand, the Appellant issued questionnaires to actual and potential purchasers of units in the Project who visited the Showflat from July 2006 onwards. Some of the questions included:[note: 16]
[31] Fifty-one responses were collected by the Appellant. It appeared from these responses that the location and the design of the Project as well as the amenities which it featured were the main reasons why those who responded to the Appellant’s survey (“the survey participants”) were attracted by the Project; none of them cared if the Project had been called anything else. The name “Amanusa” generally did not mean anything to the survey participants, although some associated it with “peaceful”[note: 17] or “serenity”.[note: 18] Two responses in particular are of note, viz, that the name “sound [sic] like a Thai-spa kind of place”,[note: 19] and that the name was “very Balinese”,[note: 20] evocative of a “top of [the end] – Bali high end resort”.[note: 21]
[32] Subsequently, the Appellant, probably out of caution, apparently told its sales agents not to link the Project with the Amanusa Bali. Further, all purchasers of units in the Project had to sign a declaration form acknowledging and agreeing that their request for an option to purchase and their subsequent exercise of such option did not confer any right in respect of the name “Amanusa”, and that that name did not constitute a consideration influencing their decision to exercise the option to purchase. Sales of units in the Project were initially not very brisk. By 5 March 2007, more than a year after marketing began, only 11 of the 36 units had been sold, unlike some of the Appellant’s other projects which had been sold out within six to eight months of their launch. However, by the time of the trial, only one unit in the Project remained unsold.
[33] In the meantime, the Respondents engaged the services of two private investigators, who visited the Showflat in late March 2007. One of the investigators testified that a sales agent (“Jerry”) said that the name “Amanusa” was “like [the name of] a resort, there is a resort called Amanusa. It is a very famous resort …” (see the Judgment at [21]). Another sales agent (“Jason”) reportedly said that the Project had been named after a very well-known holiday resort, but was unable to say where that famous resort was located (id at [22]). Both Jerry and Jason gave evidence at the trial. Jerry denied making any reference to the Amanusa Bali and claimed that he had only referred to “resort living” (id at [42]), which was the Project’s selling point, while Jason said that he had only remarked that the Project was named after a resort, which he had thought was in some Western country (id at [43]).
[34] By 30 March 2007, the Appellant had substantially changed the contents of its brochures advertising the Project. Some pictures of a thatched roof and a waterspout in the shape of a mythical creature were removed. The word “Balinese” was also omitted. This was the state of affairs when the matter went to trial in April 2007.
The decision in the court below
[35] The Judge held that the Respondents’ passing off claim was made out. However, he declined to find that the Appellant had any fraudulent intention in using the name “Amanusa” (see the Judgment at [4] and [75]). He also held that the claim under s 55(3)(a) of the current TMA had been made out (id at [75]). In the circumstances, the Judge granted a declaration that the “Aman” names were well-known trade marks in Singapore and an injunction restraining the Appellant or anyone acting on its behalf from using those names (in particular, “Amanusa”) in relation to any form of accommodation (ibid). He expressly stated that the injunction was “confined to the [‘Aman’ names] and [did] not extend … to all words which include[d] the prefix ‘Aman’” (ibid). The Appellant was also ordered to stop distributing any material which described the Project as “Amanusa” (see the Judgment at [76]). Finally, concluding that there was only a likelihood of prospective damage rather than immediate damage to the Respondents, the Judge held that there was no need to order an inquiry as to damages or an account of profits (id at [4] and [77]).
The passing off claim
[36] Two pronouncements of the House of Lords are generally considered to be the definitive statements on the requirements of an action for passing off. The first is from Lord Diplock’s speech in Erven Warnink Besloten Vennootschap v Townend & Sons (Hull) Ltd [1979] AC 731 (“the Advocaat case”) at 742, as follows:
The second is a reformulation by Lord Oliver of Aylmerton in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (“the Jif Lemon case”) at 499, as follows (this particular passage was also cited by the Judge at [48] of the Judgment as well as by this court in CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 2 SLR 550 (“the Millenia case”) at [86]):
[37] The above dicta unequivocally articulate three clearly identifiable core concepts which are fundamental to a passing off action, namely, goodwill, misrepresentation and damage. Since the decision of the English Court of Appeal in Consorzio del Prosciutto di Parma v Marks & Spencer Plc [1991] RPC 351, these three elements have been known as the “classical trinity” (at 368, per Nourse LJ) of an action for passing off. We now proceed to examine whether each of these elements has been satisfied by the Respondents in the present case.
Goodwill
[38] Passing off is a tort which protects goodwill and nothing else. Lord Diplock made this clear in Star Industrial Company Limited v Yap Kwee Kor [1976] FSR 256, where he stated (at 269):
