Amanresorts Limited and Another v Novelty Pte Ltd

• Court: High Court (Singapore)
• Judge: Tay Yong Kwang J
• Judgment Date: 27 November 2007
• Neutral Citation: [2007] SGHC 201
• Citation: [2007] SGHC 201
• Defendant Counsel: Tan Tee Jim SC, Christopher de Souza and Lim Ke Xiu (Lee & Lee)
• Plaintiff Counsel: Alban Kang, Koh Chia Ling and Ang Kai Hsiang (Alban Tay Mahtani & De Silva)
• Published date: 04 December 2007
• Docket Number: Suit No 276 of 2006
• Date: 27 November 2007
• Subject Matter: Whether there was requisite misrepresentation,Requirement of misrepresentation,Whether tort of passing off established,Requirement for probability of damage to goodwill in respect of trade or business,Whether plagiarising superlatives describing trade mark proprietor's resort amounting to fraud,Sections 55, 55(3)(a) Trade Marks Act (Cap 332, 2005 Rev Ed),Fraud and deceit,Whether there was misrepresentation amounting to fraud,Goodwill,Requirement of consequence of misrepresentation being that relevant section of public would believe that there was business connection between trade mark proprietor and alleged infringer in relation to goods or services provided by them,Test for tort of passing off to be established,Misrepresentation,"Relevant sector of the public in Singapore",Whether loss in form of loss of uniqueness and exclusivity, branding fees and prejudice to future real estate development plans amounting to requisite damage,Misrepresentation required,Whether there was goodwill,Whether making reference to similarly-named resort amounting to fraud,Trade Marks and Trade Names,Tort,Requirement of consequence of misrepresentation being that relevant section of public would believe that goods or services of alleged infringer were those of trade mark proprietor,"Likely to damage the interests of the proprietor",Requirement of real risk that alleged infringer's representation would deceive substantial number of persons of relevant section of public,Requirement of damage,"Connection",Damage required,Requirement of goodwill,Whether there was requisite damage,Damage,Passing off,Section 2(8) Trade Marks Act (Cap 332, 2005 Rev Ed),Words and Phrases

27 November 2007 Judgment reserved.

Tay Yong Kwang J

Synopsis of the case

1 The plaintiffs are the proprietors of various trademarks worldwide consisting of the word “Aman” or the prefix “Aman”, including Amanusa, which is, however, not a Singapore trademark at the material time. Amanusa is the name of one of the plaintiffs’ exclusive resorts in Bali, Indonesia.

2 The defendant is a developer of real estate in Singapore. Sometime in early 2006, it began marketing for sale a residential project undergoing construction at Yio Chu Kang Drive in the north-central part of Singapore. The project was also called Amanusa.

3 The plaintiffs alleged passing-off and a fraudulent intention to deceive on the part of the defendant. They also claimed, in the alternative, that Amanusa and/or Aman were well-known trademarks which were entitled to protection pursuant to s 55 of the Trade Marks Act (Cap 332, 2005 revised edition).

4 At the conclusion of the trial, I held that there was passing-off but I was not satisfied that there was a fraudulent intention to deceive. I also held that the plaintiffs’ trademarks were well known trademarks and that the plaintiffs were entitled to an injunction (with consequential directions) to restrain the defendant from using them, in particular, Amanusa, in relation to any form of accommodation. The injunction was confined to the plaintiffs’ trademarks and did not extend, as pleaded by the plaintiffs, to all words which included the prefix “Aman”. I did not order an inquiry as to damages or an account of profits as there was no immediate damage suffered by the plaintiffs as a result of the use of the name Amanusa. The plaintiffs were awarded 90% of the costs of the action, the deduction being in respect of the issues on which they failed. No certificate for costs for more than two solicitors was ordered under O 59 r 19 of the Rules of Court (Cap 322, R 5)

The plaintiffs’ case

5 The plaintiffs’ evidence was adduced principally through their director, Gregory Sirois. The 1^st plaintiff is a company incorporated in Hong Kong, which is a party to the Paris Convention and is a member of the World Trade Organisation. It is represented in Singapore by the 2^nd plaintiff, a company incorporated here. The plaintiffs’ International Corporate Office and International Reservations Office are located in Singapore. Both plaintiffs are wholly-owned subsidiaries of Silverlink Holdings Limited, a British Virgin Islands company, and operate under the umbrella of the Amanresorts group consisting of more than 80 companies. The Amanresorts group was founded in the mid-1980s by Adrian Zecha, a Javanese-born Dutch national and businessman. The plaintiffs operate many exclusive, ultra-luxurious boutique resorts situated at beautiful locations around the world, catering to the upper end of the tourist market by emphasizing privacy and impeccable service. They are the proprietors worldwide of trademarks consisting of the word “Aman” and/or containing the prefix “Aman”, such as Aman, Amanresorts, Amandari, Amanpuri and Amanyara, for a wide range of goods and services, including the provision of resorts and accommodation. In respect of Amanusa mark, the plaintiffs own the trademark in Brunei, Hong Kong, Indonesia, Malaysia, Myanmar and the Philippines. There used to be a Singapore Amanusa trademark between 1998 and 2001 but that was not renewed following a shift in the plaintiffs’ commercial strategy at that time. The plaintiffs also claimed to be the owners of the reputation and goodwill in the said trademarks, particularly Amanusa, both in Singapore and worldwide,.

