| CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 2 SLR 550; [1998] SGCA 23 |
| CA 52/1997 | |
| 09 Apr 1998 | |
| Court of Appeal | |
| Karthigesu JA, L P Thean JA, Yong Pung How CJ | |
| Michael Fysh QC, Michael Hwang SC, Tan Tee Jim and Jason Chan (Allen & Gledhill) for the appellants, Peter Prescott QC, Dedar Singh and Adrian Tan (Drew & Napier) for the respondents |
Judgment
[Please note that this case has not been edited in accordance with the current Singapore Law Reports house style.] LP Thean JA (delivering the grounds of judgment of the court): 1 This appeal concerns the use of a name ‘Millenia’ for hotel and related services. In the proceedings below the respondents claimed against the appellants damages and an injunction to restrain the appellants from passing off their hotel and related services as and for those of the respondents by the use of the name ‘Millenium’ or ‘Millennium’ or similar names. Chao Hick Tin J who heard the case allowed the claim and granted to the respondents an injunction restraining the appellants from operating any hotel in Singapore under the names, ‘Millennium’, ‘Millenium’, ‘Millennia’, ‘Millenia’ or any other similar names and from representing or advertising in Singapore or elsewhere that they operate a hotel in Singapore under any of those names. Against this decision, the appellants appealed. We dismissed the appeal, and now give our reasons. The facts 2 The appellants are a company incorporated in the Cayman Islands and are the owners of a large number of hotels spread over many countries. These include The Gloucester Hotel, The Chelsea Hotel and Bailey’s Hotel in London, The Millenium Hilton (formerly known as Hotel Millenium), Millennium Broadway (formerly known as Hotel Macklowe) and The Plaza in New York, and Millennium Queenstown and Millennium Christchurch in New Zealand. In Singapore, the appellants own four hotels: Orchard Hotel, King’s Hotel, Harbour View Dai-ichi Hotel and Novotel Orchid. The appellants are a subsidiary of City Developments Ltd, a public-listed company in Singapore. 3 The respondents are a privately-owned company engaged in, among other things, property development and real estate businesses. They are the owners and developers of a huge building complex known as the ‘Millenia’ standing on a large plot of land with an area of 80,260 sq m (863,600 sq ft) situate at Temasek Avenue/Raffles Boulevard. The complex consists of two office towers, ‘Millenia Tower’ and ‘Centennial Tower’; a shopping mall called ‘Millenia Walk’; and two hotels, ‘The Ritz-Carlton, Millenia Singapore’ (RCMS), which is a super-deluxe ‘five-star’ hotel, and ‘Conrad International Centennial’, which is a deluxe ‘fivestar’ hotel. The respondents are part of the ‘Pontiac group’ of companies, which own other property developments, such as The Regent Singapore, a deluxe ‘fivestar’ hotel, and The Colonnade, a posh condominium in a prime district in Singapore. 4 The respondents conceived the development of the ‘Millenia’ complex sometime in the late 1980s. They appointed three world-renowned American architects, Philip Johnson, Kevin Roche and John Burgee, to design the ‘Millenia’. Two well-established firms, Hirsch Bedner and Associates and James Northcutt Associates, were engaged as the interior design consultants for RCMS. The respondents’ directors took a personal hand in the planning and construction of the complex. 5 In the early stages of the project, the development was simply referred to as ‘The Pontiac Marina Project’. At one point in time, the name, ‘Beacon Place’, was canvassed and this proposed name was submitted to the Advisory Committee on Street Names in 1991. However, as the respondents’ directors were not comfortable with the name, an alternative was sought. Mrs Donna Naomi Kwee, the wife of a director and the president of the respondents, Mr Kwee Liong Tek, suggested the name ‘Millennium’. She came up with this name when she read chapter 60 of the book of Isaiah in the Old Testament of the bible which was headed ‘The Glory of Israel in the Millennial Kingdom’. Taking up on this suggestion, the directors first adopted the name ‘Millennia’, and on 3 November 1992 the respondents wrote to the Advisory Committee on Street Names to indicate their wish to change the name, ‘Beacon Place’, to ‘Millennia City’ or ‘The Millennia’. Subsequently, after further discussion with various parties including their marketing advisers, the directors finally decided on the name, ‘Millenia’. The name was deliberately ‘flawed’ by removing one letter, ‘n’, so as to make the name more distinctive and also give the word only eight letters, eight being an auspicious number to the Chinese. Accordingly, on 5 October 1993, the respondents informed the Advisory Committee that they would like to have the name ‘Millennia’ spelt with only one ‘n’, ie ‘Millenia’. On 24 November 1993, the Advisory Committee gave its approval to the respondents to rename its development as ‘Millenia’. 6 On 28 March 1994, the respondents filed four applications with the Registry of Trade Marks to register ‘Millenia Singapore’ and the ‘M’ logo as a service mark in two classes, Class 36 (real estate services including management and renting of premises) and Class 42 (hotel and accommodation services). Before filing the applications, the respondents’ solicitors, M/s Drew & Napier, had in January 1994 conducted searches at the Registry of Trade Marks and the Registry of Companies and found that no other person had applied to register ‘Millenia’ or other similar name as a service mark for similar services or as a company or business name for similar businesses. 7 In the second quarter of 1994, the respondents began to look for tenants for the Millenia Tower and Millenia Walk. On 22 July 1994, the first tenant accepted the letter of offer for an office unit at the Millenia Tower. By the date of the formal launch of the Millenia Tower, ie 22 February 1995, more than 50% of the floor space had already been leased out. 8 On 10 July 1994, an operating agreement was entered into between the respondents and the American company, Ritz-Carlton Co of Atlanta (Ritz- Carlton), in which the latter was appointed to be the operator of the super-deluxe hotel in the ‘Millenia’ complex. On 18 July 1994, the operating agreement was publicly announced. Ritz-Carlton is a well-established hotel operator and runs numerous hotels in Europe and the United States; but it has a limited presence in Asia. The hotels operated by them are all the creme de la creme of the hotel industry and have been recipients of numerous awards of excellence. In 1992, they achieved the highest honour in the United States of America by becoming the first hospitality organisation to win the prestigious Malcolm Baldrige National Quality Award. 9 On 11 July 1994, the respondents publicly announced, through a press release, the launch of their development which would be named the ‘Millenia’. This was followed by a flood of newspaper, television and other forms of media coverage on the Millenia project. On 14 July 1994, the first advertisement of the Millenia appeared in The Straits Times. The respondents’ strategy was to control the release of news on the project so that there would be a steady stream of press releases and media events to ‘drip-feed’ the newspapers. This would ensure a continuous flow of information about the Millenia project to the public, keeping the project at the forefront of the public’s awareness. Approximately a sum of $1m was spent on marketing the ‘Millenia’ name. 10 Under the operating agreement made with Ritz-Carlton the respondents were entitled to add another name to the name ‘Ritz-Carlton’ as the name of the hotel. On 14 September 1994, the respondents in exercise of their right under the agreement informed Ritz-Carlton of their proposal to name the hotel ‘Ritz- Carlton, Millenia Singapore’ (RCMS) and this was agreed to by Ritz-Carlton on 19 September 1994. According to Arthur Kiong, the director of sales and marketing of RCMS, the purpose for inserting the word, Millenia, as part of the name of the hotel was to ensure that, on the expiry of the operating agreement, the respondents’ goodwill in the name, ‘Millenia’, would be retained. If the hotel had only the operator’s name, the owner would be disadvantaged. In particular, if and when the operating agreement terminates and the operator leaves, the owner would be left with a nameless hotel, and marketing efforts would then have to be made afresh to acquaint the public with the new name. 11 On 17 October 1994, a topping-off ceremony for RCMS was held. Many distinguished and prominent guests were invited, amongst whom was the Minister of State for Trade and Industry. The event received widespread media coverage and the hotel’s name, ‘Ritz-Carlton, Millenia Singapore’, was made known to the public. 12 We now turn to the narrative of the appellants in relation to their use of the name ‘Millennium’ for their hotels. As early as December 1993, the appellants began a search for a global brand for their hotels worldwide. The appellants considered that a global brand would enable them to promote and effectively cater their hotels to an international market and enable them to become a major player in the hotel and leisure industry. While the search was underway, the appellants acquired a couple of hotels in America. First, on 14 February 1994, the appellants purchased the Hotel Millenium in New York. They were advised by Hilton Hotels to retain the name ‘Millenium’ as part of the name for that hotel, and accordingly, in July 1994 the hotel was renamed Millenium Hilton Hotel. Next, in September 1994, the appellants acquired another hotel in New York, namely, Hotel Macklowe. Under the terms of their purchase they had six months to change the name of the hotel, and it was subsequently changed to Millennium Broadway. 13 Sometime in 1994, one Mr Gordon Stevenson, presently the managing director of Interactive Entertainment Ltd in the United States, was consulted by the appellants on the marketing of their hotels. On 14 October 1994, Mr Stevenson met with the appellants’ chairman, Mr Kwek Leng Beng, and one of their directors, Mr Kwek Leng Peck, to discuss a strategic marketing plan. According to Mr Stevenson’s affidavit, on that occasion, the chairman asked him about the suitability of the name, ‘Millennium’, as a global brand. However, nothing definitive on the selection of a global brand for the appellants’ hotels came out of this discussion. A few days later, on 17 October 1994, Mr Stevenson was appointed by the appellants to develop a marketing plan for the appellants’ hotels. 