As goodwill is the bedrock of this tort, it is unsurprising that one must properly define in each case what the plaintiff’s goodwill consists of in order to determine the boundaries of the protection which the plaintiff can claim. To do this, one must first have a proper understanding of what goodwill is.
The nature of goodwill
[39] Like that other great force of attraction which we call “love”, “goodwill” is ephemeral and hard to define. To date, Lord Macnaghten’s speech in The Commissioners of Inland Revenue v Muller & Co’s Margarine, Limited [1901] AC 217 (“IRC v Muller & Co”) at 223–224 remains, in our view, the clearest exposition of what goodwill is:
The above passage highlights two essential features of goodwill. First, it is the association of a good, service or business on which the plaintiff’s mark, name, labelling, etc (referred to generically as the plaintiff’s “get-up”) has been applied with a particular source. Second, this association is an “attractive force which brings in custom” (id at 224).
Whether goodwill exists in the “Aman” names
[40] As a preliminary point, we note that it is not contested that the “Aman” names can be considered as distinctive indicia capable of being the vessels of goodwill. The evidence in respect of the name “Amanusa” shows that it is a distinctive and completely made-up name, even though its component parts, “aman” and “nusa”, have descriptive elements. We thus agree with the Judge’s finding that the “Aman” names are “fancy mark[s] when used in relation to hotels and resorts” (see the Judgment at [49]), as well as when used for projects that are associated with such developments. Needless to say, our views on this do not extend to the use of the “Aman” names in any other context.
[41] The Judge found that the “Aman” names had “goodwill in Singapore” (id at [50]) before 2006, when the allegedly tortious conduct by the Appellant began. With respect, this is a somewhat ambiguous finding because it does not specify whether the goodwill existed in the minds of the general public in Singapore, or whether it was operative on only a small section of that public. In other words, the Judge did not identify who would make the requisite association of the “Aman” names with the ultra-luxurious hotels and resorts and other high-end residential accommodation offered by the Respondents. In our view, it is important to identify the specific section of the public which has goodwill towards the “Aman” names.
(1) The specific sector of the public to be considered
[42] According to the Appellant, the “relevant sector of the public in Singapore”[note: 22] in this case ought to be “the actual [customers] and potential customers in the hotel, resort and travel [industries]”[note: 23] – a very wide group which covers more or less the entire public in Singapore. It was argued that the Judge ought to have considered whether this widely-defined group of consumers would have associated the “Aman” names with a specific source. The Appellant submitted that this group would not have made that association and, thus, the Respondents did not have any goodwill in Singapore at all vis-à-vis the “Aman” names.
[43] In their submissions in the court below, the Respondents claimed that they had substantial reputation and goodwill, both in Singapore and worldwide, in the “Aman” names and “Aman”-prefixed names when those names were used in relation to hotels, resorts and residential accommodation. However, in their submissions in this appeal, the Respondents appear to have clarified that they are claiming goodwill only in respect of “the high-end hotel and resort market”[note: 24] [emphasis added]. It is argued that “the relevant purchasing public”[note: 25] consists of actual purchasers and prospective purchasers of the Respondents’ goods and services specifically, and not the wider group of consumers in the hotel, resort and travel industries.
[44] In our view, goodwill is not an all-or-nothing attribute in that it is not the case that the plaintiff either has goodwill in Singapore or, otherwise, has no goodwill at all. Clearly, goodwill can be limited to particular sections of the public. These sections of the public can be small so long as they are not negligible. However, if goodwill is shown to exist only among a small section of the public in Singapore, it would mean that, while goodwill exists in this country, it exists only in relation to that small group and not to the entire public here at large.
[45] In this case, we are of the view that goodwill exists in the “Aman” names among actual customers and potential customers in Singapore of the Aman resorts. As we shall explain more fully, this group is quite small, but, nonetheless, goodwill exists among it. We should also point out that the goodwill enjoyed by the Respondents covers the “Aman” names only and does not extend to “Aman”-prefixed names (as defined at [21] above).
[46] In the instant case, the Judge noted that “the number of people patronising Aman resorts or who [were] familiar with [the Respondents’] goods and services [was] … relatively small” (see the Judgment at [57]). However, he also said that “a significant body of persons in Singapore” (id at [59]) had heard of the Aman resorts generally and the Amanusa Bali in particular.
