The decision of the Singapore Court of Appeal ("SCA") in City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2009] SGCA 53 (the "LV Case") makes this an opportune time to review the case law to date on the protection of well-known marks in Singapore.

The causes of action available to the proprietor of a well-known mark, who has identified a misuse of its mark in Singapore, are (1) trade mark infringement, provided that the trade mark is registered in Singapore; (2) the tort of passing off; and (3) the statutory right to an injunction to restrain such use provided under section 55 of the Trade Marks Act (the "Act"). Insofar as trade mark infringement is concerned, the LV Case is significant as the SCA has signaled its inclination to adopt the stricter approach of requiring trade mark use by the defendant before finding infringement.

Before statutory protection under section 55 can be invoked, the proprietor of a well-known trade mark will have to show that any unauthorised use is likely to result in confusion. An exception to this is where the marks are "well-known to the public at large". Such marks are protected against unfair dilution and the taking of unfair advantage of their distinctive character, even in the absence of confusion. To fall within this exclusive category, the SCA in the LV Case emphasised that the mark must enjoy a much higher degree of recognition than a "well-known mark in Singapore". Proof of actual recognition by the public is required.

The difference between passing off and the statutory protection of marks which are "well-known in Singapore" is best summed up in the seminal case of Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR 216 where the SCA held that the tests relating to passing off were concerned with the plaintiff's goodwill, whereas the tests under section 55(3)(a) relate to the interests of the plaintiff, who may not necessarily have goodwill in Singapore.

In the LV Case, the SCA reiterated that goodwill must be determined as of the date the conduct complained of commenced. Goodwill must also exist in the mark alone without other distinctive elements. The subject "Flower Quatrefoil" mark was thus found not to possess the requisite goodwill because it had never been used without LV's monogram or the words "LOUIS VUITTON".

The court will assess misrepresentation from the perspective of the actual and potential customers of the plaintiff. A person who desires to be the plaintiff's customer but lacks the ability should not form the basis of goodwill. The SCA in the LV Case thus found that the trial judge had erred when he held that misrepresentation is established if the defendant’s customer who purchased the watch may think that the defendant was licensed by the plaintiff and the defendant’s watch may easily be mistaken for the plaintiff's goods at a glance. Since the SCA opined that misrepresentation for luxury brands should be analysed from the perspective of those of a high income level, it is suggested that misrepresentation would not be easy to establish for well-known international luxury brands since their customers are likely to be "a discernible lot with equally discernible taste" and are likely to scrutinise the product carefully given the price of their goods.

Another interesting point raised in the LV Case was the SCA's reluctance to agree with the trial judge's judicial notice of "the fact that people do get put off certain luxury brands simply because there are so many fakes and cheap look-alikes in the market". The SCA's reservations were based on the fact that (1) the statement was more a feel than fact; (2) there was no indication as to the luxury brands affected; and (3) no evidence of a correlation between falling sales and an increase in fakes in relation to watches or luxury consumer articles was adduced. The SCA's finding that to take judicial notice of this one factor is too simplistic and unreliable to establish damage leaves open the question, particularly in the case of luxury brands, as to what would be sufficient to satisfy the third element of damage.

Given the difficulty in establishing misrepresentation and damage, particularly for high end luxury goods which attract sophisticated and discerning clientele (for which cheaper look-alikes would be no substitute), the proprietor of a well-known mark who fails to prove that its well-known status extends to the public at large in Singapore, would still face considerable hurdles before it can avail itself of the protection under the law.