14 Apparently, soon thereafter, steps were taken to protect the name ‘Millennium’. On 21 November 1994, Mr Edouard Gremlich, the then chief executive officer of the appellants, gave instructions for registration of the name ‘Millenium’ in various jurisdictions where the appellants’ hotels were located. Following that on 9 December 1994, the appellants filed a trade mark application No 10667/94 seeking to register ‘Millennium’ as a service mark in Class 42 in respect of hotel services and accommodation. A business, called ‘Millennium Hotels’, was also registered in Singapore for hotel services on 20 January 1995. 15 Sometime in September 1995, the respondents came across the last August issue of a weekly magazine, Travel Trade Gazette Asia, which reported that the appellants were ‘expected to launch its own hotel management company — Millennium later [that] year’. Travel Trade Gazette Asia is a weekly publication which is targeted primarily at readers who have an interest in the travel and leisure industry. The respondents then instructed their solicitors to carry out a search at the Registry of Trade Marks. On 22 September 1995, the respondents were informed by their solicitors of the appellants’ application to register ‘Millennium’ as a service mark in Class 42. 16 On 27 September 1995, the respondents’ solicitors, M/s Drew & Napier, wrote to the appellants’ solicitors, M/s Allen & Gledhill, claiming that the respondents had acquired goodwill and reputation in the Millenia mark and required the appellants to provide within seven days the following: (a) a written undertaking that they would cease and desist from using the Millennium, Millenia or any other similar name on hotel services in Singapore which did not originate from the respondents; (b) evidence that the appellants have withdrawn service mark application No 10667/94 and any other application for the Millenium, Millenia or other similar mark for any services which were identical with or similar to any of those services for which the respondents have used their Millenia mark or any services for which respondents have applied to register their Millenia mark as a service mark. 17 On 29 September 1995, M/s Allen & Gledhill asked for time to seek their clients’ instructions and requested the respondents to hold their hands. On 3 October 1995, M/s Drew & Napier sent a reminder asking for a response by 13 October 1995. It also stated that in the interim the appellants should not take any further steps to promote or use the ‘Millenia’ mark. On 10 October 1995, M/s Allen & Gledhill wrote two letters in reply. The first letter was marked ‘Without Prejudice’, and it stated: We wish to inform you that our clients will be launching their Millennium chain of overseas hotels on 17 October 1995 in Singapore. The launch is basically an official public announcement to introduce our clients’ hotel Millennium Broadway in the United States, and our clients’ two hotel properties in New Zealand known as Millennium Christchurch and Millennium Queenstown. The launch is not in relation to any Millennium hotel in Singapore. Furthermore, our clients have committed significant resources to the launch, and preparations underway cannot be halted at this late stage. 18 The second letter was basically a total denial of any alleged infringement of the ‘Millenia’ mark. It pointed out that (i) the name ‘Millenia’ is not the name of the respondents’ hotel; its name being ‘The Ritz-Carlton, Millenia Singapore’, indicating that the name ‘Millenia’ is really a location; (ii) the respondents have not acquired reputation/goodwill in the ‘Millenia’ mark for hotel services; (iii) ‘Millenia’ is a common English word and no monopoly could be acquired; and (iv) the words ‘Millennium’ and ‘Millenia’ are visually and phonetically dissimilar. 19 On the same day, M/s Drew & Napier wrote in response first to the ‘Without Prejudice’ letter and said that it was treating the letter as an open letter as there was no reason for it to be written on the basis of ‘Without Prejudice’. In addition, their letter stated: Based on its contents and in particular your statement that the launch is not in relation to any ‘Millenium’ hotel in Singapore, we are instructed for the time being to refrain from applying for interlocutory relief. However, we have instructions to seek such relief in the event your clients attempt to launch a hotel under the mark ‘Millenium’ in Singapore. On 16 October 1995, M/s Drew & Napier responded to the second letter of M/s Allen & Gledhill, refuting the allegations therein stated. 20 On 17 October 1995 (which was exactly one year after the topping-off ceremony of RCMS) the appellants launched their ‘Millennium’ brand for their group of hotels at the Orchard Hotel. The event was graced by many prominent guests, including the Minister for Trade and Industry. The objective of the launch was to introduce a truly global hotel brand by a Singapore company. At the launch, three full-fledged Millennium hotels were introduced: Millennium Broadway in New York and Millennium Queenstown and Millennium Christchurch in New Zealand. Twenty-three Millennium Partner hotels were also introduced, including Orchard Hotel, King’s Hotel and Harbour View Dai-ichi Hotel in Singapore. It was announced that the Millennium Partner hotels would be converted to fullfledged ‘Millennium’ hotels over the next 18 to 24 months. 21 On 18 October 1995, M/s Drew & Napier wrote to M/s Allen & Gledhill stating that the respondents would be seeking an ex parte restraining injunction against the appellants if the latter did not give the requisite undertakings. The letter further stated: We note from the reports in The Straits Times of today that: ‘… there are also 23 Millennium Partner Hotels which will be converted to full-fledged Millennium hotels over the next 18–24 months … The 23 include three in Singapore (p 40).’ ‘Millennium Partners include Orchard Hotel (Singapore), Harbour View Dai-ichi (Singapore), King’s Hotel (Singapore) (p 3 of the Advertising Supplement).’ Our clients consider the above to be entirely contradictory to your 10 October 1995 statement to us that the Millennium launch yesterday would not be in relation to any ‘Millennium’ hotel in Singapore. On 19 October 1995, M/s Allen & Gledhill replied, denying that any assurance had been given to the respondents by the appellants not to use the Millennium name in relation to their hotels in Singapore. They said that their letter merely stated that the launch would not be in relation to any hotel in Singapore. The launch of 17 October 1995 could not be construed to be a launch of a hotel in Singapore under the name, ‘Millennium’. 22 On 25 October 1995, the respondents issued a writ of summons against the appellants seeking, inter alia, an order: (i) restraining the appellants from representing, operating or advertising any hotel in Singapore by reference to the following names: ‘Millennium’, ‘Millenium’, ‘Millenia’ or some other similar name, and (ii) requiring the appellants to withdraw any pending trade or service mark application which contained the above names. 23 On 23 February 1996, the appellants gave an undertaking not to represent, operate or advertise any hotel in Singapore owned or operated by them under the names ‘Millennium’, ‘Millenium’ or ‘Millenia’ however spelt, until the conclusion of the suit. At the trial, the appellants gave an undertaking that they would not use the word ‘Millennium’ to name the shopping arcade at Orchard Hotel. They also undertook not to use the word for the serviced offices at Harbour View Dai-ichi Hotel. Decision below 24 The case was tried before Chao Hick Tin J. The learned judge in a reserved judgment, reported in 25 In his judgment, Chao Hick Tin J dealt with the following issues: (i) the relevant date for determining whether the respondents had established their goodwill in the name ‘Millenia’, (ii) the establishment of the goodwill, (iii) the confusion between the words ‘Millenia’ and ‘Millennium’ and (iv) the damage to the respondents occasioned thereby. 26 Chao Hick Tin J held that the relevant date for establishing the respondents’ goodwill in the name ‘Millenia’ was 17 October 1995. His finding was based on the fact that it was on that date the appellants launched the ‘Millennium’ mark which the respondents were complaining about. He rejected the appellants’ contention that the date should be 9 December 1994, the date on which the appellants applied to register their service mark. The date, 9 December 1994, could not be the relevant date, as the first time the respondents had any inkling that the appellants might be thinking of using the word ‘Millennium’ to identify their chain of hotels was in September 1995. Chao Hick Tin J said in¶26 of his judgment: In my view, the relevant date on which the plaintiffs must prove that they have acquired goodwill in the name ‘Millenia’ was on the date of the alleged infringement — 17 October 1995. That was the date on which the plaintiffs could have any cause of action in passing off. With respect, I think it is wholly unreasonable to suggest that the relevant date is the date on which the defendants applied to register the mark ‘Millennium’. Up to 17 October 1995, the general public had no knowledge that the defendants had made the application. There was no announcement from the defendants. I wonder how the defendants expected the plaintiffs to know. What surprised me about the attitude of the defendants was that they expected the plaintiffs to know that the defendants had applied to register the word ‘Millennium’ and yet when they themselves applied to register ‘Millennium’ they made no effort at all to ascertain (which would normally have been done) if anybody else had registered the word ‘Millennium’ or similar such words before them. 27 Turning to the issue of goodwill, Chao Hick Tin J found that the respondents had established goodwill in the name ‘Millenia’ for the entire complex consisting of hotels, shops and offices. In reaching this conclusion, the learned judge took into consideration various matters including the fact that the respondents had expended considerable sums of money and other resources in publicising and promoting the ‘Millenia’ name. Chao Hick Tin J observed in¶50: The defendants have argued that in determining whether goodwill has been established in the case of a business not yet started only paid advertisements should be reckoned. I do not think the law has laid down any restrictions as to how goodwill may be acquired. Advertising in the press and other media is of course an obvious means and perhaps the most expeditious means. But if there are reports in the media extolling the virtues or excellence of a service I fail to understand why that should be disregarded. I would have thought the important thing is what is the message that is being conveyed, not whether the owners pay for the media’s space or time. It is the message that counts. If the press or a periodical should do a write-up on RCMS arguably, in terms of goodwill, that could even be better than a paid advertisement. The publication of brochures and material could also generate goodwill. The launch of the Ritz-Carlton, Millenia Singapore on 17 October 1994 could just as much help to establish goodwill, at least among those invited guests, who were people from the industry or people who had an interest in the project or were influential. Similarly, the news coverage of the event would have brought to the attention of the general public the name the complex and what the name of the super-deluxe hotel would be called. Of course in each case the critical question is to determine whether cumulatively what has been done is sufficient to establish reputation/goodwill which will give rise to a cause of action in passing off. 28 The question whether the word ‘Millenia’ is a descriptive or a fanciful word was also addressed. The learned judge found that the word ‘Millenia’ lay somewhere in the middle, closer to being highly fanciful rather than obviously descriptive. The word ‘Millenia’ did not merely connote a geographical location. It identified the respondents’ complex as a quality complex. It was found that the respondents’ intention all along was to use the name ‘Millenia’ to distinguish their development from the rest and to portray it as a cut above all others. It was to be a world-class shopping centre, of the same class and distinction as Rodeo Drive in Los Angeles. This was relevant in determining the establishment of goodwill. 