The Singapore Professional Golfers' Association v Chen Eng Waye

• Jurisdiction: Singapore
• Judgment Date: 20 February 2013
• Date: 20 February 2013
• Docket Number: Civil Appeal No 72 of 2012
• Court: Court of Appeal (Singapore)

The Singapore Professional Golfers' Association

Plaintiff

and

Chen Eng Waye and others

Defendant

[2013] SGCA 18

Sundaresh Menon CJ

,

Andrew Phang Boon Leong JA

and

V K Rajah JA

Civil Appeal No 72 of 2012

Court of Appeal

Tort—Limited liability partnership (‘LLP’)—Whether partners in LLP personally liable where LLP or another partner incurred tortious liability—Whether partner of LLP personally liable in tort for wrongful acts—Tort—Passing off—Damage—Whether there was real and tangible risk of substantial damage to appellant's goodwill—Tort—Passing off—Goodwill—Appellant non-profit association suing respondent LLP for passing off—Whether non-commercial organisation had goodwill that law of passing off could protect—Tort—Passing off—Misrepresentation or confusion—Descriptive names—Whether appellant's names and initials were descriptive—Whether appellant's name and initials acquired secondary meaning—Whether differences in name and initials of appellant and respondent LLP were sufficient to avert likelihood of confusion—Tort—Passing off—Misrepresentation or confusion—Relevant segment of public in which non-commercial organisations like appellant enjoyed goodwill—Whether relevant segment of public would be deceived or be led to believe that appellant and respondent LLP were connected

The appellant (‘the Appellant’) was a non-profit golfing association registered under the Societies Act (Cap 262, 1970 Rev Ed) in 1973. Its initials were ‘SPGA’ and its shortened name was ‘Singapore PGA’. Its objectives included promoting the sport of golf in Singapore and the interests of its professional golfer members. The Appellant's constitution provided for four categories of membership, including ‘professionals’ and ‘senior professionals’. The first respondent (‘the 1st Respondent’) had been a member of the Appellant for a period that was a little less than two years when he was suspended from such membership for a year on 12 July 2007 for participating in a golf tournament that was not sanctioned by the Appellant. He eventually terminated his membership with the Appellant. The second respondent (‘the 2nd Respondent’) was the son of the 1st Respondent, and they were both partners of the third respondent (‘the 3rd Respondent’). The 1stand 2nd Respondents formed and registered the 3rd Respondent as a limited liability partnership on 25 November 2010.The 3rd Respondent was named ‘Singapore Senior PGA LLP’ and its initials were ‘SSPGA’. The 3rd Respondent's activities included organising golf tournaments and golf-related activities.

In January 2011, the 3rd Respondent advertised that it would conduct a Senior Professional Qualifying Test on 22 March 2011 and 23 March 2011 exclusively for senior golfers. Very soon after this, in February 2011, the Appellant also announced that it would conduct a test for golfers aged 50 and above to qualify as senior professional golfers. On 1 March 2011, the Appellant's solicitors issued a cease-and-desist letter to the 1st to 3rd Respondents (collectively, ‘the Respondents’). The Respondents' then solicitors responded on 21 March 2011 stating, amongst other things, that the Appellant had no goodwill in senior professional golfing activities at the material time and that there was no misrepresentation on the Respondents' part.

On 25 April 2011, the Appellant commenced Suit No 290 of 2011 against the Respondents, bringing a claim for the tort of passing off.

The High Court judge (‘the Judge’) held that the Appellant had a ‘measure of goodwill’ in relation to professional golfing activities at the relevant date. This goodwill was not confined to non-senior professional golfers' activities. However the Appellant was unable to establish any misrepresentation by the Respondents. The Appellant could not show that its name and initials had acquired a secondary meaning. The Judge also found that there were sufficient minor differences between the Appellant's name and the 3rd Respondent's name to distinguish the 3rd Respondent's business from the Appellant's and the relevant segment of the public was unlikely to be confused or be led to believe that the 3rd Respondent was connected to the Appellant. The Judge also dismissed the Appellant's allegation of bad faith on the part of the 1st Respondent and the 2nd Respondent in the choice and use of the 3rd Respondent's name and initials.