[47] The association of the plaintiff’s goods, services or business with a particular source may operate on only a small section of the public because of limited exposure of the plaintiff’s get-up in relation to those goods, services or business. Obviously, such an association can only form in the minds of those consumers who have been exposed to the plaintiff’s get-up. For instance, a small local business which is known only to the residents in its immediate vicinity will enjoy only geographically limited goodwill. In The Clock, Ld v The Clock House Hotel, Ld (1936) 53 RPC 269, for example, the plaintiff, which operated a small road-house (known locally as “The Clock”) offering its guests meals and facilities for bathing, tennis and golf, succeeded in obtaining a permanent injunction to restrain the defendant, which operated a hotel five miles away, from carrying on business under the name “Hotel Clock House”; this restriction, however, applied to the defendant’s premises only. Obviously, the goodwill which the plaintiff enjoyed in the name “The Clock” did not extend very far.
[48] One of the more striking features about the present appeal is that the main part of the Respondents’ business is not based in Singapore. The Respondents’ resorts, including the Amanusa Bali, are located overseas. The Respondents’ physical presence in Singapore is limited to that established by their international corporate office and their international reservations office. This would suggest a much more limited exposure in Singapore of the “Aman” names than if there were an Aman resort located right in this country.
[49] Furthermore, the Respondents’ resorts, apart from all being overseas, are located in exotic or relatively inaccessible locations not often frequented by mainstream tourists from Singapore. Indeed, the Respondents have taken great pains to keep their resorts low-key; understatement is a hallmark of their branding (see also [5]–[6] above). This can be seen from an article on Amanpuri entitled “Millionaires’ retreat”, published in South China Morning Post on 5 December 1994, which stated:[note: 26]
Even the three Aman resorts located in Bali have been deliberately sited in out-of-the-way places in order to create a sense of exclusivity, seclusion and privacy. Indeed, in Tom Rao, “Honeymoon Home away from Home” Wedding & Travel (July 2001), an article on the Amanusa Bali adduced by the Respondents, the writer stated (id at 177):[note: 27]
[50] Even though Bali welcomes many visitors from Singapore every year (see [14] above), the location of the three Aman resorts on that island means that most of these visitors are unlikely to come across those resorts in their peregrinations around the island. At the trial, there was no evidence of the Respondents’ advertising presence in Bali and the other countries where Aman resorts are located, but one might reasonably assume that any such advertising presence would be similarly limited.
[51] Absent a prominent physical presence by the Respondents in Singapore and given the locations of the Respondents’ resorts, the only other means for the “Aman” names to gain exposure is through marketing and the media. Again, the evidence in this regard suggests that there has only been very limited, rather than extensive, exposure of these names thus far. The Respondents apparently have a policy of not advertising their resorts in the mainstream media. Instead, advertising is targeted at a select few: for instance, the small clutch of American Express Centurion members and American Express Platinum members in Singapore. There have been articles in various magazines on the Respondents’ resorts, but most of these periodicals are again targeted at rich individuals, both local and foreign, or other specialist consumers like those in the high-end travel industry. The Respondents highlighted three examples of mass media exposure in the form of articles in Female, Time and Her World, but this sort of publicity was sporadic at best and would have generated only trivial goodwill in the “Aman” names. This point is significant for, as Laddie J incisively noted in Sutherland v V2 Music Ltd [2002] EMLR 28 at [22]:
[52] With regard to the 20 domain names which have been registered for the Respondents’ “Aman” websites, no weight should be placed at all on the fact that those domain names were registered here – that is a purely technical matter which does not influence the extent of exposure of the “Aman” names. More importantly, it must be noted that although the Internet has the potential to be used for giving goods, services and businesses instant exposure across the entire world, it does not follow that any small, dinky business can set up a website and then claim that it has gained worldwide recognition. The Internet’s power of exposure is only a potential power. This issue was given some consideration in 800-FLOWERS Trade Mark [2000] FSR 697 (“the first instance decision in 800-FLOWERS”), which concerned a dispute over the registration of a service mark. In that case, an application to register a name as a service mark was objected to on, inter alia, the ground that the name had not been used in the UK. The applicant sought to counter this argument by relying on its use of that name for its website. Jacob J observed very sensibly (at 705):
[53] The requirement of “use” of a trade mark in a jurisdiction (in the context of trade mark law) is, of course, pegged at a higher standard than the standard which applies when determining whether goodwill exists in a name (in the latter context, exposure, as opposed to use, of the name in question is the relevant criterion). But, the principle that putting a name up on the Internet does not translate into instant global presence of that name is applicable vis-à-vis the analysis of goodwill in passing off actions.
