Trademarks serve to distinguish between the goods or services of competing organisations. The Paris Convention was the first agreement to address well-known marks. The extension of protection in cases of lack of use or registration was seen as a significant departure from traditional trademark law and this right was generally accorded to a very select group of internationally famous marks.
TRIPS further expanded the protection provided to well-known marks by the Paris Convention. TRIPS Article 16 extends these rights to cases in which a conflicting mark is used on services in addition to goods, and in cases in which the goods or services are dissimilar, so long as in each case there is nonetheless a likelihood of confusion. TRIPS also extends well-known marks protection by requiring Members to take account of the knowledge of the mark in the relevant sector of the public i.e. that it would now be possible for a mark to be deemed well-known where it is not known by the general public, but is famous amongst the particular consumers of that product. This kind of fame is often referred to as niche fame.
In compliance with the TRIPS, on January 15, 1999 the Trade Marks Act was amended to provide for well-known marks under the Paris Convention. In summary an action for infringement is available against the unauthorized use of a mark in relation to dissimilar goods, if such mark is similar to a registered mark that is well known in Singapore. And the proprietor of a trademark, which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known mark, can restrain the use of an identical or confusingly similar mark.
The Singapore High Court in a recent case for the first time declared a mark to be well known in a case where the prestigious Amanresorts Group has taken Novelty Pte Ltd to court for trade mark infringement.
The bone of contention is the use of the name “Amanusa” which Novelty Pte Ltd had chosen as the name of a condominium project. And it is also the name of a well-known luxury resort in the Indonesia island of Bali, which is one of the eighteen Amanresorts properties around the word. Amanresorts have claimed that the use of the mark would confuse consumers and “lead to the gradual whittling away and eventual erosion of the uniqueness and exclusivity associated” with the resort’s brand. They claimed further to have suffered loss and damage to their brand “Aman” which they believe to be the rightful owner. Moreover, Novelty had advertised its Amanusa homes as an “exclusive … private hideaway”, which is similar to the expression used by the plaintiff for describing their resorts.
Novelty Pte Ltd, on the contrary, argued that there is absolutely no risk of confusion for the public and that no buyer had purchased units because of the possible association with the Amanresorts. There would be therefore no possibility of damage to Amanresorts’ interest. Furthermore, both companies run totally different types of business.
However, contrary to the contention of the defendants the Court finally gave its decision in favour of the plaintiff on May 2007 that the condominium project has to be renamed, as the use of the name “Amanusa” was likely to cause damage to the goodwill of the plaintiff
Thus, came the first decision based on the well-known status of a mark in Singapore. This decision has been rendered almost ten years after the introduction of well-known marks in Singapore Trade Mark Act 1999.