The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd [2015] SGHC 77

The Singapore High Court considered the scope of the own name defence in section 28 of the Trade Marks Act (the “Act”) for the first time in Singapore in The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd. The court found that the defendant could avail itself of this defence in the present matter and the plaintiff’s application failed.

Facts

The plaintiff, The Audience Motivation Company Asia Pte Ltd, was a company incorporated in Singapore on 2 August 2000 and in the business of events management.

The defendant, AMC Live Group China (S) Pte Ltd, was a company incorporated in Singapore on 20 January 2012 and carrying on the business of providing event and concert organisation services. The defendant stated that its business in Singapore was an “extension” of its business in Chengdu, China, where its operations were first established in or around 2007 and presently headquartered.

The plaintiff was the registered proprietor of two trade marks known as the “AMC Asia Mark” and the “Human Exclamation Mark” (collectively, the “plaintiff’s marks”). The plaintiff’s marks were filed for registration on 31 August 2012 and registered in Classes 35, 41 and 42.

The plaintiff claimed against the defendant for (a) infringement of registered trade marks, and (b) passing off in the use of its trade marks the “AMC Group Mark” and the “AMC Live Mark” (collectively, the “defendant’s marks”). The defendant denied both claims, stating that its marks were conceived independently and that “AMC” stood for “A Music Company”. The defendant asserted that the defendant’s marks were registered in China and widely used for music promotional materials there since 2008.

The claim and the defence

The plaintiff claimed against the defendant for trade mark infringement of similar marks under section 27(2)(b) of the Act, alleging that the defendant’s marks, the defendant’s trading names and the defendant’s slogan (which appeared on the defendant’s marks) infringed the plaintiff’s marks.

Regarding the claim in passing off, the plaintiff argued that the “amc” name was distinctive of its services and the defendant’s use of the name “amc” or “AMC Group China” misrepresented to the public that the defendant’s services were that of the plaintiff and/or connected to or associated with the plaintiff and that this was done with the intent to deceive and the plaintiff would suffer damage as a result.

The defendant denied the claim and also sought to rely on the own name defence, the prior use defence and the honest concurrent use defence.

Trade mark infringement

To determine if a trade mark has been infringed, the court must determine if it is distinctive. Distinctiveness is a factor integrated into the visual, aural and conceptual analysis as to whether the competing marks are similar.

The court found that the “amc” component was inherently distinctive as it consisted of three letters that did not connote any meaning at all, and therefore it was not necessary for the plaintiff to show distinctiveness through use.

The court found that the marks and the defendant’s trading names did bear some degree of similarity due to the visual and aural similarity of “amc” and the visual similarity of the devices.

The court considered the Human Exclamation Mark to be completely descriptive. The plaintiff argued that the use of the words “to create, entertain and inspire” in the defendant’s marks should be specifically compared to the Human Exclamation Mark and the words which appear below it, “to excite. to impress. to inspire”. The court disagreed, noting that the use of the defendant’s marks as a whole must be considered. The court found that the words used were in a very small font and could not be said to be prominent. There was therefore no visual similarity and there was also no aural similarity, given that “amc” does not appear in the Human Exclamation Mark and the words were not similar. Accordingly, the court found that there was no similarity between the Human Exclamation Mark and the defendant’s marks.

Similarity of services

The court found that there was a similarity of services provided. The plaintiff provided events management services and organised concerts as part of an event. The defendant provided concert management services. There was, however, no similarity in users as the users of the plaintiff’s services would be corporate entities and the users of the defendant’s services would be the general public. There was also some substitutability in the services provided by the parties.

Given that the defendant’s management of concerts would be similar to the plaintiff’s organisation of entertainment events, the court found that there was a similarity of services.

Likelihood of confusion

The court found that there was a likelihood of confusion arising from the defendant’s use of its marks, trading name and domain name, given the previous findings concerning the visual and aural similarities in the use of “amc” and the established similarity in services. The nature of the service in question (i.e. concerts) was such that the average consumer would in all likelihood focus more on the artistes and performance than on the organisers. The court thought it unlikely that an average consumer would pay close attention to the marks on their concert tickets. There was, therefore, a likelihood of confusion. The plaintiff also adduced evidence of actual confusion, where witnesses expressed their view that that they believed the defendant was associated in some manner with the plaintiff, and the court found this evidence to be supportive of its conclusion that there was a likelihood of confusion.

Defences

The defendant claimed that it was entitled to rely on the prior use defence under section 28(2) of the Act and the own name defence under section 28(1) of the Act.

Prior use defence

The defendant argued that it had, through its predecessors, used the AMC Group Mark as early as 2008 and was therefore using the allegedly infringing mark before the date of registration of the AMC Asia Mark (i.e. 31 August 2012). The plaintiff adduced evidence demonstrating the use of the AMC Asia Mark in Singapore on 1 July 2011 - hence, the defendant had to show that it had used the AMC Group Mark as well as its trading name and domain name before 1 July 2011. The defendant was incorporated in 2012 and could not have used the AMC Group Mark before then though it sought to claim that the mark had been in use by its predecessors. The court disagreed, noting that the evidence showed that a variant of the mark was used and even then, it was not used in Singapore but in China.

Therefore, the defendant could not avail himself of the prior use defence.

Own name defence

The defendant submitted that the defendant’s marks were conceived and used to reflect its name and this was done in accordance with honest practices in commercial matters. In order to avail itself of the own name defence, the defendant had to first show that the defence extended to the use of a company’s name, as opposed to a natural person’s name. There is no local authority directly on this point. It was, however, the court’s opinion that there are good reasons why the defence should so extend, noting that the language used in section 28(1)(a) of the Act is wide enough to cover the use of a company’s name.

The court considered English authorities and came to the conclusion that the scope of the own name defence extends not only to its registered corporate name but also its trading name. However, in the latter situation, the courts must not only decide if the use was “in accordance with honest practices” but also the nature of the trading name and the circumstances of its adoption. The court accepted that here the defendant had independently conceived of the idea with “amc” standing for “A Music Company”. There was no evidence to question the defendant’s bona fides. The court found that the defendant came to its name through honest practices.

Accordingly, the court held that the defendant could avail itself of the own name defence.

Passing off

The plaintiff also brought a claim in passing off which involved the court considering goodwill, misrepresentation and damage. In considering whether the plaintiff had demonstrated the existence of its own goodwill, the court noted that the burden lay with the plaintiff to identify the specific section of the public which, it alleged, had goodwill towards its business. The plaintiff’s failure to do so was sufficient for the passing off claim to fail. However, the court noted that even if the claim did not fail at this hurdle, there was no evidence of the plaintiff’s goodwill.

Judgment

For the reasons discussed above, the plaintiff’s claims were dismissed.