The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd

• Jurisdiction: Singapore
• Judge: Sundaresh Menon CJ
• Judgment Date: 21 April 2016
• Neutral Citation: [2016] SGCA 25
• Plaintiff Counsel: Dedar Singh Gill and Ong Sheng Li, Gabriel (Drew & Napier LLC) instructed by Michael Moey Chin Woon (Moey & Yuen)
• Docket Number: Civil Appeal No 71 of 2015
• Date: 21 April 2016
• Hearing Date: 22 October 2015
• Subject Matter: Own Name Defence,Defence,Trade Marks and Trade Names,Goodwill,Infringement,Passing Off
• Year: 2016
• Citation: [2016] SGCA 25
• Defendant Counsel: Max Ng Chee Weng, Amira Budiyano and Mitchel Chua (Gateway Law Corporation)
• Court: Court of Appeal (Singapore)
• Published date: 17 January 2017

Sundaresh Menon CJ (delivering the judgment of the court): Introduction

This appeal arises out of the Appellant’s claims for trade mark infringement and passing off against the Respondent. These claims were dismissed by the High Court judge who heard this matter (“the Judge”) and whose decision is reported as The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd [2015] 3 SLR 321 (“the Judgment”). Of particular interest in this appeal is the question of the scope and applicability of the “own name” defence under s 28(1)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”), which has hitherto not been addressed by this court, and which was successfully relied upon by the Respondent below.

Background facts The parties

The Appellant, which was the plaintiff below, is The Audience Motivation Company Asia Pte Ltd, a company that was incorporated in Singapore on 2 August 2000. It was established to take over the business of Audience Motivation Company Pte Ltd, an events management company, which had earlier been incorporated by the Appellant’s chief executive officer and director, Mr Oh Bernard, in 1995 and which was subsequently wound up after the incorporation of the Appellant. The Appellant’s business involves the management of marketing events including corporate sales launches, media launches and corporate road shows. Its clients include prominent local and international companies.

The Respondent, which was the defendant below, is AMC Live Group China (S) Pte Ltd (formerly known as AMC Group China (S) Pte Ltd), a company incorporated in Singapore on 20 January 2012. It is part of a group of companies headed by its group chief executive officer, Mr Leong Seng Chet (“Mr Leong”), which provides event and concert management services across the region in China, Singapore, Taiwan, Malaysia and Hong Kong. The group has its origins in Chengdu, China, where Mr Leong first ventured into the concert management industry in 2007. The group consists of the following companies: (Sichuan Da Hong Cultural Communication Co Ltd) (formerly known as (Sichuan Xin Heng Public Relations Planning Co Ltd) (“Sichuan Xin Heng”)) which was incorporated in China sometime in 2010 and which manages the business in Chengdu, China (“the Chengdu Company”); (Da Hong Asia Cultural Co Ltd) which manages the business in Taiwan; AMC Live Concerts (M) Sdn Bhd which manages the business in Malaysia; and the Respondent which manages the business in Singapore. At the time of the Judgment, the Chengdu Company served as the headquarters of the group business. By the time of this appeal, the headquarters had been relocated to Singapore under the auspices of the Respondent.

The Appellant’s Marks

The Appellant is the registered proprietor of the following trade marks (collectively referred to as “the Appellant’s Marks”) which it claims have been infringed by the Respondent’s marks:

“the AMC Asia Mark”

“the Human Exclamation Mark”

The Appellant’s Marks were registered on 31 August 2012 in Classes 35, 41 and 42, which have the following specifications: Class 35: Advertising; event management services (organisation of exhibitions or trade fairs for commercial or advertising purposes); consultancy relating to public relations; public relations; brand creation services; publicity; promotional advertising services; promotional marketing; sales promotion services; hiring of advertising space; dissemination of advertising and publicity material. Class 41: Event management services (organisation of educational, entertainment, sporting or cultural events). Class 42: Design of brand names; design of publicity material.

Although the marks were only registered on 31 August 2012, the Appellant had been using these and other similar unregistered marks prior to that. Based on the documentary evidence, similar marks were used on invoices issued by the Appellant to its clients going as far back as 4 April 2002. The Judge found that marks identical to those registered in 2012 had first been used by the Appellant on 1 July 2011 (see the Judgment at [118]).

According to the Appellant, its marks had been used in connection with trade publications, on its official correspondence with its clients, on invoices and on its corporate gifts.

