Singapore: Let’s Tee Off

June 28th, 2012

 

In the case of the Singapore Professional Golfers’ Association v Chen Eng Waye and Ors, the Singapore High Court dismissed Singapore Professional Golfers’ Association’s action for passing off against Chen Eng Waye and others with costs as Singapore Professional Golfers’ Association could not prove the existence of “classical trinity”, namely misrepresentation.

The Singapore Professional Golfers’ Association (hereinafter referred to as “the Plaintiff”) is a non-profit golfing association comprising qualified coaches and touring professionals. It was registered in Singapore under the Societies Act in 1973. It used “Singapore PGA”, and its initials, “SPGA”. The Plaintiff initiated the present proceedings against the 1st Defendant, Chen Eng Waye, the 2nd Defendant, Roy Chen Xiangyi and the 3rd Defendant, Singapore Senior PGA LLP for alleged unauthorized use of the name “Singapore Senior PGA LLP” and the initials, “SSPGA”.

The 1st Defendant, a certified teaching professional was a member of the Plaintiff. He was suspended by the Plaintiff for 12 months in 2007 for participating in a golf tournament which was not sanctioned by the Plaintiff. The 1st Defendant thus, applied for termination of his membership in 2007 and was accepted by the Plaintiff. The 1st and 2nd Defendants registered “Singapore Senior PGA LLP” as a limited partnership in 2010 to organize golfing tournaments and provide certification testing for senior amateurs and professional golfers in Singapore. In professional golfing, there’s a distinction between senior (aged 50 years and above) and non-senior golfers.

In early 2011, the 3rd Defendant had advertised on its website in 2011 to conduct a Senior Pro-Test for senior golfers between 1 February and 5 March 2011. The Plaintiff in February 2011 announced to conduct a new test exclusively for senior professional between 9 and 10 March 2011. Before this the Plaintiff had no separate qualifying test for senior professional golfers.

Meanwhile, the Plaintiff in March 2011 had issued a cease and desist letter to the Defendants, asking them to stop using the mark “Singapore Senior PGA”. The Defendants denied the allegation and argued that the Plaintiff had no goodwill as it did not engage in senior professional golfing activities at the material time.

Nevertheless, the Defendants cancelled the Senior Pro-Test planned for March 2011. In April 2011, the Plaintiff initiated the present action against the Defendants for passing off. 

The Plaintiff contended that its name, as well as “Singapore PGA”, and “SPGA”, had acquired goodwill in Singapore in relation to golf-related activities. Its name and logo were often used and displayed in relation to these activities. It is the only body recognized in Singapore by the Asian Tour as the sanctioning body for professional golf in Singapore.

The Defendants replied that even if the Plaintiff had some goodwill in golfing activities, it had no goodwill in relation to the activities of senior professional golfers at the relevant date.

The Plaintiff in affidavit of evidence-in-chief claimed that it is recognized world-wide. It showed a letter of one Kyi who is the executive chairman of the Asian Tour, stating that the Asian Tour recognized the Plaintiff as the sanctioning body for professional golf in Singapore. However, Mr. Kyi was not called as a witness to prove this letter.

The Court found that, the Plaintiff did arrange for its senior members to take part in senior professional golf tournaments. It is also well settled that the parties in a passing off action need not be in mutual competition and may be engaged in different trades. Thus, the Court held that that the Plaintiff had a measure of goodwill in relation to professional golfing activities.

The Court further found that the Plaintiff’s name is not in the least bit fanciful. It consists of ordinary words, “professional”, “golfer” and “association” and is descriptive. The addition of the geographical term “Singapore” does not alter the descriptive nature of the Plaintiff’s name.

The Court held that the Plaintiff had made no serious attempt to prove that its name has acquired a secondary meaning and has become distinctive after it was first used. It does not become distinctive solely because it has been in use for a long time. 

The Court while discussing slight or minor differences found that the Plaintiff’s conceded during cross-examination that there were minor differences between the names of the Plaintiff and the 3rd Defendant. The words “Senior” and “LLP” in the 3rd Defendant’s name are not found in the Plaintiff’s name. The golfing bodies in Singapore do not have more differences than those between the Plaintiff and the 3rd Defendant. The Court concluded that in instant case a person would not be confused when there are sufficient differences between the names and logos of the two bodies.

Addressing the issue that was raised by the Plaintiff that the Defendants lack of good faith in choosing and using the 3rd Defendant’s name, the Court did not find bad faith on the part of every Defendant. In fact, the 3rd Defendant, sought to emulate the practice in Thailand, where senior professional golfers’ bodies were called as “Thailand Senior Professional Golfers Association.” The Court held that the bad faith was a very serious allegation and the Plaintiff failed to adduce any evidence of the Defendants’ malice.

This case therefore, clearly explains that to prove a misrepresentation in a passing off one has to consider if its name is descriptive and has become distinctive by acquiring a secondary meaning and finally, small differences between the names of the Plaintiff and the Defendants.