29 On the evidence, the learned judge found that the appellants had established goodwill in the name ‘Millenia’. He said in¶68: So on the evidence have the plaintiffs established goodwill in the name ‘Millennia’? My answer is in the affirmative. The plaintiffs have acquired goodwill and reputation in the name ‘Millennia’ in respect of the complex, where offices, shops and RCMS are located. It does not follow that business has to be around for sometime before goodwill may be acquired. Of course the longer the period, the stronger the case. As the brief discussion that follows will show, even a short period could establish goodwill. All the more so in this modern age of mass communications, a trader should be able to establish goodwill sooner. 30 The learned judge next turned to consider the question of confusion. He found that the words ‘Millenia’ and ‘Millennium’ are phonetically and visually similar and the public could be mistaken about them. The respondents had acquired goodwill in the name ‘Millenia’ for their complex, and they are in the same business. The appellants’ hotels would be named in the forms as ‘Millennium Orchard Hotel’, ‘Millennium King’s Hotel and ‘Millennium Harbour View Hotel’. There would be likelihood of confusion with RCMS or the Millenia complex if the appellants’ hotels are so named. He said in¶91 and 92: 91 During the trial I was informed that the defendants’ hotels would be named in this form ‘Millennium Orchard Hotel’ ‘Millennium King’s Hotel’ and ‘Millennium Harbour View Hotel’. So the question is whether there would be any likelihood of confusion with RCMS or the Millenia complex if the defendants’ hotels are so called. 92 Because the defendants will have three Millennium hotels in Singapore, the public here and elsewhere might well think that the RCMS also belongs to the same group or chain. It is true the public will not be concerned with who owns RCMS. That is not the point. The point is about perception of relationship. And later he said in¶108 and 109: 108 If I should hold, as I have, that the two words ‘Millenia’ and ‘Millennium’ are phonetically and visually similar, then confusion could arise among Singaporeans. There will be real likelihood of confusion. The following are some aspects of confusion that can arise. A Singaporean may think that RCMS and say Millennium Orchard are of the same chain and operated by the same management. He may thus also think that RCMS is of the same class or offers the same standard of services and facilities as Millennium Orchard. Recommendation to a friend or business associate who is looking for a 5-star establishment may well end in a recommendation to the Shangri-la or The Oriental. The image and distinctiveness of the ‘Millenia’ name would be diluted or eroded. 109 When one turns to consider the position of a non-resident of Singapore who, in all probability, would not have a clear understanding of the difference between RCMS and say Millennium Orchard, it could not be any better. He could very well put RCMS out of his mind, thinking that RCMS is only a 4-star establishment. As I have mentioned before, while the reputation of R-C is gaining in the USA it has no presence in Europe (other than in Barcelona and even then known as Arts Hotel). It has only a limited presence in Asia. 31 Finally, on the question of damage Chao Hick Tin J found that there was sufficient evidence that the respondents would suffer damage as a result of the confusion. Such damage arose from injurious association with the Millennium hotels to be named by the appellants and the dilution of the respondents’ goodwill. He said in¶116: Both the plaintiffs and the defendants are in the same line of business, namely, in hotels. The plaintiffs emphasised that this hotel is like no other Ritz-Carlton hotel in the world. It is grander and more luxurious than the other Ritz-Carltons and the name ‘Millenia’ serves to qualify and set it apart from the normal standards of the Ritz-Carlton. There is no dispute that the defendants’ hotels in Singapore which will be named such as Millennium Orchard etc are of a lower class than that of RCMS. Anything that dilutes the distinctiveness of ‘Millenia’ causes damage because the plaintiffs can no longer command a premium for their product. There will be erosion of the prestige of the name. The appeal 32 The issues raised in this appeal were the following: (a) the question as to the relevant date by which the respondents had to establish their goodwill in the name ‘Millenia’; (b) whether the respondents had by that date established a sufficient goodwill in their business at the Millenia complex in association with the use of the name ‘Millenia’; (c) whether the proposed use by the appellants of the name ‘Millennium’ as part of the names for their hotels in Singapore would be likely to cause misrepresentation to the public that they are in some way connected with the respondents’ business; and (d) whether such misrepresentation would be likely to cause damage to the respondents. The relevant date 33 The parties are in dispute over the date on which the goodwill of the respondents was to be determined. The appellants contended that the relevant date was either 9 December 1994, which was the date of the appellants’ service mark applications or alternatively 25 August 1995 or thereabouts, which was the date of the publication of the article in Travel Trade Gazette Asia. On the other hand, the respondents contended that the relevant date was the date of the writ of summons (ie on 25 October 1995) or, at the earliest, 17 October 1995, the date of the appellants’ launch of the ‘Millennium’ brand in Singapore. 34 It has been decided that the relevant date, as at which the reputation of the plaintiff in a passing off action should be considered is the date on which the conduct complained of commences. In Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] 1 All ER 213, which was a decision of the Privy Council on an appeal from the Supreme Court of New South Wales, Lord Scarman delivering the judgment of the Board said at p 221: The judge, it is conceded, misdirected himself in holding that the relevant date for determining whether a plaintiff has established the necessary goodwill or reputation of his product is the date of the commencement of the proceedings (ie 1 June 1977). The relevant date is, in law, the date of the commencement of the conduct complained of, ie 8 April 1975, when the respondent began to market ‘Pub Squash’: see Norman Kark Publications Ltd v Odhams Press Ltd This general statement in Pub Squash has been recently applied in Singapore in Mechanical Handling Engineering (S) Pte Ltd v Material Handling Engineering Pte Ltd & Anor Both counsel agree that the relevant date for the establishment by the plaintiff of its reputation in the words ‘Mechanical Handling Engineering’ and the initials ‘MHE’ is the date the conduct complained of commenced (see Cadbury Schweppes Pty Ltd v Pub Squash Co Ltd at p 494). 35 In Penney Co Inc v Penneys Ltd There was discussion before the learned judge, and to some extent in this court, about the date at which reputation should be considered. The judge held that in the present case the appropriate date is 25 October 1973, when the defendants commenced business in this country. With that we agree. In any passing off action the relevant date must be earlier than the date of the writ (the date for which the defendants contend), for there must then have been an actual or threatened infraction by the defendant of a pre-existing reputation. The cause of action must exist at the issue of the writ, but its existence must arise from an earlier passing off or threat of passing off, which can only have occurred if the requisite reputation already existed at the time of the actual or threatened passing off. If at 25 October 1973, the plaintiffs had a sufficient reputation in the name ‘Penneys’, this would suffice to support the plaintiffs’ claim to relief against passing off unless between that date and the issue of the writ something had occurred to deprive that reputation of that effect. 36 These cases which we have cited were cases where the defendants had committed the acts complained of by the plaintiffs. They were cases of ‘actual infraction’ by the defendants of the right of the plaintiffs in certain brand names or marks. The instant case is a quia timet action instituted by the respondents complaining of ‘threatened infraction by the [appellants] of a pre-existing reputation’ in the name ‘Millenia’. A quia timet action is an action brought to prevent a wrong that is apprehended. 37 In Elida Gibbs Ltd v Colgate-Palmolive Ltd So, says Mr Nicholls for the defendant here, on the 17 and morning of 18 October no reputation among the general public connected with the tree theme can possibly have been acquired by the plaintiff because its television programme did not begin to be shown until some later time on the 18. I do not believe that the Privy Council’s reasons, fairly read in relation to the facts of the Australian case, do contain any principle that would defeat a quia timet action on the facts of the present case. The field in the United Kingdom, as I see it, was entirely clear for the use of the tree theme by the first to get in. The plaintiff, before October, had already incurred very considerable expense. It was to be expected, and there is some evidence, that reputation would be almost immediately acquired by television advertising. The defendant knew the plaintiff’s position and the defendant had no motive of promoting a present trade of its own in the United Kingdom, but only that of defeating the plaintiff’s campaign for some possible future utility to the defendant. In those circumstances it seems to be consistent with the equitable principle which governs the granting of injunctions in passing off cases to give the quia timet relief, as an interlocutory measure, that the plaintiff seeks. 