CDL Hotels International Ltd v Pontiac Marina Pte Ltd

• Judge: Karthigesu JA
• Judgment Date: 09 April 1998
• Neutral Citation: [1998] SGCA 23
• Citation: [1998] SGCA 23
• Defendant Counsel: Peter Prescott QC, Dedar Singh and Adrian Tan (Drew & Napier)
• Published date: 19 September 2003
• Plaintiff Counsel: Michael Fysh QC, Michael Hwang SC, Tan Tee Jim and Jason Chan (Allen & Gledhill)
• Date: 09 April 1998
• Docket Number: Civil Appeal No 52 of 1997 (Suit No 1900 of 1995)
• Court: Court of Appeal (Singapore)
• Subject Matter: Extent to which admissible,Use of survey evidence,Whether sufficient goodwill by relevant date,Trade Marks and Trade Names,Damage,Survey evidence on public opinion,Relevance of common field of activity,Evidence,Misrepresentation or confusion,Nature of goodwill,Passing off,Goodwill,Whether real risk of misrepresentation,Activities relevant to establishing goodwill,Whether strong likelihood of damage,'Millenia' and 'Millennium',Tort,Admissibility of evidence,Relevant date for establishing goodwill in quia timet action,Quia timet action

Judgment:

LP THEAN JA

(delivering the grounds of judgment of the court): This appeal concerns the use of a name `Millenia` for hotel and related services. In the proceedings below the respondents claimed against the appellants damages and an injunction to restrain the appellants from passing off their hotel and related services as and for those of the respondents by the use of the name `Millenium` or `Millennium` or similar names. Chao Hick Tin J who heard the case allowed the claim and granted to the respondents an injunction restraining the appellants from operating any hotel in Singapore under the names, `Millennium`, `Millenium`, `Millennia`, `Millenia` or any other similar names and from representing or advertising in Singapore or elsewhere that they operate a hotel in Singapore under any of those names. Against this decision, the appellants appealed. We dismissed the appeal, and now give our reasons.

2. The facts

The appellants are a company incorporated in the Cayman Islands and are the owners of a large number of hotels spread over many countries. These include The Gloucester Hotel, The Chelsea Hotel and Bailey`s Hotel in London, The Millenium Hilton (formerly known as Hotel Millenium), Millennium Broadway (formerly known as Hotel Macklowe) and The Plaza in New York, and Millennium Queenstown and Millennium Christchurch in New Zealand. In Singapore, the appellants own four hotels: Orchard Hotel, King`s Hotel, Harbour View Dai-ichi Hotel and Novotel Orchid. The appellants are a subsidiary of City Developments Ltd, a public-listed company in Singapore.

3.The respondents are a privately-owned company engaged in, among other things, property development and real estate businesses. They are the owners and developers of a huge building complex known as the `Millenia` standing on a large plot of land with an area of 80,260 sq m (863,600 sq ft) situate at Temasek Avenue/Raffles Boulevard. The complex consists of two office towers, `Millenia Tower` and `Centennial Tower`; a shopping mall called `Millenia Walk`; and two hotels, `The Ritz-Carlton, Millenia Singapore` (RCMS), which is a super-deluxe `five-star` hotel, and `Conrad International Centennial`, which is a deluxe `five-star` hotel. The respondents are part of the `Pontiac group` of companies, which own other property developments, such as The Regent Singapore, a deluxe `five-star` hotel, and The Colonnade, a posh condominium in a prime district in Singapore.

4.The respondents conceived the development of the `Millenia` complex sometime in the late 1980s. They appointed three world-renowned American architects, Philip Johnson, Kevin Roche and John Burgee, to design the `Millenia`. Two well-established firms, Hirsch Bedner and Associates and James Northcutt Associates, were engaged as the interior design consultants for RCMS. The respondents` directors took a personal hand in the planning and construction of the complex.

5.In the early stages of the project, the development was simply referred to as `The Pontiac Marina Project`. At one point in time, the name, `Beacon Place`, was canvassed and this proposed name was submitted to the Advisory Committee on Street Names in 1991. However, as the respondents` directors were not comfortable with the name, an alternative was sought. Mrs Donna Naomi Kwee, the wife of a director and the president of the respondents, Mr Kwee Liong Tek, suggested the name `Millennium`. She came up with this name when she read chapter 60 of the book of Isaiah in the Old Testament of the bible which was headed `The Glory of Israel in the Millennial Kingdom`. Taking up on this suggestion, the directors first adopted the name `Millennia`, and on 3 November 1992 the respondents wrote to the Advisory Committee on Street Names to indicate their wish to change the name, `Beacon Place`, to `Millennia City` or `The Millennia`. Subsequently, after further discussion with various parties including their marketing advisers, the directors finally decided on the name, `Millenia`. The name was deliberately `flawed` by removing one letter, `n`, so as to make the name more distinctive and also give the word only eight letters, eight being an auspicious number to the Chinese. Accordingly, on 5 October 1993, the respondents informed the Advisory Committee that they would like to have the name `Millennia` spelt with only one `n`, ie `Millenia`. On 24 November 1993, the Advisory Committee gave its approval to the respondents to rename its development as `Millenia`.