[54] It follows that evidence of the existence per se of domain names and websites featuring the name in which goodwill is said to exist will ordinarily be insufficient as proof of exposure of that name; something in addition to proof of the mere existence of such domain names and websites must be shown in order to establish that there has been sufficient exposure of the name in question. This approach is not dissimilar to that adopted by Buxton LJ in 800-FLOWERS Trade Mark [2002] FSR 12 (“the appellate court’s decision in 800-FLOWERS”), which was the English Court of Appeal’s decision on the appeal and the cross-appeal arising from the first instance decision in 800-FLOWERS. In the appellate court’s decision in 800-FLOWERS, Buxton LJ commented, in the context of use of a trade mark, that (at [138]):
Such “active step[s]” (ibid), the learned judge suggested, could take the form of “direct encouragement or advertisement by the [trade mark] owner” (ibid) which led consumers to the website featuring the trade mark in question. In the present case, the Respondents must adduce evidence showing, among other matters, the following:
(a) How many “hits” have the Respondents’ “Aman” websites received?
(b) How many of these “hits” came from Internet users in Singapore?
(c) If someone does a search for relevant topics (“resorts in Bali”, for instance) using any of the major search engines, are the Respondents’ “Aman” websites included among the top few search results?
(d) How many other major websites (particularly those frequented by consumers in Singapore) are linked to the Respondents’ “Aman” websites?
In this regard, the only evidence of exposure is that the Respondents’ website, <http://www.amanresorts.com>, has received “millions of ‘hits’” (see the Judgment at [11]) – but we do not know from where or from whom. Without such information, we would place little weight on the existence of the Respondents’ “Aman” websites in assessing the degree of exposure of the “Aman” names locally.
[55] It is also unlikely that the fame of the Respondents’ resorts spread by word of mouth. As previously indicated (see [14] and [50] above), the number of visitors from Singapore who have patronised the Amanusa Bali is relatively small. Even if the total number of visitors from Singapore for all the Aman resorts were taken into account, this would not yield a very large figure because of the very limited number of rooms available at the various resorts; for instance, the Amanusa Bali itself has only 35 rooms. We acknowledge the Respondents’ point that many luxury brands are widely known among the general public even though the goods marketed under those brands are purchased by only a very limited number of consumers. However, such brands would usually have other means of exposure – whether through marketing or through the ubiquity of their names in popular culture, etc. In the present case, the “Aman” names did not have such exposure.
[56] We are also aware of the impressive sales revenue derived by the Respondents from their resorts, more than 30% of which is attributable to the Respondents’ international reservations office in Singapore. However, there is no evidence as to what proportion of these sales was generated by customers based in Singapore. Sales generated by customers based overseas are entirely irrelevant for the purposes of establishing whether there has been exposure of the “Aman” names in this country and, if so, the extent of such exposure.
[57] Finally, while a long-established business is, in general, likely to be more widely known than a recently-established one, this may not always hold true. The Respondents’ business has existed since 1988 when the first Aman resort, Amanpuri, was opened, but, apart from the two offices which the Respondents maintain in Singapore, the main part of their business is based overseas. The length of time for which the Respondents’ business has been operational is thus not of very great weight.
[58] In our view, the exposure which the Respondents have succeeded in establishing is plainly limited to the well heeled. It is these people who visit the Respondents’ resorts; it is also this group which has been and continues to be the target of the Respondents’ selective marketing campaign. In contrast, exposure of the “Aman” names has not been established for other income groups in Singapore. Some indication of this can be found in the survey carried out by the Appellant among the visitors to the Showflat, the overwhelming majority of whom had not heard of the Amanusa Bali or any other Aman resort. However, we acknowledge that the survey was rather unscientific and do not place much weight on the results obtained. Further, the drafting of the questionnaires for the survey left a great deal to be desired. The use of surveys in trade mark disputes and passing off actions is a very technical matter and, if evidence based on surveys is to be relied on, it should be adduced in the form of expert evidence.
[59] The uneven pattern of recognition of the “Aman” names among different income groups in the present case is no accident. It is the result of the deliberate policy of the Respondents to concentrate their marketing and advertising efforts on the wealthy. The image which the Respondents seek to project is one of understated class. A glimpse of this approach can be found in the following extract from an article in Time, which describes how the Aman resorts are designed and furnished:[note: 28]
There is nothing objectionable about such an approach to marketing and business, but the Respondents must also be prepared for the consequence that whatever goodwill they may have in the “Aman” names may be limited in scope. The English High Court case of HFC Bank Plc v Midland Bank Plc [2000] FSR 176 (“the HFC Bank case”) is instructive in this regard. The plaintiff in that case (“HFC”) was a bank which adopted the practice of dealing with its customers in indirect ways: for instance, through introductions from credit brokers, through retail finance agreements and through its credit card business conducted under other brand names. As a result, only a small proportion of its customers were familiar with the name “HFC”. When HFC tried to stop the defendant (“Midland Bank”) from using a similar name, HFC relied on the evidence of some of its customers, who claimed to have mistaken Midland Bank for HFC. Lloyd J held (at 198–199):