38 We now revert to the case at hand. The appellants contended that the relevant date by which the respondents must show that they had established goodwill in the name ‘Millenia’ was: (a) 9 December 1994, being the date on which the appellants applied to register with the Registry of Trade Marks their service mark ‘Millennium’ for hotel and related services; or (b) 25 August 1995 or thereabouts, being the date on which there appeared in the 25-31 August 1995 issue of the publication Trade and Travel Gazette Asia in which it was stated that the appellants were expected to use the name ‘Millennium’. 39 In our opinion, neither of these dates could be accepted as the relevant date. When the appellants applied for registration of the mark ‘Millennium’ as a service mark for their hotels, prima facie they evinced an intention to use the mark for their hotels. But as of that date they did not use the mark for any of their hotels anywhere or for any of their services. They had not even announced that they would use the mark as a brand name for their hotels in Singapore. Hence, at its highest there was then only an intention entertained by the appellants to use the mark in the future. It is doubtful whether the respondents could, at that stage, successfully maintain a quia timet action against the appellants, had they known of the application made by the appellants. There was then no ‘threatened infraction’ of the respondents’ pre-existing goodwill in the name ‘Millenia’. 40 The situation here has some similarity with the New Zealand case of Crusader Oil NL v Crusader Minerals NZ Ltd 41 In¶124 of his judgment, Chao Hick Tin J made the following finding in relation to the appellants’ application for registration of the service mark ‘Millennium’ with the Registrar of Trade Marks: The defendants’ claim that by 21 November 1994 they had decided to adopt ‘Millennium’ as the global brand is not borne out by the circular of 21 November 1994 which talked of ‘strong support for the name “Millennium”’ and not ‘it has been decided’ by the chairman or the board. It seems to me that the instruction to register was really a preemptive move, to reserve the name, leaving the option to the defendants whether they would eventually adopt it. I see that in February 1995, Stevenson produced a strategic marketing plan, which included the Millennium brand. On 22 February 1995 Stevenson wrote to the chairman: ‘If we incorporate the name Millennium as our new branding …’. By end March 1995 invitations were extended to various advertising agencies to submit designs for the Millennium brand and Orchard brand. [Emphasis is ours.] We agree with the learned judge entirely. The learned judge went further and found that the appellants did not finally decide to adopt ‘Millennium’ as the brand name until the end of March 1995. On the evidence before him this finding was fully justified. 42 Turning to the issue of the Travel Trade Gazette for 25–31 August 1995, we found that there was only an isolated statement to the effect that ‘CDL’ was expected to launch its own hotel management company ‘Millennium’ later that year. The statement did not say in which country that name was to be used and in particular whether it was to be used in Singapore. Nor did it say that the hotels owned or run by ‘CDL’ would be renamed with ‘Millennium’ as part of their names. Lastly, it did not appear to have been written with the authority of the appellants and hence it could not even be said that it was a declaration of intent made on their behalf. That statement was much too vague and nebulous to serve any useful purpose; it certainly could not found a quia timet action by the respondents against the appellants for any threatened passing off. 43 The learned judge found that the relevant date was 17 October 1995 which was the date the appellants launched their brand name ‘Millennium’ for their three hotels overseas, namely: Millennium Broadway in New York, and Millennium Queenstown and Millennium Christchurch in New Zealand. In our view, it was more than a launch or introduction of their three hotels. It was a launch by the appellants of their global brand name ‘Millennium’ for their hotels. They announced, inter alia, that they had 23 Millennium Partner Hotels including three hotels in Singapore, namely Orchard Hotel, Harbour View Dai-ichi Hotel and King’s Hotel and that these hotels would be converted into full-fledged Millennium Partner Hotels over the ensuing 18 to 24 months. Hence, by that announcement the appellants indicated publicly that they intended to use the brand name ‘Millennium’ for their three hotels in Singapore. Admittedly, it was not a ‘launch’ of any of their ‘Millennium’ hotels in Singapore in the sense that thenceforth they would be calling the three hotels with ‘Millenium’ as part of their names. The appellants therefore had not yet embarked on any conduct which amounted to a passing off. But, in our judgment, what they did was a ‘threatened infraction’ of the respondents’ right to the name ‘Millenia’ and was clearly sufficient to found a quia timet action by the respondents against them for threatened passing off. Hence, for our purpose it is sufficient to take that date — that being the earliest date — as the relevant date by which the respondents must show that they had established a goodwill in their business in using the name ‘Millenia’ as their brand name. It is not necessary for us to consider whether in this case the date of commencement of the action by the respondents, namely 25 October 1995, would be the relevant date, as contended by the respondents. The difference between the two dates has no practical significance. Goodwill 44 The first element which needs to be established in a passing off action is goodwill. Lord Macnaghten described goodwill in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start. The goodwill of a business must emanate from a particular centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates. 45 The goodwill relevant in a passing off action is not in the mark, logo or getup. It is the goodwill between a trader and his customers which is protected by this tort. Lord Parker of Waddington in AG Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 237 at p 284 said: There appears to be considerable diversity of opinion as to the nature of the right, the invasion of which is the subject of what are known as passing off actions. The more general opinion appears to be that the right is a right of property. This view naturally demands an answer to the question - property in what? Some authorities say property in the mark, name, or get-up improperly used by the defendant. Others say, property in the business or goodwill likely to be injured by the misrepresentation. Lord Herschell in Reddaway v Banham (LR (1906) AC 139) expressly dissents from the former view; and if the right invaded is a right of property at all, there are, I think strong reasons for preferring the latter view. 46 The terms goodwill and reputation have often been used interchangeably, giving rise to some confusion. Goodwill does not exist on its own and it attaches to a business. On the other hand, reputation may, and often does, exist without any supporting business. Lord Macnaghten in Muller said, at p 224: For my part, I think that if there is one attribute common to all cases of goodwill it is the attribute of locality. For goodwill has no independent existence. It cannot subsist by itself. It must be attached to a business. Destroy the business, and the goodwill perishes with it, though elements remain which may perhaps be gathered up and be revived again. 47 Lord Lindley in the same case said at p 235: Goodwill regarded as property has no meaning except in connection with some trade, business, or calling. In that connection I understand the word to include whatever adds value to a business by reason of situation, name and reputation, connection, introduction to old customers, and agreed absence from competition, or any of these things, and there may be others which do not occur to me. In this wide sense, goodwill is inseparable from the business to which it adds value, and, in my opinion, exists where the business is carried on. Such business may be carried on in one place or country or in several, and if in several there may be several businesses, each having a goodwill of its own. 48 The distinction between goodwill and reputation was clearly brought out in the case of Anheuser-Busch Inc v Budejovicky Budvar NP As mentioned above, Whitford J found as a fact that the plaintiffs’ name Budweiser was well known to a substantial number of people in this country (leaving aside for the moment US servicemen temporarily resident here) as a name associated with the beer brewed by the plaintiffs in the United States. The plaintiffs can thus legitimately claim that before the defendants’ entry into the market here, they had a reputation as the brewers of a beer, Budweiser, with a substantial section of the public. The question is whether this reputation associated with a beer which, for practical purposes, nobody could buy here, constituted a goodwill in any relevant sense. [Emphasis is added.] 49 In dealing with the plaintiffs’ argument that by their sales in the United Kingdom they had acquired goodwill in their ‘Budweiser’ beer. Oliver LJ said, at p 467: The plaintiffs in the instant case submit that they are not in any difficulty. They have proved, they submit, the existence here of a reputation with a substantial section of the public, and they have adduced evidence of sales here to such members of the public as have been admitted to bases and Embassy canteens and bars and as have attended from time to time those open days and air displays which have been organised at United States Air Force bases. I confess that for my part I am quite unable to treat these sporadic and occasional sales as constituting in any real sense the carrying on by the plaintiffs of a business in this country. The fact is that no ordinary member of the public, whether he be indigenous or a foreign tourist, could consider himself a customer in this country for the plaintiffs’ beer. 49 His Lordship later said at p 470: … It cannot, in my judgment, be right to treat the sale in this separate, artificial and special market, as the foundation for a business goodwill in the market at large into which the plaintiffs had never ventured. … Mr Kentridge argues that once a goodwill exists it is for the owner of the goodwill to choose when and how he will go into the market with his product. But this, with respect, begs the question, because it assumes the existence of the goodwill apart from the market, and that, as it seems to me, is to confuse goodwill, which cannot exist in a vacuum, with mere reputation which may, no doubt, and frequently does, exist without any supporting local business, but which does not by itself constitute a property which the law protects. 