The Respondent’s Marks

The following marks (collectively referred to as “the Respondent’s Marks”) which were used by the Respondent are alleged to be similar to, and to have infringed, the Appellant’s Marks:

“the AMC Group Mark”

“the AMC Live Mark”

According to the Respondent, the AMC Group Mark was independently designed by Ms Yap Soo Mei (“Ms Yap”), a personal friend of Mr Leong who was a freelance designer, sometime in 2008 or 2009 when she was approached by Mr Leong to design a mark for the Respondent. The name “AMC” was intended to be an acronym for “A Music Company”. The Respondent also submits that the AMC Group Mark was first used in China for music festivals and concerts in 2008. The earliest use of the AMC Group Mark by the Respondent itself, as opposed to some other company in the group, was found by the Judge to be on 4 February 2012 when it organised promotional activities for a concert held in Singapore (see the Judgment at [125]).

The Respondent applied to register the AMC Group Mark in classes 35 and 41 (see [5] above for the specifications) on 14 February 2012 but the application was stayed due to the Appellant’s objections. The Respondent then changed its name from AMC Group China (S) Pte Ltd to AMC Live Group China (S) Pte Ltd on 4 November 2013 and began using the AMC Live Mark. The Respondent applied to register the AMC Live Mark on 15 July 2013. It appears that this application is still pending as well.

The decision below

The Appellant claimed against the Respondent for trade mark infringement under s 27(2)(b) of the TMA (ie, similar marks used in relation to goods or services identical with or similar to those for which the trade mark is registered) and passing off in relation to the Appellant’s Marks. The Judge dismissed both claims.

Trade mark infringement

The Judge found that the Respondent’s Marks, the Respondent’s trading names and the Respondent’s domain name were visually and aurally similar to the AMC Asia Mark, especially in relation to the “amc” acronym. He also found that the Appellant and the Respondent provided similar services in the area of events promotion and organisation, and that there was a likelihood of confusion arising from the use of similar marks by the Respondent. In particular, he noted that various former clients and suppliers of the Appellant attested to the actual confusion caused by the similarity of the Respondent’s Marks with the AMC Asia Mark.

Thus, the Judge found that the AMC Asia Mark had prima facie been infringed by the Respondent’s Marks under s 27(2)(b) of the TMA. However, he found that the own name defence to trade mark infringement under s 28(1)(a) of the TMA, which the Respondent had relied on, was applicable in the circumstances and he consequently dismissed the Appellant’s trade mark infringement claim. In particular, he held that: the own name defence was applicable to the use of a name as a trade mark; the own name defence was applicable to the name of a company; the own name defence extended to the use of a company’s trading name and was not limited to the use of its registered corporate name; and the Respondent’s use of the Respondent’s Marks, its trading names and domain name was in keeping with honest practices.

The Respondent had also attempted to raise the prior use defence under s 28(2) of the TMA but this was dismissed by the Judge on the basis that the Respondent had failed to prove that the AMC Group Mark had been used any time before 1 July 2011, which was the date the Appellant first began using the AMC Asia Mark. As for the Human Exclamation Mark, the Judge found that the Respondent’s Marks bore no similarity to it and therefore dismissed the trade mark infringement claim with respect to that mark.

Passing Off

In relation to the claim for passing off, the Judge held that two of the three requisite elements, namely misrepresentation and damage, were made out. However, he found that the Appellant failed to establish that it had acquired goodwill in the AMC Asia Mark. He considered that the evidence relied on by the Appellant, which included the use of the “amc” name in the Appellant’s domain name, the marketing-related awards received by the Appellant as well as its revenue and profits from 2008 to 2012, were insufficient for the purposes of proving goodwill.

The issues before us

The Appellant has appealed against the whole of the Judge’s decision, save for the finding that the Respondent’s Marks are not similar to, and hence do not infringe, the Human Exclamation Mark (see [14] above).

In these circumstances, we consider that the following four issues arise for our determination: whether there has been an infringement of the AMC Asia Mark pursuant to s 27(2)(b) of the TMA; if so, whether the own name defence under s 28(1)(a) of the TMA is available in the present case; whether the classic trinity of goodwill, misrepresentation and damage has been proven in order to establish liability for passing off; and whether the own name defence is applicable to a claim for passing off. We shall address each of these issues in the same order.

Trade mark infringement under s 27(2)(b) of the TMA

In our judgment, the Judge’s finding of prima facie infringement of the AMC Asia Mark cannot be impeached. The visual and aural similarities between the Respondent’s Marks and the AMC Asia Mark are evident. Like the AMC Asia Mark, the Respondent’s Marks use the “amc” acronym in lower case and adopt a similar font, including the use of a double-storey letter “a”. Further, as...