(2) Whether the “Aman” names have an attractive force for custom among the relevant sector of the public
[60] In the present case, even if the “Aman” names were generally known throughout the whole of Singapore, it would not necessarily mean that the Respondents have goodwill in those names to that extent. It must be recalled that goodwill, apart from being an association of a good, service or business with a particular source, must also be “[an] attractive force which brings in custom” [emphasis added] (see IRC v Muller & Co ([39] supra) at 224). In other words, whether or not there is goodwill attached to a name also depends on whether or not there are any actual and/or potential customers of the goods, services or business marketed under that name.
[61] One example of a situation where an association with a source is not “[an] attractive force which brings in custom” (ibid) would be where a well-known good is unavailable for sale. This was the case in Anheuser-Busch Inc v Budejovicky Budvar NP [1984] FSR 413 (“the Budweiser case”), where the plaintiff manufactured the well-known “Budweiser” beer in the US. “Budweiser” beer was not available to the general market in the UK, although it was sold in American military bases and a limited number of other outlets in the UK on a duty-free basis. However, the beer was widely known throughout the UK because of the plaintiff’s publicity efforts as well as tourist and business traffic between Europe and the US. In view of this, the English Court of Appeal held (at 464, per Oliver LJ) that the plaintiff could “legitimately claim that … [it] had a reputation as the [brewer] of a beer, Budweiser, with a substantial section of the public”. The question for the court, then, was “whether this reputation associated with a beer which, for practical purposes, nobody could buy [in the UK], constituted … goodwill in any relevant sense” (ibid). Oliver LJ considered whether the plaintiff’s name could be said to be an attractive force for custom in the UK, and came to a negative conclusion. He reasoned (at 469 of the Budweiser case):
[62] A desire to become a customer of the plaintiff, without the ability to actually be one, cannot ordinarily form the basis of goodwill. A person in such a position is not even a potential customer of the plaintiff because there is no way for the latter’s good, service or business to attract his custom. In such a case, the plaintiff can be described as having a good reputation among such persons (ie, persons who desire to be, but are unable to become, the plaintiff’s customers), but that is not the same as having goodwill. This court in the Millenia case ([36] supra) cited the Budweiser case with approval, noting that “having a widespread reputation in a particular place [did] not necessarily mean that the trader [had] … goodwill in his business” (see the Millenia case at [50]).
[63] Another situation in which there may be a good reputation attached to a get-up without corresponding goodwill in that get-up is when the good or service marketed under the get-up is priced out of the reach of those who desire it. People who cannot afford a good or service cannot be considered to be part of the potential customer base of the plaintiff who provides that good or service. In the present case, the Respondents’ resorts cater for the wealthy and the room rates there reflect this. As noted at [65] of the Judgment, visitors to the Respondents’ resorts “pay a premium” to stay there. The Respondents’ high room charges were described by Mr Sirois as an “economic barrier”.[note: 29] The remarkable prices contribute to the overall image of exclusivity which the Respondents have chosen to imbue their business with. The Respondents’ resorts cannot even be put in the same class as other five-star hotels, which, although pricey, often still receive guests from middle-income groups. Even if the “Aman” names are well known throughout Singapore such that they have widespread reputation, the high room rates at the Aman resorts mean that these names carry no attractive force for custom among those who are less well off; such individuals simply cannot afford to stay at the Aman resorts. In the Budweiser case, the plaintiff’s goodwill was limited by the restricted availability of “Budweiser” beer in the UK. In the instant case, the limitation stems not from the availability of the product in question but from its price. However, both types of limitation (ie, limitation due to availability and limitation due to price) effectively mean that the sphere of actual customers and potential customers of the product in question is limited.
[64] We should, however, point out that we accept that there are many people who, although unable to go to the Aman resorts on a regular basis, may nonetheless save up for a once-in-a-lifetime visit, such as for a honeymoon or a golden wedding anniversary, etc. Exposure of the Aman resorts in magazines like Wedding & Travel (see [49] above) illustrates that there may be goodwill in relation to this group of persons even though they may not fall into the high-income category. We also accept that goodwill may subsist in potential customers – a person may be unable to afford to stay at an Aman resort today, but he may nonetheless have been exposed to the “Aman” names and thus aspire to visit one of the Aman resorts some day should his financial position improve. Thus, the goodwill attached to the “Aman” names, apart from existing among the core group of wealthy persons who are presently able to patronise the Aman resorts on a regular basis, also subsists among once-in-a-lifetime guests as well as the penumbra of aspirants who may one day be able to realise their dreams of staying at an Aman resort if their financial status improves.