50 Thus, having a widespread reputation in a particular place does not necessarily mean that the trader has a goodwill in his business. The requirement of a business on which the goodwill hinges has been emphasised in the following cases: Star Industrial Co Ltd v Yap Kwee Kor 51 In determining whether the respondents had at the relevant date established goodwill in their businesses associated with the name, ‘Millenia’, two questions arise. First, how was the goodwill established? Second, what is the nature of the goodwill that has been established? 52 Goodwill is normally generated from trading. As at 17 October 1995 the businesses at RCMS, Millenia Tower and Millenia Walk had not commenced and the question is whether in these circumstances an action for passing off could be brought by the respondents. In the older English cases, the courts adopted a strict approach and held that pre-trading activities could not generate goodwill. In Maxwell v Hogg (1867) LR 2 Ch 307, it was held that trading must actually have commenced before there was any cause of action. Thus, a defendant, who had entered the market before the plaintiff, could do so with impunity even if it was the plaintiff’s pre-trading advertising that spurred him (the defendant) to take that step. This sentiment was echoed by Farwell J in Chivers v Chivers (1900) 17 RPC 420 at p 431: Advertisement, distinguished from trade, is nothing. No doubt if you have the trade the advertisement assists the trade, but to say that a man can by advertising alone make his name known in connection with particular goods so as to assist him in obtaining a monopoly of the goods seems to be untenable as a proposition. 53 In contrast, in the more recent English authorities, namely, WH Allen & Co v Brown Watson Ltd 54 In WH Allen, the plaintiffs obtained a licence to publish the work called ‘My Life and Loves by Frank Harris’ in an unexpurgated form. The intended publication was widely advertised and a great deal of interest had been generated, since the book when it was first written could not be published in its entirety in view of the frank portrayal of the author’s amorous adventures. By virtue of the wide publicity given the plaintiffs had acquired a considerable reputation as the publisher of that title. The defendants acquired the licence to publish an abridged and expurgated version of the book which had hitherto been sold under the title ‘Frank Harris: My Life and Adventures’. They advertised that they would be publishing that work and adopted the title ‘My Life and Loves by Frank Harris’. The plaintiffs took proceedings and sought an interlocutory injunction to restrain the defendants from publishing the abridged version under that title. Pennycuick J granted the injunction. He said at p 194: In the present case, the plaintiffs have acquired a distinctive reputation in this title and if anyone else publishes a book under that identical title then the proper conclusion must be that that person is doing something which is calculated to deceive, that is, that people are likely to buy the defendants’ book in a belief that it is that of the plaintiffs. So far there seems to be no answer to the plaintiffs’ case, but there is no doubt, I think, that the title of a book for this purpose is in the same position as the title of a newspaper. … The title My Life and Loves has now become distinctive of the book published by the plaintiffs. It seems to me that if at this stage the defendants bring out their book under the title My Life and Loves they will be passing off their book as the plaintiffs’ book just as much as if they never had whatever rights they have acquired under those two agreements. One need have no sympathy for the defendants in this matter because it is abundantly clear from the facts and the dates that they acquired whatever rights they did acquire under the agreement of 15 October 1964 to use the words used by the plaintiff although the defendants will not accept them, simply in order to cash in on the advertisement and reputation of the plaintiffs’ book. 55 In British Broadcasting Corpn, the plaintiff had developed a traffic information system capable of being fitted in a motor vehicle by adapting the car radio, and it named the system as ‘CARFAX’. Before the launch of that system the defendant had introduced to the market certain motor vehicle fittings under the name of ‘CARFAX’. The plaintiff initiated proceedings and sought an interlocutory injunction restraining the defendant from using the name ‘CARFAX’ in relation to their motor vehicle fittings. One of the grounds for resisting the injunction was that the plaintiff had not at the date of commencement of the action launched the system and therefore had no goodwill in the name. This was rejected and it was held that there was ample evidence that a significant part of the public knew about the name ‘CARFAX’ as distinctive of the plaintiff’s product and that the fact that the system had not been launched did not prevent the plaintiff from having a goodwill in the name. Sir Robert Megary VC said at p 233: I begin with the goodwill claimed by the BBC to have been built up in CARFAX as applied to their scheme. Although that scheme has not yet been launched, that does not prevent the BBC from having built up goodwill in it which is entitled to protection: see WH Allen & Co v brown Watson 56 In Australia, it has been decided that pre-trading advertisements would suffice. In Turner v General Motors (1929) 42 CLR 352, the American car manufacturer, General Motors Co, marketed and sold their cars in Australia through their agents. It subsequently decided to set up a new company in Australia to be called by the same name to assemble and sell cars there. It advertised its intention, and following that it formed a company and proceeded to erect a factory for the purpose. The defendant started a business dealing in second hand cars under a name resembling that of General Motors Co and put up a sign which gave the impression that his business was a branch or a depot of the plaintiff’s business. Harvey CJ of the Supreme Court of New South Wales granted an injunction restraining the defendants from using the word ‘General Motor’ or ‘General Motors’. The defendants appealed to the High Court of Australia and the appeal was dismissed. Dixon J said at pp 368–369: It was then contended that the plaintiff, when the acts complained of first commenced, had not begun business, and had no goodwill and no reputation for the appellant to appropriate, and that if his use of the name ‘General Motors’ was no violation of the plaintiff’s rights, when he assumed it, nothing which occurred afterwards could make it wrongful. … But the plaintiff, from 24 May 1926, was carrying on business here, and its existence, objects and relation to the American Corporation had been widely advertised. The public had been told that, in a reorganization of the Corporation’s business methods, the plaintiff had been constituted to conduct its Australian operations. When the appellant pretended that his business was part of, or connected with, ‘General Motors’ Australian undertaking, he necessarily represented that his business was part of, or connected with, that which in fact the plaintiff conducted. This entitled the plaintiff to complain, whether the American Corporation might also do so or not. 57 In the Canadian case of Windmere Corpn v Charlescraft Corp Ltd (1989) 23 CPR (3d) 60, the plaintiff adopted the mark ‘VIBRA SHAVE’ for its razors early in 1988, and by March of that year it had taken advance orders for its products. Over the next six months it distributed samples and promotional materials of its products bearing the mark. In April of that year it exhibited its products at the Home Hardware Show and samples of its razors were available there together with promotional and other materials. In June 1988 or thereabouts, both the plaintiff and defendant filed the trade mark applications for the mark ‘VIBRA SHAVE’. The plaintiff instituted proceedings against the defendant and applied for an interlocutory injunction against the defendant. Rouleau J of the Federal Court in granting the injunction held (at p 68) that the plaintiff had made out a strong prima facie case that it had established a reputation in the trade for its products under the mark ‘VIBRA SHAVE’, although the use of the mark was conducted over a relatively short period. In coming to this conclusion he said at p 67: The evidence shows that although the plaintiff only entered the Canadian market at the very earliest, in March of 1998, it did so as part of a concerted effort to introduce the trade mark to a wide segment of its purchasers in a short period of time. As a distributor of its products to major retailing chains in Canada, the first and most significant part of its drive was completed before the defendant even raised the notion of marketing a product under a similar trade mark. Although the distribution of samples and promotional materials might not in all circumstances constitute use of a trade mark, it would not make commercial sense to conclude that the plaintiff’s actions, integrally linked as they were to the receipt of large numbers of orders for the product bearing the trade mark, did not build up substantial goodwill in the trade mark which accrued solely to the benefit of the plaintiff. The providing of samples and specification sheets to prospective customers was clearly in the normal course of trade for a party dealing at the wholesale level. 