6.On 28 March 1994, the respondents filed four applications with the Registry of Trade Marks to register `Millenia Singapore` and the `M` logo as a service mark in two classes, Class 36 (real estate services including management and renting of premises) and Class 42 (hotel and accommodation services). Before filing the applications, the respondents` solicitors, M/s Drew & Napier, had in January 1994 conducted searches at the Registry of Trade Marks and the Registry of Companies and found that no other person had applied to register `Millenia` or other similar name as a service mark for similar services or as a company or business name for similar businesses.

7.In the second quarter of 1994, the respondents began to look for tenants for the Millenia Tower and Millenia Walk. On 22 July 1994, the first tenant accepted the letter of offer for an office unit at the Millenia Tower. By the date of the formal launch of the Millenia Tower, ie 22 February 1995, more than 50% of the floor space had already been leased out.

8.On 10 July 1994, an operating agreement was entered into between the respondents and the American company, Ritz-Carlton Co of Atlanta (Ritz-Carlton), in which the latter was appointed to be the operator of the super-deluxe hotel in the `Millenia` complex. On 18 July 1994, the operating agreement was publicly announced. Ritz-Carlton is a well-established hotel operator and runs numerous hotels in Europe and the United States; but it has a limited presence in Asia. The hotels operated by them are all the creme de la creme of the hotel industry and have been recipients of numerous awards of excellence. In 1992, they achieved the highest honour in the United States of America by becoming the first hospitality organisation to win the prestigious Malcolm Baldrige National Quality Award.

9.On 11 July 1994, the respondents publicly announced, through a press release, the launch of their development which would be named the `Millenia`. This was followed by a flood of newspaper, television and other forms of media coverage on the Millenia project. On 14 July 1994, the first advertisement of the Millenia appeared in The Straits Times . The respondents` strategy was to control the release of news on the project so that there would be a steady stream of press releases and media events to `drip-feed` the newspapers. This would ensure a continuous flow of information about the Millenia project to the public, keeping the project at the forefront of the public`s awareness. Approximately a sum of $1m was spent on marketing the `Millenia` name.

10.Under the operating agreement made with Ritz-Carlton the respondents were entitled to add another name to the name `Ritz-Carlton` as the name of the hotel. On 14 September 1994, the respondents in exercise of their right under the agreement informed Ritz-Carlton of their proposal to name the hotel `Ritz-Carlton, Millenia Singapore` (RCMS) and this was agreed to by Ritz-Carlton on 19 September 1994. According to Arthur Kiong, the director of sales and marketing of RCMS, the purpose for inserting the word, Millenia, as part of the name of the hotel was to ensure that, on the expiry of the operating agreement, the respondents` goodwill in the name, `Millenia`, would be retained. If the hotel had only the operator`s name, the owner would be disadvantaged. In particular, if and when the operating agreement terminates and the operator leaves, the owner would be left with a nameless hotel, and marketing efforts would then have to be made afresh to acquaint the public with the new name.

11.On 17 October 1994, a topping-off ceremony for RCMS was held. Many distinguished and prominent guests were invited, amongst whom was the Minister of State for Trade and Industry. The event received widespread media coverage and the hotel`s name, `Ritz-Carlton, Millenia Singapore`, was made known to the public.

12.We now turn to the narrative of the appellants in relation to their use of the name `Millennium` for their hotels. As early as December 1993, the appellants began a search for a global brand for their hotels worldwide. The appellants considered that a global brand would enable them to promote and effectively cater their hotels to an international market and enable them to become a major player in the hotel and leisure industry. While the search was underway, the appellants acquired a couple of hotels in America. First, on 14 February 1994, the appellants purchased the Hotel Millenium in New York. They were advised by Hilton Hotels to retain the name `Millenium` as part of the name for that hotel, and accordingly, in July 1994 the hotel was renamed Millenium Hilton Hotel. Next, in September 1994, the appellants acquired another hotel in New York, namely, Hotel Macklowe. Under the terms of their purchase they had six months to change the name of the hotel, and it was subsequently changed to Millennium Broadway.

13.Sometime in 1994, one Mr Gordon Stevenson, presently the managing director of Interactive Entertainment Ltd in the United States, was consulted by the appellants on the marketing of their hotels. On 14 October 1994, Mr Stevenson met with the appellants` chairman, Mr Kwek Leng Beng, and one of their directors, Mr Kwek Leng Peck, to discuss a strategic marketing plan. According to Mr Stevenson`s affidavit, on that occasion, the chairman asked him about the suitability of the name, `Millennium`, as a global brand. However, nothing...