Pontiac Marina Pte Ltd v CDL Hotels International Ltd

JudgeChao Hick Tin J
Judgment Date28 February 1997
Neutral Citation[1997] SGHC 44
Docket NumberSuit No 1900 of 1995
Date28 February 1997
Published date19 September 2003
Plaintiff CounselDavinder Singh, Dedar Singh Gill, Adrian Tan and Richard Choong (Drew & Napier)
Citation[1997] SGHC 44
Defendant CounselMichael Hwang, Tan Tee Jim and Jason Chan (Allen & Gledhill)
CourtHigh Court (Singapore)
Subject MatterInjurious association or dilution of goodwill.,Passing off,Pre-trading goodwill,Goodwill,Misrepresentation,Whether likely to cause confusion,Relevant date on which goodwill should be established,Question for the court to decide,Pre-trading marketing efforts,Visually and phonetically similar,Damage,Advertisements and promotion,'Millenia' vs 'Millennium',Tort,Deception or confusion,Likelihood of suffering damage to goodwill as a result of misrepresentation,Quia timet action,Survey evidence,Relevance of expert evidence,Whether plaintiff's higher quality product likely to be mistaken for defendant's lower quality product

This is an action in passing off and it concerns two words `Millennia` and `Millennium`. It is a quia timet action. The plaintiffs are the developers of a S$1.65 bil project at the Marina Centre consisting of two hotels, two office blocks and a shopping mall (hereinafter called `the complex`). To ensure that it would be a development of distinction, they commissioned three world-renown US architects to design it.

The defendants are a company incorporated in the Cayman Islands and own numerous hotels in different parts of the world, four of which are in Singapore.
The defendants are a substantial company and a subsidiary of a public listed company in Singapore.

Initially the plaintiffs intended to name the development `Beacon Place`.
On 3 November 1992 the plaintiffs wrote to the Advisory Committee on Street Names to say that they wished to change the name to `Millennia City` or `The Millennia`. On 5 October 1993 the plaintiffs informed the Advisory Committee that it would like to have the name `Millennia` spelt with only one `n`. On 24 November 1993, the Advisory Committee gave its approval to the plaintiffs to call its complex the `Millennia`.

On 28 March 1994 the plaintiffs filed four applications with the Registry of Trade Marks (RTM) to register `Millennia` as a service mark in four classes, including one for `hotel services` under class 42, having earlier established from searches at the RTM and the Registry of Companies that no other person had applied to register `Millennia` or a similar name as a service mark for similar services or as a company or business name for similar businesses.

On 11 July 1994 the plaintiffs announced to the public by way of a press release that the complex would be named `Millennia`.
This news item was carried in the media the following day. On that day, advertisements were also placed by the plaintiffs in the newspapers announcing and promoting the `Millennia` name.

On 12 July 1994 an Operating Agreement was entered into between the plaintiffs and the Ritz-Carlton Company of Atlanta, USA (R-C Co), an international hotel management chain, appointing the R-C Co to be the operator of one of the two hotels in the complex.
Under cl 7.2.3 of the Operating Agreement, the plaintiffs has the discretion to add one other name to the name `Ritz-Carlton` as the name of the hotel.

On 14 September 1994, the plaintiffs informed the R-C Co that they proposed to name the hotel `Ritz-Carlton, Millenia Singapore` (RCMS).
The plaintiffs said the reason for wanting to insert the name `Millennia` as a part of the name of the hotel was their desire to retain their goodwill in the name `Millennia` on the expiry of the Operating Agreement with R-C Co, so that, in that eventuality, the hotel will not be left without a name.

I should at this juncture add that though both the hotels in the complex are five-star hotels, the RCMS is of a superior 5-star, sometimes referred to as a 6-star hotel or a super-deluxe hotel.
The second hotel, which has since the completion of the trial opened for business, is operated by another international chain, the Conrad.

On 17 October 1994, a topping-off ceremony was held for RCMS.
It was graced by the Minister of State for Trade and Industry. Many other prominent people were also invited to witness the occasion. The event was carried in the media the following day where the name Ritz-Carlton, Millenia Singapore was made known to the public.

Sometime on or about 22 September 1995 the plaintiffs came to know that the defendants had on 9 December 1994 filed a service mark application No 10667/94 for the word `Millennium` in respect of `hotel services, hotel accommodation services.
` On 27 September 1995, the plaintiffs` solicitors Drew & Napier (D&N) wrote to the defendants demanding that the latter cease and desist from using the Millennium name and withdraw their service mark application. In their letter D&N stated, inter alia, the following:

... The words Millenia and Millennium are confusingly similar visually as well as phonetically. Further, if the Millennium mark is used on hotel services, the public may be misled into assuming that there is a trade relationship between our clients and your clients, when that is not the case.

