The Chinese Calligraphy Society of Singapore v Khoo Seng Kong

• Jurisdiction: Singapore
• Judge: Tay Yong Kwang J
• Judgment Date: 30 July 2008
• Neutral Citation: [2008] SGHC 121
• Court: High Court (Singapore)
• Published date: 23 July 2009
• Year: 2008
• Plaintiff Counsel: Tan Tee Jim SC, Christopher De Souza, Lim Ke Xiu (Lee & Lee)
• Defendant Counsel: Chan Chun Hwee Allan (C H Chan & Company)
• Subject Matter: Tort,Passing off
• Citation: [2008] SGHC 121

30 July 2008

Tay Yong Kwang J:

The plaintiff’s case

1 The plaintiff is a society registered under the Societies Act on 19 December 1968. Its objectives include the promotion and advancement of Chinese calligraphy and the maintenance and improvement of the said art form in Singapore. The plaintiff has organised and conducted numerous activities here and abroad to further its objectives. These include exhibitions, competitions, classes and publication of magazines.

2 In 1993, the National Arts Council (“NAC”) agreed to lease the building located at 48 Waterloo Street to the plaintiff under the NAC’s Arts Housing Scheme. Sometime about January 1994, the plaintiff adopted the name Singapore Calligraphy Centre (and its rendition in the Chinese language, “Xin Jia Po Shu Fa Zhong Xin”) (“the names in issue”) for the said building. It used the grants from the NAC and public donations to restore and reconstruct the building and, on 1 September 1995, it moved into the building. The Singapore Calligraphy Centre (“the Centre”) was declared open by the Minister for Home Affairs, Mr Wong Kan Seng, on 27 May 1996.

3 Many of the activities at the Centre were publicised in the Chinese and the English language media, both locally and internationally. Many government officials have also visited the Centre. Classes in calligraphy were also held in the building. By reason of all these and as the plaintiff has been using the names in issue since September 1995, it claims to have built up a valuable reputation or goodwill in the said names. The names in issue, the plaintiff avers, have become associated with the plaintiff and/or its activities.

4 The defendant is a sole proprietorship registered on 21 April 2005. Its place of business is at 323A, New Bridge Road. The defendant’s business name is identical to the name used for the plaintiff’s building and its activities. The defendant’s activities are stated to be “calligraphy promotion” and “exhibition organisers”. The defendant used to be a member of the plaintiff and must therefore have been aware of the plaintiff when he registered his business in April 2005.

5 In this action, the plaintiff claims that the defendant passed off, attempted to pass off and/or enabled or caused others to pass off his business and its activities as the plaintiff’s or as associated with or connected to the plaintiff and/or its services and activities. The defendant paid no heed to the plaintiff’s solicitors’ letter of 22 June 2006 asking him to cease and desist from his passing off activities. Accordingly, the plaintiff claims an injunction to restrain the defendant and his agents from passing off, attempting to pass off, causing, enabling, assisting and/or authorising others to pass off his firm as the plaintiff, or his goods, services or activities as the plaintiff’s or as associated with or connected thereto. The plaintiff also seeks a mandatory injunction to compel the defendant and his agents to take all necessary steps to immediately terminate the registration of the sole proprietorship known as “Singapore Calligraphy Centre” or to change it to another name which is not identical with or confusingly similar to the names in issue. It also wants the defendant to deliver up all printed or written matter, the use of which would be a breach of either of the two injunctions sought. The plaintiff further seeks an assessment of damages or an account of profits.

6 Sometime around March 2006, one of the plaintiff’s members, also a teacher at the Centre, informed its current president, Tan Siah Kwee, that the Chinese version of the names in issue had been used in conjunction with the names of other calligraphy organisations in Singapore, including the defendant’s, as part of a posting on an internet calligraphy forum at www.sfzk.net. To aggravate matters, the Chinese name was placed second on the list of names of such organisations. The order in which the names of organisations appear is determined by etiquette in the calligraphy community. If no explanatory note is given next to the list, it would be implied that the names were ranked in order of importance. Such a placing therefore implied that the Centre and, accordingly, the plaintiff, were inferior to the preceding organisation. The funding of the plaintiff, which is partly from public donations, would be affected if the public were misled into donating to the defendant’s business entity instead. Further, enrolment fees for the calligraphy classes would be lost if students of the art form signed up with the wrong entity. The plaintiff also has no control over the activities of the defendant’s business. The Centre’s reputation could suffer if some adverse publicity should affect the defendant’s business because members of the public would think that the defendant’s business is connected to the Centre in some way.

The defendant’s case

7 In his Defence, the defendant acknowledges that he used to be actively involved in the operations of the plaintiff. He was a member of the plaintiff since its inception in 1968 until around 1988 when he left the society after some disagreement with Tan Siah Kwee (who testified at the trial for the plaintiff). The defendant disputes the averment that the public in Singapore would associate the names in issue with the plaintiff whose registered name is “The Chinese Calligraphy Society of Singapore”. Further, the defendant’s name, “Singapore Calligraphy Centre”, is said to be totally different from the name displayed on the exterior of the plaintiff’s building at 48 Waterloo Street, namely, “Singapore Calligraphy Centre (1995)”. The defendant disputes that the plaintiff could rely on the name or external signage on a building which is leased and not owned to claim ownership of and goodwill in that name. He further avers that the plaintiff’s use of the names in issue for the said building was “tainted with illegality” as it did not apply to the Street and Building Names Board for approval to use the names. In any event, such approval would not have been given by the Board because of the use of the word “Singapore” in the names.

8 The defendant denies having done any act calculated to deceive or which is likely to deceive members of the public by naming his business in the way he has done. He claims to be a master calligrapher who has his own style of writing and has no intention of being associated with the plaintiff.

9 He submitted more than one name to the then Registry of Companies and Businesses when he was registering his business and the names in issue were duly approved. The name in issue was, however, his first choice. After receipt of the plaintiff’s solicitors’ letter to cease and desist the use of the names in issue, the defendant decided not to commence business pending resolution of this dispute. The plaintiff’s president also registered a company in Singapore known as “Singapore Calligraphy Centre (1995)” on 15 May 2006. That, he claims, shows that the said president did not think it was confusing for a company to bear a name similar to the names in issue.

10 The defendant denies that the plaintiff is entitled to claim any loss or damage as it is a non-profit organization and both parties are actively...