Jet Aviation (Singapore) Pte Ltd v Jet Maintenance Pte Ltd

• Jurisdiction: Singapore
• Judge: Warren Khoo L H J
• Judgment Date: 13 March 1998
• Neutral Citation: [1998] SGHC 74
• Date: 13 March 1998
• Subject Matter: Defendants' logo bore similar name to that of plaintiffs',Passing off,Evidence,Burden on party alleging passing off,Whether defendants' failure affected plaintiffs' burden of proof in asserting passing off,Difficulty of proving descriptive words refering only to business of party asserting passing off,Whether instances of confusion cited by plaintiffs sufficient to sustain action for passing off,Differences in nature of business, clientele and market served,Goodwill,Whether plaintiffs suffered any loss or reasonable likelihood of loss resulting from confusion of names,Burden of proof,Whether plaintiffs could sustain action for tort of passing off,Tort of passing off,Whether defendants succeeded in establishing defence of goodwill for its business and services here,Rationale behind law of passing off,Tort
• Docket Number: Suit No 204 of 1996
• Published date: 19 September 2003
• Defendant Counsel: Lau Kok Keng and Andy Leck (Wong & Leow)
• Court: High Court (Singapore)
• Plaintiff Counsel: Anthony Lee and Yee Kwok Hon (Bih Lee & Lee)

Judgment:

WARREN LH KHOO J

Cur Adv Vult

By this action, the plaintiffs, Jet Aviation (Singapore) Pte Ltd, seek an injunction to restrain the defendants, Jet Maintenance Pte Ltd, from passing off the defendants` business as the plaintiffs` business by the use of a logo bearing the words `Jet Aviation`.

2.The plaintiff company was incorporated in Singapore in March 1980. Its founder, principal shareholder and director is Mr Robert Greatbatch.

3.The defendants, also incorporated in Singapore, are ultimately owned by Hirschmann Industrial Holding Ltd of Switzerland, which owns also 19 other corporate entities in various parts of the world. These entities have different corporate names, but all have the words `Jet Aviation` as part of their names. All of them also use the same logo in connection with their business. It consists of the words `JET AVIATION` in blue, preceded by a device in red which is said to depict, in a stylised way, the shape of a stag`s head. The idea, not apparent of course to the uninitiated, is to link it with the name of the holding company mentioned above, `Hirsch` being the German word for a stag. The figure and the words `JET AVIATION` are linked by a line under them.

4.Collectively, these entities, including the defendants, are referred to by themselves, if not by others as well, as the Jet Aviation Group of Companies (the Jet Aviation Group). The group, of course, is not itself a legal entity, but a label to a collectivity, but it is a useful label, and I shall use it.

5.The group has its origin in a company established in 1967 at Basel, Switzerland to engage in the maintenance and servicing of corporate aircraft. This was followed by the establishment of companies in other parts of Switzerland, and the extension of their business to include business aircraft management and chartering and ground handling. This was followed in the 1970`s by expansion into Germany and Saudi Arabia, and in 1982, into the United States. In all these countries, new and separate companies were set up. As stated above, the name of each company contains the words `Jet Aviation` and each uses the logo in connection with its trading activities.

6.As far as Singapore is concerned, there have been what might be called some facilitation activities undertaken for owners of private aircraft going back to the late 1970s (more about which later). In December 1989, a more permanent presence was established with the incorporation of a company by the name of Hirschmann Singapore Pte Ltd, as a wholly-owned subsidiary of Hirchsmann Industrial Holding Ltd. The group applied to register a company with the name `Jet Aviation Business Jets Pte Ltd`, but this name was not accepted by the Registry of Companies because of the existence of the plaintiff`s name on the register. It was then that the group first became aware of the existence of the plaintiffs in Singapore. Representatives of the group entered into negotiations with Mr Greatbatch to try to get to use the plaintiffs` name for their company in Singapore. But the parties could not agree on the terms.

7.Mr Greatbatch had introduced various parties in the aviation industry in this region to the group, including DHP Aviation Pte Ltd, an aircraft maintenance company based at Seletar Airport. However, to Mr Greatbatch`s surprise, when the negotiations broke down, the group proceeded to acquire this company and started using it as the vehicle for its business here. That was in or about September 1995. The DHP name was changed to the defendants` present name. The company`s facilities were retrofitted and refurbished. Signboards bearing the `Jet Aviation` logo (described above) were put up, vehicles had this logo painted on their side panels, staff uniforms had woven badges containing the logo sewn on them, and letterheads used by the defendants had the logo printed at the top, while the defendants` company name appeared at the bottom.

