The Singapore Court of Appeal (CA) was recently asked to decide on whether a descriptive mark could be protected against passing off if the descriptive elements of the mark were used by another party. The case was an appeal by the Singapore Professional Golfers’ Association (SPGA) against the decision of the High Court which found in favour of Singapore Senior PGA LLP (SSPGA).
In a previous issue of our KASS IP exposé, we looked at how, in January 2011, SPGA brought a passing off suit against the SSPGA in respect of the latter’s use of a similar name and set of initials (i.e. SPGA) in the High Court. In his judgment the High Court Judge held that firstly, SPGA had failed to establish any misrepresentation by SSPGA. Secondly, because SPGA’s trademark consisted of ordinary descriptive words/initials which had not been shown to have acquired distinctiveness, the addition of the words “Senior” and “LLP” in SSPGA’s trademark is sufficient to distinguish the business of both parties from each other. Thirdly, the relevant consumers (i.e. professional/amateur golfers), who are knowledgeable individuals, would not be confused into thinking that SPGA is associated with SSPGA. Lastly, SPGA’s allegation of bad faith on the part of SSPGA was unfounded. Consequently, the action was dismissed by the High Court.
The dismissal however was overturned by the CA in the present case. In coming to its decision, the CA found that the SPGA was able to establish the “Holy Trinity” of passing off, namely, that SSPGA has taken unfair advantage of SPGA’s goodwill, by creating amisrepresentation that SSPGA and SPGA are somehow connected; and the misrepresentation has caused damage to the SPGA.
The tort of passing off is not directly concerned with the protection of trademark, rather passing off seeks to protect the goodwill of a trader which the CA defined as “the integral feature of the relationship between a trader and his customers”. However, that doesn’t mean that SPGA’s trademark had no bearing in the CA’s consideration. On the contrary, goodwill most often resides in a corporation’s logo, name and/or trademark. Therefore, before it can find that SSPGA has misrepresented itself as SPGA, the CA would have to be satisfied that SPGA’s goodwill is associated with its name/initials. And whether that is the case is heavily dependent on the name being distinctive of SPGA’s services. The difficulty here is that, the name “Singapore Professional Golfers’ Association”, is highly descriptive, and being such the name itself has very little inherent distinctiveness. Therefore if the name were to become distinctive of SPGA’s services, the distinctiveness must be acquired through long use of the name. On that point, the CA was satisfied that SPGA has shown that there is indeed goodwill attached to its services as its long presence in Singapore (since 1973) and its frequent appearances in the local media meant that SPGA has gained public recognition.
The CA disagreed with the finding of the High Court that the relevant public for SPGA mainly consisted of professional and amateur golfers. The CA viewed that the relevant public for SPGA consisted of any person with a commercial interest in golf as well as those who have or intend to have direct/indirect dealings with the SPGA. As such, the relevant public in this case are those having the characteristics typical of an ordinary and sensible member of the public of average intelligence. The CA also held that there is a real risk of the public being confused by SSPGA’s use of the initial “PGA”. The CA noted that SSPGA’s use of the letter “A”, which would have been understood by the public to stand for “Association”, is intentionally misleading as SSPGA is a limited liability partnership, not an Association. The CA disagreed with the High Court that the addition of the word “Senior” and initials “LLP” were sufficient to distinguish SSPGA from SPGA. On the contrary, the additions seem to give the distinct impression that SSPGA is a branch of SPGA catering exclusively to senior golfers.
The CA also held that SSPGA’s misrepresentation is likely to cause actual and potential damage to the goodwill of SPGA by tarnishing its reputation should SSPGA (an LLP) fall into legal or financial difficulties. Moreover, SPGA would likely lose subscriptions or other income derived from memberships as well as commercial sponsorships.
The finding of passing off by the CA is instructive in two senses: One, the registration of a descriptive mark will only provide the owner with limited protection, and the owner may have to resort to a complicated passing off action instead of a relatively straight forward trademark infringement suit to enforce his rights. Two, the use of descriptive words may still get you into trouble, if another person can prove that the words have acquired a secondary meaning that is distinctive of his business.