6 The defendant is a Singapore company incorporated in May 2005. It is part of the Novelty group of companies, a family-owned business involved in the development and sale of residential properties and in the hotel and resort business.

7 The plaintiffs’ first resort was the Amanpuri, which opened in 1988 in Phuket, Thailand. The second resort was the Amandari in Bali, Indonesia. In 1990, the plaintiffs built their first real estate development of 31 villa homes at the Amanpuri in Phuket. These homes provided long-term accommodation. While the resort hotel business was central to their business, the plaintiffs also considered the development of such long-term accommodation as a significant part of their core business. In addition, the plaintiffs also offer high-value experiences for their guests, such as Aman Cruises, Aman Weddings and Amanusa Golf Experience.

8 In 1992, the Amankila and the Amanusa opened in Bali. These were the second and the third of the plaintiffs’ resorts on that island. The architects who designed the resort won an award in 1993 for its design. From 1988 to 2006, 16 Aman-prefixed resorts sprung up all over the globe but with most in Asia. The plaintiffs also acquired two resorts which operated under their trade name and house mark “Amanresorts”. These were the Hotel Bora Bora, French Polynesia, in 1989 and the Amanresorts Le Melezin, Courchevel, France, in 1992.

9 The plaintiffs have also, with various partners, developed and marketed long-term residential accommodation at some of their resorts, which gradually became known as Aman Villas. The development of such branded real estate projects was part of a worldwide trend whereby luxury hotel groups would develop and manage branded long-term residential projects. Conversely, developers of houses and condominiums have also started building hotels and resorts. There was therefore an ongoing convergence of the two erstwhile separate industries. In Singapore, for example, the Shangri-La Hotels and Resorts manage the Shangri-La Residences, a branded residential condominium development, and the Shangri-La Apartments, a project involving branded serviced apartments. Similarly, Starwood Hotels & Resorts Worldwide would be managing the six-star St Regis Hotel together with the St Regis Residences.

10 The plaintiffs have received many requests from developers to use the Aman brand name for their projects in return for a branding fee. Such an arrangement would increase the prestige and price of the projects. The plaintiffs would typically charge a branding fee of 10% of the price of the units in the projects and would be responsible for the design of the projects and, for another fee, their management upon completion of construction. The plaintiffs are currently developing residential projects bearing the Aman brand in various parts of the world, for instance, USA, Bahamas, Greece and India. Their joint-venture partner has also acquired land for developing Amanusa villas adjacent to the Amanusa resort. Such branded developments were not necessarily confined to villas in remote areas. The plaintiffs have signed agreements for high-rise developments in Tokyo and New York.

11 Worldwide sales for the plaintiffs’ goods and services ranged from about USD39m in 1995 to around USD86m in 2006. The annual promotional and marketing expenditure incurred by the plaintiffs worldwide ranged from USD1.9m in 1995 to about USD3m in 2006. The plaintiffs have a website at www.amanresorts.com registered in December 1996 which, for the past several years, has attracted millions of “hits”. The plaintiffs also own the domain name, www.amanusa.com and many other domain names bearing the names of the various resorts. Since 1994, they have been distributing newsletters on the Aman resorts and their related activities in Singapore and elsewhere, with subscribers worldwide numbering about 100,000 and those in Singapore numbering more than 2,000. Brochures for all the Aman resorts are available at their International Corporate Office and International Reservations Office here.

12 The plaintiffs’ resorts have received numerous awards and accolades in the travel and hospitality industries in each year of operation. They have also been featured in international and regional magazines and newspapers both in Singapore and elsewhere in the world. In one such journal, the name Aman was described as one that “inspires hushed awe”. Celebrities such as Elizabeth Taylor and Mick Jagger were reportedly frequent visitors of the resorts, described variously as “super-exclusive, superb-luxury hotels”, “usually the preserve of a very wealthy few”, “the cocoon of luxury” and “aimed at a more discerning class of traveller (never a ‘tourist’) who are cash-rich, style-conscious”. It has even been written that “a new international cult of Aman junkies has arisen” (referring to people who have visited at least one Aman resort or those who stay at Aman hotels around the world, travelling to a new one every time it opens) and that their numbers exceed 130,000. The emphasis is on quality, not quantity. The plaintiffs’ 18 resorts worldwide have only 626 rooms to offer.

13 The plaintiffs also produced statistics to show that a large number of Singaporeans visit Bali every year, with more than 35,000 annually for the years 2003 to 2005. More than 300,000 have gone to Bali between 1995 and 2005. Some 1382 Singaporeans visited the Amanusa resort in Bali between 1995 and 2005.

14 By virtue of all the above, the plaintiffs claim to have substantial reputation and goodwill in Singapore and worldwide in the names Aman, Amanusa and/or any words with the prefix “Aman” when used in relation to resorts and accommodation such that they have common law rights to the exclusive use of the same as indicators of the source and/or quality of the goods and services offered by them.

15 According to Tevy Eliazaar, the 1^st plaintiff’s Area Financial Controller, an Indonesian by race and nationality and someone who is fully conversant in Bahasa Indonesia, the word Aman meant “peace” or “peaceful” and the word “Nusa” meant “island” or “isle”. The phrase “Aman Nusa” was not a common one in Bahasa Indonesia as it was grammatically incorrect. In that language, the adjective ought to follow the noun and the correct rendition of the phrase should have been...