IP exposé
AUGUST ’12
What do you think – Is “Singapore PGA” descriptive? BY GEETHA K. & ELIZABETH KRISHNASAMY
In a recently decided case, the High Court of Singapore answered affirmatively to the question posed above. The Plaintiff, the Singapore Professional Golfers’ Association, brought an action against three Defendants, Mr. Chen, Mr. Roy Chen and Singapore Senior PGA LLP in respect to the alleged unauthorized use of the name “Singapore Senior PGA LLP” and the initials “SSPGA”. The action against the Defendants was for passing off and an injunction was sought to restrain the Defendants from using the mark “Singapore Senior PGA LLP”.
than a descriptive mark comprising common English words”. Thus, in order to prove misrepresentation in this case, he said that whether the Plaintiff’s name is descriptive must be ascertained. If it is descriptive, then whether the mark is distinctive by acquiring a secondary meaning has to be determined. The mark “Singapore PGA” was found to be descriptive of golf-related goods and services and although the Plaintiff has been around since 1973, the Judge did not find the mark to have acquired a secondary meaning.
In an action for passing off, the Plaintiff has to prove that it has goodwill, that the Defendants have misrepresented that they were connected to the Plaintiff, and that it has suffered or is likely to suffer damage as a result of misrepresentation.
The Judge held that where the mark consists of ordinary English words, small differences in the descriptive words may suffice to differentiate the marks from being similar or identical. As the Plaintiff’s mark is “Singapore PGA” and “SPGA” and the Defendants’ mark is “Singapore Senior PGA LLP” and “SSPGA”, the differences are small and sufficient enough for a differentiation among the public.
On the first limb, the Plaintiff argued that it had goodwill in relation to professional golfing activities as it has been carrying out golfing activities since 1973 via seminars, tournaments, courses and tests with media coverage. Although the Defendants asserted that the Plaintiff has no goodwill in relation to activities of senior professional golfers, the Court held that parties in a passing off action need not be in mutual competition and may be engaged in different trades. Therefore the Judge conceded that the Plaintiff had a measure of goodwill in relation to professional golfing activities. With regard to the second limb, the Judge stated that the alleged misrepresentation must be analyzed from the perspective of the actual or potential customers. He further stated (and this is where it gets interesting) that “an alleged misrepresentation is deceptive only when the mark sought to be protected is ‘fanciful’ as the law is more likely to protect a highly distinctive mark rather
A standard round of golf consists of playing 18 holes. While the majority of golf courses are 18 hole courses, some have 9 holes, and as such the course is played twice per round.
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