Court of Appeal rules on well-known mark

"Should a modest cluster housing project in Yio Chu Kang [a modest street] in Singapore be allowed to share the name as an ultra-exclusive luxury resort in Bali where that name is not a registered trade mark in Singapore?"

This question was posed in the first line of a recent Singapore Court of Appeal judgement. The court held that the mark "Amanusa" was a well-known trade mark in Singapore (albeit unregistered ) and that the use of the mark by the housing project was likely to cause people to believe that there was a connection between the said project and the resort. The court granted an injunction restraining the use of the name by the housing project.

The court held that in deciding whether a mark was well-known, one looked at the actual or potential consumers of the proprietor of the mark. The court recognised that this made it easy for marks to be considered well-known in Singapore and, therefore, balanced this with the requirement that the proprietor of the mark show that there is a likelihood of confusion before an injunction can be granted.

The upshot of this judgement is that proprietors of an unregistered mark which is not being used in Singapore may have a remedy provided the mark is well-known to a sector of the public in Singapore and there is a likelihood of confusion. Under the common law tort of passing off, this was not possible as goodwill needed to be shown.