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Well-Known Marks Are Protected In Singapore

The concept of well-known marks was first introduced in Singapore when the Trade Mark Act was amended to provide for the protection of well-known marks in 1999. As such, even if a well-known mark is not registered in Singapore, the owner of a well- known trade mark may take action to ensure protection of their mark under the Act. In other words, should use of the proposed mark indicate a connection between those goods or services and the owner of the well-known trade mark and be likely to damage the interests of the owner of the well-known trade mark, such use would be prohibited. Likewise, should a mark be well-known to the public at large in Singapore and use of the proposed mark would cause dilution or if it would take unfair advantage of the distinctive character of the well-known mark, use of the proposed mark would be prohibited.

In determining of the sort of factors that constitute whether a mark is regarded as well-known, the Singapore courts have commonly looked to the degree of recognition by the relevant sector of the public in Singapore, the duration, extent and geographical area of the use or promotion of the mark, the sort of registrations or applications for registration and an assessment of value associated with the mark. While this concept of well-known marks was introduced into the Singapore’s in 1999, it is interesting to note that the first decision based on the well-known status of a mark in Singapore was only made in 2007, 8 years after the legislation has been effected. Thus, for the first time in Singapore, in the landmark decision Amanresorts Limited and Another v Novelty Pte Ltd [2008] 2SLR 32, the Singapore High Court recognized a trade mark as being well-known and consequently restrained another party from using the well-known mark.

In this instance, Amanresorts Ltd and Amanresorts International Pte Ltd which owns and manages luxury resorts worldwide brought an action against Novelty Pte Ltd, a local property developer for use of the name AMANUSA as the name of its condominium project. Amanresorts not only had a trade mark for their resort “AMANUSA” but also had a portfolio of worldwide trade marks that made use of the prefix “Aman”. As such, it was claimed that their trade marks were well-known and were thus entitled to protection under the Trade Marks Act. Justice Tay Yong Kwang in his judgment, directed that the Amanresorts Group’s various AMAN trade marks including the AMANUSA trade mark are well known trade marks under the Trade Marks Act and that were entitled to an injunction to restrain Novelty Pte Ltd from using the AMANUSA name as the name of its condominium as use was likely to cause damage to the goodwill of the Amanresorts Group in the Amanusa name by the “insidious process of dilution such that the name loses its uniqueness or, worse, such that the famous name which inspires hushed awe could in future evoke suppressed laughter because of the association with projects that do not exude the same luxury and class or quality of upkeep, especially when residential projects have begun to show their age.”

The Court also upheld section 2(7) and section 2(8) of the Act and affirmed that since the Aman names are “known to or recognized by any relevant sector of the public in Singapore, they will be deemed to be well-known in Singapore. Further, in Amanresort’s reliance on section 55(3)(a) of the Trade Marks Act for protection, it was held that even if the provision did not make any reference to confusion, a likelihood of confusion must still be shown before Novelty Pte Ltd’s mark will be held to be in conflict with the Amanresort trade mark. In this instance, the Court opted to take the stance that the low threshold to qualification of a well-known mark should be “balanced by interpreting section 55(3)(a) as requiring a likelihood of confusion to be shown” before an injunction to restrain the use of Novelty Pte Ltd’s trade mark on goods or services dissimilar from those of Amanresorts’ can be obtained. In other words, it is argued that the ambit of protection afforded by section 55(3) of the Act will differ in accordance to how well-known the mark is perceived to be. At this juncture, it is also worth noting that while a trade mark may be “well-known to the public at large in Singapore, the dicta in the instant case suggests that although a likelihood of confusion may not required under sections 55(3)(b)(i) and 55(3)(b)(ii) of the Act, such protection should “properly be the preserve of a rare and privileged few”.

Notwithstanding, following the judgment of the Aman case, the courts in Singapore have since taken direction and decided on a number of other cases on well-known marks in Singapore. In the case of Mobil Petroleum Company Inc v Hyundai Mobis [2008] SGHC 1004, Hyundai Mobis, had applied for registration of the mark “MOBIS” for class 12 for goods of automotive parts and equipment. Mobil opposed the mark, arguing that their MOBIL mark is well-known. Here, the courts directed that the issue to be determined was whether use of the MOBIS mark in relation to the class 12 goods would indicate a connection between the goods and Mobil. Accordingly, it was held that while the term “connection” has to be construed widely, it should be in context to MOBIL and MOBIS, further taking into account any visual and aural similarities. The judge commented that it is also necessary to take into account the extent to which they are similar. Thus if two marks are visually similar, then the likelihood of connection and confusion would be higher.

In the case of, Pensonic Corporation Sdn Bhd v Matsushita Electric Industrial Co. Ltd [2008] SGIPOS 9 the Applicants had applied for the registration of a mark comprising of the word Pensonic and a device of a letter P for class 9 goods including electrical apparatus and instruments. Matsushita claimed that their Panasonic trademark was well-known and the Applicant’s mark was therefore objectionable under the Act. The Court, in arriving at the finding that the Panasonic mark was a well-known mark in Singapore, took into account that fact that Matsushita was able to prove that the Panasonic mark extensively not just in Singapore but also worldwide, that they had close to half a billion dollars in sales of electronic branded products under the Panasonic mark in each of the two years before the filing date of the Applicant’s mark and that Panasonic had sold their goods in Singapore through a network of more than 100 authorized dealers and spent an average of SGD$10 million a year in advertising and promotions in their font, capitalization and colors.

Amanresorts Limited and Another v Novelty Pte Ltd is particularly memorable as it marks the first time the Singapore Courts have recognized a trade mark as being well-known and consequently restrained another party from using the said name. Although provisions have been made for the protection of well-known marks in Singapore, the Courts had not until now granted any trade mark injunctive protection. The cases of Mobil Petroleum Company Inc v Hyundai Mobis and Pensonic Corporation Sdn Bhd v Matsushita Electric Industrial Co. Ltd further serves to demonstrate that although it has taken nearly 10 years after the introduction of well-known marks in the Trade Marks Act, the courts are actively ensuring that trade mark owners who the rights of deserving brand owners.