8.The plaintiffs objected to the use of the `Jet Aviation` logo by the defendants. There was no difficulty about the use of the defendants` name itself, as there is no similarity between it and the plaintiffs` name. It was the use of the logo containing the words `JET AVIATION` that the plaintiffs objected to. On 1 February 1996, the plaintiffs commenced the present action. They applied for an interlocutory injunction to restrain the defendants from using the `Jet Aviation` logo. The application was dismissed, as the defendants agreed to voluntarily cease using the logo pending trial of the action.

9. Issues in the case

The central issue in this case is whether the plaintiffs have by the use of the words `Jet Aviation` in connection with their business so intimately identified the words with their business that the use of the words by the defendants would have the effect of passing off the defendants` business as that of the plaintiffs. To answer this question, it is necessary to see what are the respective businesses carried on by the two parties. The Jet Aviation Group`s business, far flung and extensive as it is, may be encapsulated in a few words. Basically, it is concerned with the business of and about private aircraft (business jets, executive jets, whatever one prefers to call them). It owns and operates its own aircraft; it charters aircraft to customers; it operates private jets for its customers; it also services and maintains private jets for its customers.

10.The plaintiff company is essentially an extension of Mr Greatbatch. He is the major shareholder and decision-maker in the company. When he incorporated the company in 1980, he had behind him many years of experience selling small aircraft from US and British aircraft manufacturers, including sales to parts of Africa, Eastern Europe, as well as Indonesia and Philippines. A British national, he has been based in Singapore since 1974, and there is no doubt that he knows the regional market here well.

11.Mr Greatbatch describes the plaintiff company`s business as that of providing aviation consultancy and product representation and support services. These services, he says, include flight simulation training and consultancy, provision of engineering manpower requirement to the aerospace industries, marketing services for aerospace manufacturers and operators, and distribution of aviation products. He says the company also provides air charter and airline management services.

12.In the directors` report attached to accounts of the company from 1980 to 1992, the principal activities of the company were described as those of providing aircraft spares procurement services to airline and air charter companies, acting as a broker for the sales and purchases of aircraft and related spare parts, and providing aviation consultancy services.

13.The directors` report for the year 1993 and 1994 state that the company did not conduct any business activities under its name, and that the business of the company was conducted under the name of Airtrade Parts Direct, a US supplier of aircraft spare parts which the plaintiffs had acquired. However, the 1995 report states that Airtrade Parts Direct did not conduct any business activities in that year, but that the company itself did so. One, I do not know if it was the only one, contract that the company entered into in that year was with an engineering subsidiary of Singapore Airlines for the supply of aircraft technicians and engineers.

14.The nature of the plaintiff company`s business and the manner in which it is carried on are dictated by the fact, as I stated earlier, that the company is essentially an extension of Mr Greatbatch. What the company can do is much tied to what Mr Greatbatch personally can do. In most of the transactions which have involved the provision of hardware and services, the company`s usual role has been that of a broker, as stated in the directors` reports referred to earlier. The actual suppliers are third parties in the more advanced countries in the West.

15.In the early years of the company, from 1981 to 1987, the sales turnover reached as high as $3m. It was impressive for an essentially one-man company. However, from 1988 onwards, except for a burst in 1990 and 1991, the business has been a mere shadow of its former self, with sales of only a few hundred thousand dollars. The uncertain direction of the company is shown by the decision to trade under the Airtrade Parts Direct name in 1993 and 1994. At that time, Airtrade`s name and logo was actively promoted, more so than the company`s own name. For instance, when Mr Greatbatch decided to go into a venture in Malaysia, the company was named `Airtrade Parts Aviation Consultants (M) Sdn Bhd.`, rather than after the plaintiff company`s own name.

16.It is not known what business the company has been doing since 1995, or the extent of it. I would assume that Mr Greatbatch has not been idle, and would have been looking for opportunities wherever they may be found in this region in the general areas of activities he has been engaged in over the years.

17. So?

I return to the question I posed earlier. Has the plaintiff company`s name become by user so intimately identified with its business or services that the use of the words `Jet Aviation` by the defendants has, or is likely to have, the effect of passing off the defendants` business or services as that or those of the plaintiffs?

18.From what has been described above, it seems to me that there is a gulf of difference in the nature of the businesses the parties are engaged in. There is undoubtedly a difference in the clientele and in the market that each serves. Furthermore, those that either party serves are people in the industry or people (such as the owners of private jets) who are sophisticated and knowledgeable as to who they are dealing with.

19.Mr Gerard De Vaz, the founder and managing director of an aircraft chartering company called Region Air Pte Ltd, knows Mr Greatbatch. He knows Mr...