58 On the basis of these authorities, pre-business activities can generate goodwill. This is a commonsense approach and is in line with commercial reality where promoters of businesses usually embark on massive advertising campaigns before the commencement of trading to familiarise the public with the service or product. In every case, whether the pre-trading activity suffices in generating goodwill is a question of fact and depends on the nature and intensity of the activity in question. Heavy advertising, as in Allen v Brown Watson (supra), will be adequate. On the other hand, mere preparations for trading will not, as in Amway Corpn v Eurway International Ltd 59 We now turn to the facts in this case. It is necessary to look at the events prior to the relevant date to see if the respondents’ activities had by then established sufficient goodwill in the business under the name ‘Millenia’. By January 1994 the respondents had obtained approval from the Advisory Committee of Street Names for naming the complex ‘Millenia’. Starting from the second quarter of 1994 to the commencement of the action they had spent more than $1m on marketing and promoting the name ‘Millenia’ in relation to the complex extolling the outstanding features in the hotel, office block and shopping mall. According to Mr Kwee Liong Tek, the strategy was to control the release of news about the Millenia complex so that there would be a steady stream of press releases and media events. This was to ensure a continuous flow of information about the project to the public and to keep the project in the forefront of the public’s awareness. The numerous advertisements and extensive coverage of the complex in the media no doubt brought to the public’s minds the existence of the ‘Millenia’ complex and the high potential and grandeur it promised. The advertisements highlighted the features and virtues of the complex and emphasised the synergistic effect in the integration of the hotel, the office towers and the shopping mall. 60 Besides large-scale advertising, the respondents had actively sourced for tenants for Millenia Tower and Millenia Walk and hotel guests for RCMS, and in that connection they took their advertising campaign abroad by actively seeking out clients, largely through personal letters and distribution of brochures. As early as 22 July 1994, the first tenant for Millenia Tower was confirmed. On 10 July 1994 they entered into the operating agreement with Ritz-Carlton whereby the latter would operate the hotel on their behalf for a fee and on the following day they made the announcement that their project was to be called the ‘Millenia’. On 17 October 1994 there was held the topping up ceremony of RCMS attended by a large number of guests, and the event was publicised on television and the press. Since December 1994 there were the pre-opening sales and marketing campaign for RCMS which were aimed at top-grade customers. In early April 1995 the first room reservation at the RCMS was made. On 17 April 1995 there was the topping up ceremony for Millenia Tower, and that occasion was again graced by many guests. By this date 50% of the floor space of Millenia Tower had already been let. By the date of the commencement of the action, RCMS had confirmed reservations for a total of 2,840 room nights for the period between February 1996 and December 1996. Millenia Walk had, among its tenants, many famous or wellknown designer boutiques and retail outlets such as Guess?, Valentino, Escada, Burberry’s, DFS, The Hour Glass and Cortina Watch. There was much publicity surrounding the various top-of-the-line tenants in the newspapers. 61 Having regard to what had transpired, the sourcing of tenants for Millenia Tower and Millenia Walk and hotel guests for RCMS were more than non-trading activities. They were in fact business activities which had gone into full swing and which generated considerable income for the respondents. In our judgment, these trading activities had generated goodwill to the respondents in the conduct of their business at the Millenia complex. Nature of goodwill 62 The next question relates to the nature of the goodwill. The appellants argued that the respondents were in the business of property development and not hotel operators and they had no goodwill in the business of hoteliers. That being so, they have no claim in passing off against the appellants, who are reputed as hoteliers. We rejected this argument. First, the respondents are not only property developers; they are also engaged in the business of providing various types of accommodation such as hotels, offices and retail mall. Ritz-Carlton operates RCMS on behalf of and as agents of the respondents for a fee and at the owners’ expense. The respondents, as principals, are in the business of providing hotel accommodation. Goodwill has been acquired by the respondents in respect of their business of providing accommodation at RCMS, Millenia Tower and Millenia Walk. All three components are parts of the same general field of activity in which the respondents are involved, providing different types of accommodation, and these three components operate in synergy. 63 Secondly, it is well settled that the parties in a passing off action need not be in mutual competition. The parties may be engaged in different fields of business activities. Lord Diplock in Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd Spalding’s case 84 LJ Ch 449 led the way to recognition by judges of other species of the same genus, as where although the plaintiff and the defendant were not competing traders in the same line of business, a false suggestion by the defendant that their businesses were connected with one another would damage the reputation and thus the goodwill of the plaintiff’s business. There are several cases of this kind reported of which Harrods Ltd v R Harrod Ltd (1923) 41 RPC 74, the moneylender case, may serve as an example. 64 In Annabel’s (Berkeley Square) Ltd v G Shock In this question of confusion of course, as a matter of common sense, one of the important considerations is whether there is any kind of association, or could be in the minds of the public any kind of association, between the field of activities of the plaintiff and the field of activities of the defendant — as it is sometimes put: Is there an overlap in the fields of activity? But of course, when one gets down to brass tacks this is simply a question which is involved in the ultimate decision whether there is likely to be confusion. If there is no overlapping … then of course it is in the highest degree relevant in considering whether there is a case for an injunction based on a likelihood of confusion. Here I have no doubt at all as at present advised that there is a sufficient association between what the public would consider the field of activity in which Annabel’s Club is conducted and the field of activity in which Mr Schock indulges in the course of his escort business. Both are concerned with what might be described as ‘night life’ or ‘night entertainment’. 65 A case which is more in point is Lego System Aktieselskab v Lego M Lemelstrich Ltd … it is to the law as stated in the Advocaat case that we now have to look and, in Lord Diplock’s formulation of the characteristics that are necessary ingredients to found a cause of action in passing off, there is no limitation as to the relation of the field of activity of the defendant to that of the plaintiff … Lord Diplock specifically recognises that a cause of action for passing off may lie in a case where the plaintiff and the defendant are not competing traders in the same line of business. Obviously, where there is a common field of activity and the parties are in competition with each other the plaintiffs’ case is strengthened. This was acknowledged by Falconer J. He said at p 187: Of course, that is not to say that the proximity of a defendant’s field of activity to that of the plaintiff will not be relevant to whether the defendant’s acts complained of amount to a misrepresentation in any particular case — plainly it will, at least in most cases. 66 Similarly, in Australia, the need for a common field of activity was dismissed by the High Court of New South Wales in Henderson v Radio Corpn Pty Ltd It has been contended, however, that the court has no jurisdiction to grant an injunction unless there is what has been called a common field of activity and in this case, it is said, there is none. The argument is based on a statement by Wynn-Parry J in McCulloch v Lewis A May (Produce Distributors) Ltd (1947) 65 RPC 58 at pp 66, 67: ‘“I am satisfied”, he said, “that there is discoverable in all those (cases) in which the court has intervened this factor, namely, that there was a common field of activity in which, however remotely, both the plaintiff and the defendant were engaged and that it was the presence of that factor that accounted for the jurisdiction of the court.”’ … We have some difficulty in accepting the proposition stated in McCulloch’s case. If deception and damages are proved, it is not easy to see the justification for introducing another factor as a condition of the court’s power to intervene. Later their Honours said at p 234: An injunction was refused because, there being no ‘common field of activity’, there was no passing off. ‘Upon the postulate that the plaintiff is not engaged in any degree in producing or marketing puffed wheat, how can the defendant, in using the fancy name used by the plaintiff, be said to be passing off the goods or the business of the plaintiff? I am utterly unable to see any element of passing off in this case’ per Wynn-Parry J at p 67. We find it impossible to accept this view without some qualification. The remedy in passing off is necessarily only available where the parties are engaged in business, using that expression in its widest sense to include professions and callings. If they are, there does not seem to be any reason why it should also be necessary that there be an area, actual or potential, in which their activities conflict. If it were so, then, subject only to the law of defamation, any businessman might falsely represent that his goods were produced by another provided that other was not engaged, or not reasonably likely to be engaged, in producing similar goods. This does not seem to be a sound general principle. 67 We now turn to the argument of the appellants that the true name of the hotel, RCMS, is Ritz-Carlton and that ‘Millenia’ only designates the location of the hotel. In this connection, much debate centred on the presence of the comma in ‘Ritz-Carlton, Millenia Singapore’. The appellants argued that the comma signified that the name of the hotel was Ritz-Carlton, and its location was at Millenia Singapore. In our view, this argument is unsound. The comma is not heard when the name is spoken. In its written form, the words following the comma need not necessarily be taken as the location. Many articles referred to RCMS without the comma when the full name of the hotel was spelt out. Admittedly, RCMS is often referred to in an abbreviated form as ‘Ritz-Carlton’. On the other hand, it has also been occasionally referred to as the ‘Millenia’, for instance, in the article, ‘Famous Five Debut in Singapore’ in the October 1994 issue of Hotelier. In our judgment, the name, ‘Millenia’, is an integral part of the name of the hotel and played a part in establishing the goodwill of the Millenia complex as a whole. 