(3) The type of business in respect of which goodwill in the “Aman” names exists
[65] The Judge was not clear about whether the Respondents had goodwill in the “Aman” names in relation to hotels and resorts only, or whether the goodwill extended to residential accommodation. The Appellant argued – correctly, in our view – that the goodwill proved did not extend so far. While there is evidence that the Respondents are engaged in tie-ups and licensing agreements for the use of the “Aman” names vis-à-vis luxury residential developments (which will be discussed in greater detail later), there is no evidence that this aspect of the Respondents’ business is known to the general public in Singapore or even the more limited wealthy market, which forms the target clientele for the Respondents’ resorts. In any event, as mentioned earlier (at [43] above), the Respondents’ case on appeal was that the alleged goodwill existed only in respect of the high-end hotel and resort market.
(4) Our conclusion on the extent of the goodwill attached to the “Aman” names
[66] Given the limitations outlined above, we are of the view that the Respondents’ goodwill in the “Aman” names in Singapore is limited largely to those of a high income level who would have been exposed to the Respondents’ advertising. To this section of the public, we would add the category of once-in-a-lifetime guests and aspirants which we alluded to earlier (at [64] above). Finally, we also note that there is ample evidence that the “Aman” names have goodwill among those in the high-end travel and resort industry as well.
The “foreign business problem”
[67] There is considerable academic debate in both the UK and Singapore over what is sometimes called the “foreign business problem” in the law of passing off. In a nutshell, this issue concerns the circumstances under which foreign businesses can bring a claim for passing off. The nub of the problem lies in whether a foreign entity must actually do business in a particular jurisdiction before it can bring an action for passing off in that jurisdiction, or whether it can simply rely on its reputation in the jurisdiction concerned without doing any business there. The former position was dubbed “the hard line” in Mechanical Handling Engineering (S) Pte Ltd v Material Handling Engineering Pte Ltd [1993] 2 SLR 205 at 210, [22], and some suggest that it is the position which prevails in the UK and Singapore. The latter is the less traditional approach exemplified by cases like Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 (a decision of the Federal Court of Australia) and Orkin Exterminating Co Inc v Pestco Co of Canada Ltd (1985) 19 DLR (4th) 90 (a decision of the Ontario Court of Appeal).
[68] We do not wish to wade into this controversy at present, but there are nevertheless two points pertinent to this appeal which we wish to make. First, although the Respondents do not have any resorts in Singapore, they do have two offices here. Indeed, the Amanresorts Group’s headquarters are in Singapore (see [13] above) and the Amanresorts Group has an actual customer base here. As such, it is not strictly correct to think of the Respondents’ business as a foreign one. The second point is that whether or not Singapore adopts the hard-line approach to the “foreign business problem” may not be of much significance, considering that foreign entities which have no goodwill and/or do not carry on any business in Singapore may still get protection for the names which they use to market their goods, services or business if those names are “well known trade marks” for the purposes of s 55 of the current TMA.
Misrepresentation
[69] In order to establish an actionable tort of passing off, the plaintiff, apart from proving that it has goodwill in the goods, services or business in question, must also show that:
(a) the defendant has made a misrepresentation to the relevant sector of the public; and
(b) such misrepresentation has resulted in or is likely to result in damage to the plaintiff’s goodwill.
The elements of misrepresentation and damage are very closely linked, and it is crucial to appreciate that both the misrepresentation and the damage must relate to the plaintiff’s goodwill. A misrepresentation is actionable as a tort of passing off only if it causes (or is likely to cause) damage to the plaintiff’s goodwill.
The misrepresentation in the present case
(1) The content of the misrepresentation
[70] In the present case, the Respondents allege that the Appellant’s use of the name “Amanusa” constituted a misrepresentation that the Project had the same source as the Respondents’ resorts or that the two (ie, the Project and the Respondents’ resorts) were somehow connected.
(2) The target audience of the misrepresentation
[71] The Judge described the relevant section of the public to whom the misrepresentation was made in the following terms (see the Judgment at [57]):
The Appellant argued that the Judge erred in delineating the relevant sector of the public in the above manner because, in effect, he was confining the relevant sector to the Respondents’ customers when the question was whether the Appellant’s customers were confused by the misrepresentation.
