The Singapore Professional Golfers' Association v Chen Eng Waye

• Jurisdiction: Singapore
• Judgment Date: 24 May 2012
• Date: 24 May 2012
• Docket Number: Suit No290 of 2011
• Court: High Court (Singapore)

The Singapore Professional Golfers' Association

Plaintiff

and

Chen Eng Waye and others

Defendant

[2012] SGHC 113

Tan Lee Meng J

Suit No290 of 2011

High Court

Tort—Passing off—Goodwill—Plaintiff suing defendants for passing off—Whether plaintiff had goodwill in both senior and non-senior professional golfing activities

Tort—Passing off—Misrepresentation—Descriptive names—Plaintiff suing defendants for passing off—Whether those with goodwill towards plaintiff would believe third defendant was connected with it—Whether plaintiff's name descriptive—Whether plaintiff's name subsequently became distinctive by acquiring secondary meaning—Whether sufficient differences between plaintiff and third defendant's names

Tort—Passing off—Misrepresentation—Plaintiff suing defendants for passing off—Whether those with goodwill towards plaintiff would believe third defendant was connected with it—Whether there was bad faith of defendants in choosing third defendant's name

The first and second defendants had set up the third defendant, the Singapore Senior PGA LLP (‘SSPGA’), which catered to golfers aged 50 and above. The plaintiff, the Singapore Professional Golfers' Association (‘SPGA’), sued the defendants in passing off for using the name ‘Singapore Senior PGA LLP’ and the initials ‘SSPGA’. The plaintiff's previous solicitors had issued a cease-and-desist letter requesting the defendants to stop using the offending name, to change it to a different name, to publish apologies in the newspapers and to pay damages and costs to the plaintiff. Separately, the third defendants applied successfully to trademark its name and its logo and this went unopposed by the plaintiff.

In its passing off action, the plaintiff sought to injunct the defendants from passing off the third defendant as the plaintiff and any event organised by it, to demand that the defendants immediately terminate the third defendant's trade mark registration or to change the third defendant's name, to deliver up or destroy all offending packaging, labels or materials with the third defendant, and to pay damages.

Held, dismissing the claim:

(1) Goodwill could be limited to particular sections of the public which could be small, so long as they were not negligible. The plaintiff had some goodwill in professional golfing activities whether at the date when the third defendant advertised for its Senior Professional Qualifying Test or when the third defendant was set up. The plaintiff's goodwill was not confined only to non-senior professional golfers' activities given that it had previously arranged for its senior members to participate in senior professional golf tournaments: at [18] and [21].

(2) Whether an alleged misrepresentation was deceptive depended on the descriptiveness or fanciful nature of the name or mark sought to be protected. Highly distinctive names or marks were more likely to be protected, whereas where descriptive words were used in names, only slight differences between the parties' names could defeat a claim in passing off. This was because courts were reluctant to allow a monopoly of ordinary words: at [26].

(3) In determining whether the plaintiff could establish misrepresentation by the defendants, the first question to ask was whether the plaintiff's name was descriptive. If it was so, then two further questions might be asked, namely whether the descriptive term had subsequently become distinctive by acquiring a secondary meaning and if not, whether there were small differences between the names of the plaintiff and the third defendant: at [28].

(4) The plaintiff's name was clearly descriptive and not at all fanciful or inherently distinctive. Each of the words making up the plaintiff's name was an ordinary word found in an English dictionary and the addition of the geographical term of ‘Singapore’ did not alter this: at [29].

(5) The burden of proving whether the plaintiff's name had acquired a secondary meaning lay with it. This burden was a heavy one. A descriptive name did not become distinctive solely because it had been in use for a long time. Here, the plaintiff simply made bald assertions about the distinctiveness of its name without furnishing proper evidence of this. The plaintiff's name did not acquire a secondary meaning to become distinctive: [35], [37] to [39] and [42].

(6) For descriptive names or marks, minor differences would suffice to distinguish one name or mark from another. Here, the plaintiff accepted that there were only minor differences between its name and the third defendant's name. The defendants had also taken additional measures to distinguish the third defendant's business from the plaintiff's, such as by choosing a different business entity, logo and domain name: at [49] and [51].