68 Even if ‘Millenia’ is a geographical locator (which we have held it not to be), we think that it is distinctive of the respondents’ complex. There are many cases which have held that geographical names are distinctive, for example, ‘London’ in respect of candles exported from Scotland to Morocco in Price’s Patent Candle Co Ltd v Ogston & Tennant Ltd (1909) 26 RPC 797, ‘Reading’ for biscuits in Huntley & Palmer v Reading Biscuit Co Ltd (1893) 10 RPC 277 and ‘Cambridge’ for a system of dieting in the South African case of Cambridge Plan AG v Moore 69 In our judgment, at the relevant date the respondents had established sufficient goodwill in the operation of their business of hotel, offices and shopping mall associated with the name ‘Millenia’. Misrepresentation 70 The next element which the appellants had to establish in this passing off action is misrepresentation. Lord Parker of Waddington in AG Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 273 at p 284 said: … the basis of a passing off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. It may, of course, have been made in express words, but cases of express misrepresentation of this sort are rare. The more common case is, where the representation is implied in the use or imitation of a mark, trade name, or get-up with which the goods of another are associated in the minds of the public or of a particular class of the public. In such cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the mark, name, or get-up in question impliedly represents such goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or quality, or, as it is sometimes put, whether the defendant’s use of such mark, name, or get-up is calculated to deceive. In Reckitt & Coleman Products Ltd v Borden Inc [The plaintiff] must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. 71 It is not necessary that there should be any confusion occasioned by the misrepresentation, although confusion is of great evidential value in determining whether or not there has been any misrepresentation. If the names of two entities are confusingly similar, there is a great likelihood that the public will be misled into thinking that they or their businesses are connected with each other. In Bristol Conservatories Ltd v Conservatories Custom Built Ltd Next, it would not matter that there was no allegation that there would be any confusion in the minds of the public. The concept of confusion, in my view, is irrelevant when the misrepresentation leaves no room for confusion. The prospective customer here is not left to perceive the difference between two allegedly similar products, he is told simply and untruthfully that Custom Built design and constructed the conservatories which provide the evidence for the experience, skill and reputation of the plaintiffs. 72 The instant case is a quia timet action where the respondents are seeking to prevent an apprehended misrepresentation by the appellants. In such an action the test is whether there is a real risk that the defendant’s representation would deceive a substantial number of persons of the relevant section of the public into believing either that the goods or services of the defendant are those of the plaintiff or that there is a business connection between the plaintiff and the defendant in relation to the goods or services provided by them. In Lego System Aktieselskab v Lego M Lemelstrich Ltd (supra), which was a quia timet action, Falconer J had this to say at pp 187–188: … what has to be established by a plaintiff is that there is a real risk that a substantial number of persons among the relevant section of the public will in fact believe that there is a business connection between the plaintiff and the defendant. 73 Whether there is a ‘substantial number of persons among the relevant section of the public’ depends on the particular circumstances of each case. A ‘substantial number’ does not necessarily mean a large proportion of the public. In Neutrogena Corpn v Golden Ltd 74 Applying the test espoused above, we found that there would be a real risk of misrepresentation by the appellants if they were allowed to use the name, ‘Millennium’, as part of the name for their hotels in Singapore. The evidence strongly suggested that, by reason of the similarity of the words, ‘Millenia’ and ‘Millennium’, the public would very likely be deceived into thinking that the appellants’ hotels are associated with or related to RCMS or that the following hotels belong to the same chain: • Ritz-Carlton, Millenia Singapore • Millennium Orchard Hotel • Millennium King’s Hotel • Millennium Harbour View 75 In connection with this issue of misrepresentation we need to say a word of the survey evidence adduced by the respondents. The respondents appointed Ms Nicola Sinclair to conduct a survey to see if the general public thought that RCMS had any connection with the appellants’ three hotels, if they were named with the prefix, ‘Millennium’. The appellants raised many objections — mostly technical in nature — about Ms Sinclair’s method of conducting the survey. These objections were dealt with by the learned judge who found Ms Sinclair’s survey helpful. He said in¶103 and 104 of his judgment: 103 All said, the results of the Sinclair survey do show how the respondents perceived the synonomity of the two words ‘Millenia’ and ‘Millennium’ though at the relevant time there were no Millennium Partner Hotels or Millennium Orchard etc. In this regard, I am mindful of the following passage of Dillon LJ in Mothercare UK Ltd v Penquin Books Ltd ‘Those who organised the survey were rightly careful to avoid asking leading questions, but the result was that those interviewed were asked an unnatural question in an unnatural surrounding. The fact that some of the ladies, in such circumstances, on seeing the cover of the book though of Mothercare and thought that there might be some connection between the book and Mothercare falls a long way short, in my judgment, of proving any basis for asserting that the title of the book involves a misrepresentation as to the source of the book or as to the existence of some association between Mothercare and the book.’ 104 The survey by Sinclair merely confirms what the witnesses before me are all saying, that ‘Millenia’ and ‘Millennium’ are visually and phonetically similar and that the public might think that there is a relationship or connection between RCMS and say Millennium Orchard. 76 We do not see any objection to the survey evidence adduced on behalf of the respondents. That evidence was admitted to show the opinion of certain members of the public that the two words, ‘Millenia’ and ‘Millennium’, are similar visually and phonetically. It was to show that such belief or opinion exists among a certain number of people; it was not admitted to prove the truth or merits of such belief or opinion so held. In Saga Foodstuffs Manufacturing (Pte) Ltd v Best Food Pte Ltd I should therefore start by saying a word about the rule of hearsay and in what circumstances it may be said to be offended. It is simply this. When evidence is sought to be given of what someone said to the testifying witness, whether such evidence offends the rule against hearsay depends on the purpose for which the evidence is sought to be tendered. If it is sought to be tendered for the purpose of establishing the truth of what was said to the testifying witness, its introduction will offend the rule. On the other hand, if the purpose of tendering the evidence is merely to show that such a statement was made, and not that the statement is true, then the rule is not offended. The learned judge then turned to certain authorities and came to the following conclusion on p 745: It seems to me that evidence of the results of a market survey research of the kind in question in this suit is evidence of the existence of the belief or opinion held by the respondents to the survey. The purpose of tendering such evidence is to show that such belief or opinion exists; there is no question of tendering it for the purpose of proving the truth or merits of the belief or opinion so held. In my view, evidence as to whether and the extent to which a certain belief or opinion is held by a person or a group of persons, when that is in issue, is evidence of a fact in issue, and its admission falls within the general provision of s 5 of the Evidence Act for the reception of evidence of the existence or non-existence of every fact in issue. 77 In the New Zealand case, Customglass Boats v Salthouse Bros A properly drawn market research questionnaire, carefully framed so as to elicit opinions or beliefs held by persons adequately informed, can only reveal in my opinion the existence or otherwise in a defined proportion of the persons interviewed, of the relevant opinion or belief, and I do not think it can be right in cases involving trade mark infringement or passing off where evidence of reputation is relevant, and especially in a passing off action where affidavit evidence is not receivable, to compel a party to produce in the courtroom an interminable parade of witnesses to depose individually as to their knowledge and understanding of the trade association involved in a particular trade mark or design, so long as there are followed the cautionary procedures recommended in the article in the New York University Law Review above cited. The evidence obtained by research survey is in my view legitimate proof of the fact the opinions obtained had in fact existed, whether rightly held or not, and on that view of the matter it is my opinion that such evidence is not hearsay at all and that, even if it did fall within the technical concept of hearsay or representing a collation of individual statements made out of court, then the evidence would still be admissible by way of exception to the hearsay rule because it exhibits the existence of a state of mind shared in common by a designated class of persons. 78 In Canada, survey evidence has been admitted in evidence and found helpful in many cases involving intellectual property rights. In Sun Life Assurance Co of Canada v Sunlife Juice Ltd (1989) 22 CPR (3d) 244, Justice MacFarland of the Ontario High Court opined at p 249: Factual matters must be determined on the evidence and the only evidence before me was of a professionally conducted survey by experts in their field which was of greater assistance to the court than to proceed in the archaic fashion of parading any number of random witnesses before the court to perform precisely the same function as did the surveyor. The survey was far more efficient and beneficial to the court. In my view it is very cogent evidence. In another Canadian case, Big Sisters Association of Ontario v Big Brothers of Canada (1998) 75 CPR (3d) 177, at p 220, the court found that the survey evidence was the best evidence available in the circumstances of the case. 79 Thus, survey evidence may be given weight to by the court depending on the circumstances of the case. In this case the learned judge found that the survey evidence was helpful. The survey conducted by Ms Sinclair merely showed that there is a fair number of people who feel that the words, ‘Millenia’ and ‘Millennium’, are deceptively and confusingly similar phonetically and visually. This evidence merely corroborates the learned judge’s finding that there was confusion arising from the similarity of the two words phonetically and visually and that there was a real risk that misrepresentation would arise, such that the public would mistakenly believe that the appellants’ and the respondents’ hotels are associated with or related to each other. 