[72] The established cases take inconsistent positions on the issue of whether the target audience of the misrepresentation in a passing off action consists of the plaintiff’s customers or the defendant’s customers. In the Advocaat case ([36] supra), Lord Diplock stated that the misrepresentation must be made to the defendant’s customers (see the passage reproduced at [36] above). However, according to Lord Oliver’s formulation in the Jif Lemon case ([36] supra), the misrepresentation must be made to “the public” (id at 499 (reproduced at [36] above)). And, in yet another case, Harrods Limited v Harrodian School Limited [1996] RPC 697, which concerned a passing off action brought by the proprietor of the world-famous department store, Harrods, to restrain the defendant from carrying on a private preparatory school under the name “The Harrodian School”, the English High Court considered whether confusion existed among those parents who had inquired about sending their children to the defendant’s school. The English Court of Appeal disagreed and held instead that the misrepresentation must be considered from the perspective of “a common section of the public” (at 716) which comprised both the plaintiff’s customers and the defendant’s customers. Millett LJ stated (ibid):
[73] With the greatest respect to the judges in the above-mentioned cases, these formulations of the relevant sector of the public do not link the element of misrepresentation back to the foundation of a claim for passing off – viz, goodwill. These formulations include people who may not have any goodwill towards the plaintiff’s get-up at all. Logically, misrepresentations made to such people cannot affect the plaintiff’s goodwill in any way. Christopher Wadlow perceptively notes in The Law of Passing-Off: Unfair Competition by Misrepresentation (Sweet & Maxwell, 3rd Ed, 2004) (“The Law of Passing-Off”) that (at para 5-92):
To this comment, we would add that not all actual customers and potential customers of the plaintiff necessarily have goodwill vis-à-vis the plaintiff’s get-up. For instance, if a customer buys the plaintiff’s goods solely because of reasons unrelated to the source of those goods (for instance, because of the price, the availability or the functionality, etc, of the goods) and not because of positive association of the goods with the source indicated by the plaintiff’s get-up, then such customers do not ordinarily count for the purposes of assessing the impact of the defendant’s misrepresentation.
[74] We find support for this approach in the HFC Bank case ([59] supra). One might recall that, in that case, HFC was held not to have achieved brand recognition among many of its customers, including a number who were called by HFC as witnesses to testify on the issue of confusion. Lloyd J held that those witnesses did not have goodwill towards HFC’s name, and concluded (at 199):
[75] We agree with the Respondents’ submission that the approach taken by Lloyd J in the HFC Bank case is the right approach to adopt. The alleged misrepresentation must be analysed from the perspective of those who have goodwill in the plaintiff’s get-up. We further note that the definition of the “relevant section of the public” (see the Judgment at [57]) which the Judge adopted in the context of the misrepresentation in the present case is largely consonant with the group of people who, we have held, have goodwill towards the “Aman” names (see [66] above).
[76] The question of whether those in Singapore with goodwill towards the “Aman” names have received the Appellant’s misrepresentation depends on how widely the misrepresentation has been broadcast. This is a matter of fact. Most misrepresentations are broadcast to the public at large in Singapore. In this case, the name “Amanusa” was apparently prominently displayed outside the Showflat itself; it also appeared in promotional brochures and advertisements of the Project in the mass media, which many people in Singapore would have been exposed to. The misrepresentation has thus been made to the public at large, which would include those in Singapore with goodwill towards the “Aman” names.
(3) Whether the misrepresentation resulted in confusion
[77] A misrepresentation is actionable under the law of passing off only if it gives rise to confusion. The two elements – misrepresentation and confusion – together form the “deception” referred to by Lord Diplock in the Advocaat case ([36] supra) at 740. The Respondents raised the remarkable suggestion that confusion was not an element of an action for passing off in view of the following dicta in the Millenia case ([36] supra) at [71]:
In our view, the above passage clearly only means that evidence of actual confusion is not required before a passing off action can succeed. It is open to the court to infer a likelihood of confusion from the surrounding facts. Confusion is still an essential element of the tort of passing off and we hope that we have given any misunderstanding of the court’s dicta in the Millenia case (at [71]) its quietus.
[78] The question to be asked at this stage is actually fairly simple: Did those in Singapore with goodwill towards the “Aman” names believe that the Project had the same source as the Respondents’ resorts or was somehow connected with the source of those resorts?