(7) The representation had to be confusing to the relevant persons for misrepresentation to be established. The court would consider whether the average reasonable person, with characteristics reflective of the relevant public as identified under the examination of goodwill, was likely to be confused by the defendant's misrepresentation. Relevant factors to consider included whether parties were engaged in the same trade or provision of services, type of market for the plaintiff's services, manner in which the plaintiff's services were marketed and characteristics of those with goodwill towards the plaintiff. Persons with goodwill towards the plaintiff would be knowledgeable about the game of golf, other professional players, the golf circuit and the professional bodies they were going to join. These people would realise that the plaintiff was different from the third defendant, given that there were sufficient differences between the names and logos of the plaintiff and the third defendant: at [53] to [55].

(8) Intention to pass off was not a prerequisite to liability under passing off. But bad faith of the defendant made it easier to establish passing off. Bad faith was a very serious allegation. It did not follow that there was bad faith in every defendant who set up a competing body upon resigning from the plaintiff body. Here, there was no bad faith on the part of the defendants. The defendants, in picking the name for the third defendant, were simply identifying their target market and seeking to emulate the practices of golfing associations abroad: at [56] and [58].

Annabel's (Berkeley Square) Ltd v G Schock [1972] RPC 838 (refd)

British Legion v British Legion Club (Street) Ld (1931) 48 RPC 555 (distd)

British Medical Association v Marsh (1931) 48 RPC 565 (distd)

Cellular Clothing Co Ltd v Maxton and Murray [1899] AC 326 (refd)

CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR (R) 975; [1998] 2 SLR 550 (refd)

Chinese Calligraphy Society of Singapore, The v Khoo Seng Kong [2008] SGHC 121 (distd)

CIR, The v Muller & Co's Margarine Ltd [1901] AC 217 (refd)

Frank Reddaway and Frank Reddaway & Co Ltd v George Banham and George Banham & Co Ltd [1896] AC 199 (refd)

Huntley and Palmer v The Reading Biscuit Co Ltd (1893) 10 RPC 277 (refd)

Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155 (refd)

Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd [2000] 1 SLR (R) 687; [2000] 2 SLR 766 (refd)

Mothercare UK Ltd v Penguin Books Ltd [1988] RPC 113 (refd)

Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR (R) 216; [2009] 3 SLR 216 (folld)

Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 (refd)

Parker-Knoll Ltd v Knoll International Ltd [1962] RPC 265 (refd)

Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (refd)

Society of Accountants and Auditors v Goodway and London Association of Accountants Ltd [1907] 1 Ch 489 (distd)

Star Industrial Co Ltd v Yap Kwee Kor [1974-1976] SLR (R) 581; [1975-1977] SLR 20 (refd)

Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd [2000] 2 SLR (R) 214; [2000] 3 SLR 145 (folld)

Societies Act (Cap 311, 1985 Rev Ed)

Trade Marks Act (Cap 332, 2005 Rev Ed) ss 7, 7 (1) (b) , 23 (1) , 23 (4)

Tan Tee Jim SC and Jeremiah Chew (Lee & Lee) for the plaintiff

Wun Rizwi and Ow Shi Jack (RHT Law LLP) for the defendants.

Judgment reserved.

Tan Lee Meng J

1 The Singapore Professional Golfers' Association, the plaintiff, also uses the shortened form of its name, ‘Singapore PGA’, and its initials, ‘SPGA’. It instituted the present proceedings against the first defendant, Mr Chen Eng Waye (‘Mr Chen’), the second defendant, Mr Chen Xiangyi, Roy (‘Mr Roy Chen’) and the third defendant, Singapore Senior PGA LLP, with respect to the defendants' alleged unauthorised use of the name ‘Singapore Senior PGA LLP’ and the initials, ‘SSPGA’. The defendants asserted that the third defendant was entitled to use the name ‘Singapore Senior PGA LLP’ and initials ‘SSPGA’.

Background

2 The plaintiff is a non-profit golfing association managed by an elected executive committee comprising qualified and experienced coaches and touring professionals. It was registered under the Societies Act (Cap 311, 1985 Rev Ed) in 1973 and its objectives include the promotion of the game of golf and fostering of good relations with local and regional golfing associations. According to the plaintiff's website, 150 professional golfers are currently registered with it. Of these, 110 golfers are locals and the remaining 40 are overseas associate members.

3 Mr Chen, a professional golfer, was a member of the plaintiff for around one year and nine months. He was certified as a teaching professional by the United States Golf Teachers Federation in September 1999. He was suspended by the plaintiff for 12 months on 12 July 2007 because he participated in a golf tournament not sanctioned by the plaintiff at the Jurong Country Club from 24-25 May 2007. Five months later, he wrote to the plaintiff on 10 December 2007 to terminate his membership. On 31 January 2008, the plaintiff accepted his...