Held, allowing the appeal against the 1st and the 3rd Respondents, but dismissing the appeal against the 2nd Respondent:

(1) As a first step, a claimant had to show that there was goodwill attached to its product or service before a claim in passing off can be mounted. The second inquiry was whether the defendant's actions amounted to a misrepresentation that its goods were the claimant's goods or emanated from a source that was economically linked to the claimant. Finally, it would be necessary to establish that the defendant's misrepresentation had damaged or was likely to damage the claimant's goodwill: at [20] .

(2) Although the tort of passing off was most often associated with the goodwill of traders, the protection it conferred could and did extend to non-commercial organisations. Such associations typically benefited from and depended upon ‘voluntary membership, subscriptions, donations or support’. Such support reflected the magnetic force of the particular association in question, and this constituted goodwill which could be damaged by a misrepresentation that amounted to passing off: at [23] .

(3) The Judge's finding that the Appellant did have a measure of goodwill, and that this extended to professional golfers' activities generally and was not limited to activities that pertained only to senior professional golfers, was not seriously challenged in this appeal: at [24] .

(4) In the tort of passing off concerning names, brands or marks, the claimant had to establish that its goodwill was sufficiently associated with its name or brand such that its name or brand was distinctive, in that it denoted the goods and services of the claimant to the exclusion of those of other traders (either inherently or because the name or brand in question had acquired a secondary meaning). The separate but related question of whether the name or mark was fancy or descriptive would be relevant in assessing both distinctiveness as well as the degree of protection the law would afford the claimant. This would be reflected in the level of scrutiny that was applied by the court in assessing whether the defendant had misrepresented its goods or services as those of or associated with the claimant: at [36] .

(5) The Appellant's full name was in essence a straightforward description of an association for professional golfers. Be that as it may, through use, the name ‘The Singapore Professional Golfers' Association’ had come to be associated with the Appellant when used in this combination. To the extent that the Appellant's name and initials lacked a high degree of distinctiveness in and of themselves, they had nonetheless acquired a secondary meaning by virtue of their clearly being identified with the Appellant and with the activities it organised and promoted: at [39] and [40] .

(6) As for the element of misrepresentation, the key inquiry was whether the relevant public would likely be led to believe that the goods, services or activities offered by the defendant were those of the claimant, or of an entity connected to or associated with the claimant. The relevant segment of the public would consist of all those persons who had an actual or potential interest, whether directly or indirectly, in the claimant's products, services or activities. These would be persons who were drawn to the claimant, or who sought the claimant when making decisions on goods or services that were or might reasonably have been believed to be of the sort that the claimant was engaged in, or, particularly in the context of non-commercial organisations, when seeking membership or directing donations and sponsorships to support the work of the organisation in question, or when considering or seeking accreditations, references or endorsements. In this case, the relevant segment of the public could include any person with a commercial interest in golf as well as those who had or intended to have either direct or indirect dealings with the Appellant in relation to its purposes, objects and/or activities: at [42] , [49] and [50] .

(7) The Appellant and the 3rd Respondent operated in the same field of business. Further, they catered to the same market of consumers. There was undoubtedly a strong similarity between their names and initials when viewed as a whole, given the order and combination in which the words in the names and the letters in the initials were used. This was all the more so if account was had to the imperfect recollection of the relevant segment of the public: at [56] .

(8) The minor differences in the Appellant's and 3rd Respondent's name and initials, far from displacing the likelihood of confusion, served to aggravate it. The word ‘Senior’ in fact gave the distinct impression that the 3rd Respondent was a branch of the Appellant that was catering exclusively to the ‘Senior’ arm of the golfing community. As to the letters ‘LLP’, the conclusion that might well be drawn in the circumstances was that the 3rd Respondent was a related arm of the Appellant, but constituted as a limited liability partnership for commercial reasons: at [60] and [61] .

(9) Loss arising from damage to goodwill in relation to non-commercial associations, such as the Appellant, would include a loss of actual or prospective members and, therefore, a loss of subscriptions or other income derived from membership. Given the nature of the activities and the income sources of the Appellant, there was a real likelihood of loss of income derived from membership and subscription fees, entrance fees as well as test administration and...