[79] Before we continue, we pause to note that there was scant evidence from the Respondents that persons in Singapore with goodwill towards the “Aman” names were confused, in actual fact, by the Appellant’s use of the name “Amanusa” for the Project. The only evidence of actual confusion came from the husband of one of the Appellant’s witnesses (a purchaser of a unit in the Project), who said that he had asked the marketing agent whether the Project had anything to do with the Amanusa Bali (see the Judgment at [59]). There was, however, no evidence that high-income individuals (who form the bulk of the group of persons with goodwill towards the “Aman” names) were actually confused.
[80] Evidence of actual confusion between the business, goods or services of the plaintiff and those of the defendant may be helpful, but the lack of such evidence is not fatal to the plaintiff’s claim. Instead, the court is entitled to consider whether the average reasonable person, with characteristics reflective of the relevant section of the public as identified under the examination of goodwill, is likely to be confused by the defendant’s misrepresentation. In Parker-Knoll Limited v Knoll International Limited [1962] RPC 265, Lord Devlin said (at 291–292):
[81] With this in mind, we turn to consider whether the factual matrix of the present case supports the conclusion that the reasonable member of the relevant section of the public identified earlier (at [66] above) was likely to have been confused by the Appellant’s misrepresentation.
[82] The Judge quite rightly considered that the Appellant had used for the Project a name which was identical to the name used by the Respondents for the Amanusa Bali. It was also a relevant consideration that the Project was originally heavily touted as having a Balinese atmosphere, just like the Amanusa Bali. These are all factors which increase the likelihood of confusion. On the Balinese theme point, we reject the Appellant’s suggestion that the Judge was somehow granting the Respondents a monopoly over that particular architectural style. The Balinese theme is only relevant in so far as the name of the Project and that of the Amanusa Bali are identical – a factor which increases the likelihood of confusion.
[83] Notably, it would have been a relevant consideration increasing the likelihood of confusion if the Appellant had been found to have had fraudulent intentions in using the name “Amanusa” for the Project, ie, if it had set out to deceive those with goodwill towards the “Aman” names (see Office Cleaning Services, Ld v Westminster Window and General Cleaners, Ld (1946) 63 RPC 39 at 42, per Lord Simonds). Although the account by the Appellant of how it came up with the name “Amanusa” for the Project lacked an air of reality and although there certainly was some patent plagiarism of certain laudatory phrases from the Respondents’ promotional materials, the Judge was satisfied that there was no fraudulent intention on the Appellant’s part (see the Judgment at [4] and [75]). This finding has not been challenged by the Respondents. It should be noted, however, that a finding of innocent copying would not in itself exonerate the defendant in a passing off action.
[84] Another factor to consider in assessing whether the misrepresentation in question has led to confusion between the business, goods or services of the plaintiff and those of the defendant is whether the parties are in the same field or closely related fields of business – or, to be more precise, whether the business, goods or services to which the plaintiff’s get-up is applied are in the same or a closely related field as that to which the defendant’s business, goods or services belong.
[85] We note that the Respondents use the “Aman” names in the high-end hotel and resort business while the Appellant seeks to use the name “Amanusa” for middle-class residential accommodation (specifically, the Project). Nevertheless, we accept the Judge’s finding that “the dividing line between purely residential developments and luxury hotel or resort developments is no longer pronounced” (see the Judgment at [59]). As we noted earlier, the Respondents are involved in the high-end residential accommodation industry as well (see [8]–[9] above). The Respondents have also put forward cogent evidence that the luxury hotel and resort market as a whole is “converg[ing]”[note: 30] with the residential accommodation market. The Judge summarised the Respondents’ position in relation to the development of Aman Villas thus (see the Judgment at [9]):

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Novelty Pte Ltd v Amanresorts Ltd and Another

Laws this judgment relies on

Grounds of decision

Introduction

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The facts

The respondents

The Respondents’ resort business

The Respondents’ residential accommodation business

Other products and services offered by the Respondents

The Respondents’ marketing-cum-publicity efforts and the exposure received

The Respondents’ trade marks

The appellant

The dispute between the parties

The decision in the court below

The passing off claim

Goodwill

The nature of goodwill

Whether goodwill exists in the “Aman” names

(1) The specific sector of the public to be considered

(a) How many “hits” have the Respondents’ “Aman” websites received?

(b) How many of these “hits” came from Internet users in Singapore?

(2) Whether the “Aman” names have an attractive force for custom among the relevant sector of the public

(3) The type of business in respect of which goodwill in the “Aman” names exists

(4) Our conclusion on the extent of the goodwill attached to the “Aman” names

The “foreign business problem”

Misrepresentation

The misrepresentation in the present case

(1) The content of the misrepresentation

(2) The target audience of the misrepresentation

(3) Whether the misrepresentation resulted in confusion