On 29 September 1995, Allen & Gledhill (A&G) for the defendants asked for time to seek instructions and requested the plaintiffs to hold their hands.
On 3 October 1995, D&N issued a reminder asking for a response by 13 October 1995 and stating `in the interim, however, your clients should not take any further steps to promote or use the Millennium mark.`

On 10 October, A&G replied, but in two letters.
One was marked `Without Prejudice` and the relevant part reads:

We wish to inform you that our clients will be launching their Millennium chain of overseas hotels on 17 October 1995 in Singapore. The launch is basically an official public announcement to introduce our clients` hotel Millennium Broadway in the United States, and our clients two hotel properties in New Zealand known as Millennium Christchurch and Millennium Queenstown. The launch is not in relation to any Millennium hotel in Singapore ...

We would add that this is in no way an admission of your clients` rights to the name in Singapore ... [Emphasis added.]

In reply to this letter D&N stated that they did not understand why the letter should be marked `Without Prejudice` and added that they would treat it as an open letter.
They stated that they would not apply for interlocutory relief in view of what was stated therein but would proceed to do so if the defendants should attempt to `launch a hotel under the mark Millennium in Singapore.`

In the second letter, which was not marked `Without Prejudice` A&G made the following points: (i) that the name `Millennia` is not the name of the plaintiffs` hotel; it is `The Ritz-Carlton, Millenia Singapore` indicating that the name `Millennia` is really a location; (ii) that the plaintiffs have not acquired reputation/goodwill in the Millenia mark for hotel services; (iii) that Millenia is a common English word, no monopoly could be acquired and (iv) that the words `Millennium` and `Millennia` are visually and phonetically dissimilar.

It seems to me that the defendants had cleverly asked their solicitors to write the `without prejudice` letter in a manner which would throw the plaintiffs off-guard.
The material distributed at the launch, which I will revert to later, clearly shows that the launch related to their Singapore hotels as well: `... there are also 23 Millennium Partner Hotels which will be converted to full-fledged Millennium hotels over the next 18-24 months ... the 23 include three in Singapore`. When confronted, A&G stated on behalf of the defendants that what happened was not a launch of a hotel in Singapore under the name Millennium - `The Singapore hotels are still known as Orchard Hotel, Harbour View Daiichi, and King`s Hotel. The "Millennium Partner" programme is a strategic brand alliance that will allow Millennium Partner hotels to take immediate advantage of the Group`s global marketing, reservations and sales networks.` More will be said of this matter later.

On 17 October 1995 the defendants launched in Singapore the Millennium Hotels and Resorts as the international global brand which would eventually link up its entire stable of about 55 hotels in 11 countries.
Immediately the defendants` hotels in Singapore would be known as Millennium Partner hotels. The `Millennium` would be a four-star brand.

Relevant date

The classic form of misrepresentation giving rise to an action in passing-off is a misrepresentation by the defendant that his goods are the goods of the plaintiff. But that is no longer the only form of passing-off. It is passing-off to misrepresent that one`s business is that of the plaintiff, or connected with that of the plaintiff, in any way likely to cause damage. As stated by Romer LJ in Clock Ltd v Clock House Hotel Ltd [1936] 53 RPC 269 :

... no man is entitled to carry on his business in such a way or by such a name as to lead to the belief that he is carrying on the business of another man or to lead to the belief that the business which he is carrying on has any connection with the business carried on by another man.

and more recently by Lord Diplock in Warnink v Townend & Sons [1979] AC 731 at pp 741-742:

where although the plaintiff and the defendant were not competing traders in the same line of business, a false suggestion by the defendant that their businesses were connected with one another would damage the reputation and thus the goodwill of the plaintiff`s business.

If a trade name suggests that the defendant`s business is an extension, branch or otherwise connected with the plaintiff`s business, the plaintiff could have a remedy in passing-off: Ewing v Buttercup Margarine Ltd [1917] 2 Ch 1 .
But the connection must be one by which the plaintiff would be taken by the public to have made themselves responsible for the quality of the defendant`s goods or services: HP Bulmer Ltd v J Bollinger SA [1978] RPC 79 at p 117 per Goff LJ.

In any passing off action a plaintiff must establish (i) goodwill; (ii) misrepresentation; and (iii) actual or potential damage.
In the words of Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 :First, he must establish a goodwill or reputation attached to the goods or services which he supplies ... Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff ... Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant`s misrepresentation ...

Before I proceed to examine these essential elements there is a preliminary

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3 books & journal articles
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