80 Besides the survey evidence, there was other evidence strongly indicating the same effect. This was seen in the mistakes a number of people made in spelling the words and accidentally naming ‘Millenia’ as ‘Millennium’ instead. For instance, when Arthur Kiong, the director of sales and marketing at RCMS, applied for employment with RCMS, he wrote ‘Ritz-Carlton, Millennium Singapore’ instead of ‘Ritz-Carlton, Millenia Singapore’. The same mistake was made by a tenant of Millenia Tower. In an article in The Straits Times dated 7 September 1995, the journalist mistakenly stated that the trendy boutique, Guess?, was located at ‘The Millennium’ rather than ‘Millenia’. In our judgment, there is no doubt that the two words are very similar visually and phonetically, and there is a strong likelihood of a deception that the appellants’ ‘Millennium’ hotels are associated with or related to RCMS and the ‘Millenia’ development. 81 The present case bears some similarity with Berkeley Hotel Co Ltd v Berkeley International (Mayfair) Ltd On the best consideration I can give, I have reached the conclusion that there would be a glaring risk of deception or confusion if a first class hotel of international repute is opened on the old site under the name of Berkeley International. The suffix ‘International’ is of a descriptive nature and is appropriate to denote the type of facilities offered by a hotel or the type of clients for whom the hotel caters. It is not at all a clearly distinguishing labeling where, as here, the facilities offered by the other hotel concerned are broadly of the same type and the other caters for broadly the same type of client, although, no doubt, with shades of difference. Damage 82 In a passing off action the plaintiff must show that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the defendant’s goods or services are the same as those offered by the plaintiff: per Lord Oliver of Aylmerton in Reckittt & Colman Products Ltd v Borden Inc [1990] R P C 341 at p 406. Lawrence J in Society of Motor Manufacturers & Traders Ltd v Motor Manufacturers’ & Traders’ Mutual Insurance Co Ltd Damage or likelihood of damage to property is the gist of all such actions and, unless a plaintiff can prove that his credit or business reputation has suffered damage or that there is a tangible risk or probability of his credit or business reputation suffering damage, no action will lie. In Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd, Lord Diplock in setting out the five characteristics in a passing off action said (at p 742) that misrepresentation should be such that it ‘causes actual damage to a business or goodwill of the trader by whom the action is brought or ( in a quia timet action) will probably do so’. In the same case, Lord Fraser of Tullybelton said (at p 755–756) that it is essential for the plaintiff in a passing off action to show, inter alia, that ‘he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason of the defendants selling goods which are falsely described by the trade name to which the goodwill is attached’. 83 From the authorities to which we have referred, it is clear to us that in the instant case, being a quia timet action, the respondents had to show a real likelihood of damage. The learned judge found that there would be a strong likelihood of damage to the respondents’ goodwill. He said in¶116 of his judgment: Both the plaintiffs and the defendants are in the same line of business, namely, in hotels. The plaintiffs emphasised that this hotel is like no other Ritz-Carlton hotel in the world. It is grander and more luxurious than the other Ritz-Carltons and the name ‘Millenia’ serves to qualify and set it apart from the normal standards of the Ritz-Carlton. There is no dispute that the defendants’ hotels in Singapore which will be named such as Millennium Orchard etc are of a lower class than that of RCMS. Anything that dilutes the distinctiveness of ‘Millennia’ causes damage because the plaintiffs can no longer command a premium for their product. There will be erosion of the prestige of the name. In fact, the evidence of the defendants supports what the plaintiffs are saying. And he concluded thus in¶117: Accordingly, I accept the view put forward by Arthur Kiong that ‘when a hotel of higher quality is associated in the public’s mind with a hotel of lower quality, the harm done would be incalculable, and certainly no amount can properly compensate for the damage done.’ Gremlich has agreed that people might think there is a link between RCMS and say Millennium Orchard or the Millenia complex and the Millennium hotels. Hucksteppe in Chicago, totally unprodded, thought so too. The net result is that the public may begin to question the quality of the plaintiff’s product. It is plain common business sense. 84 We agree with the conclusion arrived at by the learned judge. The concern here is the public’s perception that RCMS, Millenia Tower and Millenia Walk are associated with or related to the Millennium hotels of the appellants and such association would be likely to result in a dilution of the respondents’ goodwill in their business. The respondents have acquired goodwill in their business at the Millenia complex which is inextricably associated with the use of the name ‘Millenia’. In so far as the hotel industry is concerned, RCMS symbolises world class quality and prestige with top-of-the-range services and amenities. The appellants’ hotels in Singapore are of a lower class and quality and are more economically priced. Hotel guests pay a premium to stay at RCMS. It would be commercially damaging for a business of a super deluxe ‘five-star’ hotel, as RCMS is, to be associated with that of a ‘four-star’ hotel, which the appellants’ hotels admittedly are. The reason for this is simple and is best illustrated in the sale or provision of goods or services. If there is a misrepresentation induced by the defendant, such that the public is led to believe erroneously that the plaintiff’s and the defendant’s goods or services are the same or that their businesses are connected, the plaintiff’s goodwill in his business would be likely to be diluted, if the defendant’s goods or services are of a quality or class lower than that of the plaintiff’s. Deceived into thinking that the plaintiff’s and the defendant’s goods or services are the same or that their businesses are connected, the public would mistakenly perceive the plaintiff as having a range of lower quality goods or services which in reality belong not to him but to the defendant. The public would not perceive the plaintiff as supplying solely top-of-the-range goods or services but of varying qualities. The prestigious image of the plaintiff would in these circumstances be likely to be undermined. 85 In connection with this point, we find the case of Ewing v Buttercup Margarine Co Ltd … I can see no principle, which withholds us from preventing injury to the plaintiff in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected in some way with the plaintiff or are carrying on a branch of the plaintiff’s business … I cannot bring myself to doubt that what the defendants are threatening and intending to do would affect, and in all probability seriously affect, the plaintiff’s business. We can only prophesy, because this action was commenced before the defendants’ business was begun, but I cannot bring myself to doubt that serious damage to the credit and prosperity of the plaintiff’s business would arise from the confusion caused by the defendant company deliberately and wilfully continuing to carry on business in a name so nearly resembling that under which the plaintiff is trading as to be calculated to deceive. Warrington LJ, the other member of the court, said at pp 13–14: … it seems to me obvious that a trader or a customer who has been in the habit of dealing with the plaintiff might well think that the plaintiff had adopted the name of Buttercup Margarine Co Ltd, as his own name for the purposes of the margarine branch of his business, or for the purposes, if you will, of doing what it is said the defendants are going to do, namely, to make their own margarine instead of buying it in the market. If that be so, it seems to me that the plaintiff has proved enough. He has proved that the defendants have adopted such a name as may lead people who have dealings with the plaintiff to believe that the defendants’ business is a branch of or associated with the plaintiff’s business. To induce the belief that my business is a branch of another man’s business may do that other man damage in various ways. The quality of goods I sell, the kind of business I do, the credit or otherwise which I enjoy are all things which may injure the other man who is assumed wrongly to be associated with me. And it is just that kind of injury that what the defendants have done here is likely to occasion. I think, therefore, the learned judge was perfectly right. Conclusion 86 In conclusion, it would be helpful to remind ourselves of the essential elements of the tort of passing off. Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc (supra) gave the following summary at p 406: The law of passing off can be summarised in one short general proposition — no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identify as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff. These pronouncements were made with reference to the business of sale of goods in that case but they are equally applicable to the business of provision of services, such as in the instant case. The respondents had successfully showed that the three elements of passing off were present: goodwill, misrepresentation and probability of damage. Accordingly, their claim succeeded, and we dismissed the appeal. 87 In the course of the hearing before us, some arguments were raised by the appellants on the scope of the injunction granted by Chao Hick Tin J. We refrained from disturbing the terms of the injunction. Should there be any question pertaining to the scope or operation of the injunction parties are at liberty to go before the learned judge for clarification or direction. Appeal dismissed. Reported by Thian Yee Sze