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

• Judge: Lee Seiu Kin J
• Judgment Date: 20 March 2015
• Neutral Citation: [2015] SGHC 77
• Citation: [2015] SGHC 77
• Docket Number: Suit No 677 of 2013
• Published date: 21 March 2017
• Hearing Date: 23 October 2014,14 October 2014,24 October 2014,28 October 2014,15 October 2014
• Plaintiff Counsel: Michael Moey (Moey & Yuen)
• Date: 20 March 2015
• Defendant Counsel: Ng Chee Weng Max and Amira Nabila Budiyano (Gateway Law Corporation)
• Court: High Court (Singapore)
• Subject Matter: Trade Marks and Trade Names-Infringement,Tort-Passing Off

Lee Seiu Kin J : Introduction

The plaintiff claims against the defendant for (a) infringement of two registered trade marks and (b) passing off. The defendant denies both claims.

Facts Parties to the dispute

The plaintiff is The Audience Motivation Company Asia Pte Ltd, a company incorporated in Singapore on 2 August 2000.¹ The plaintiff is in the business of events management, assisting clients in meeting their marketing objectives through one or a series of activities such as corporate sales kick offs, partner conferences, media launches, partner incentive programs, special events (eg, gala or anniversary dinners), exhibitions, corporate road shows, CEO summits and concerts (as part of an event).²

The defendant 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 2012.³ The defendant carried on the business of providing event and concert organisation services.⁴ The defendant avers that its business in Singapore is an “extension” of its business in Chengdu, China, where its operations were first established in or around 2007.⁵ At present, the defendant’s business is headquartered in Chengdu, China, with operations in Singapore, China, Taiwan, Hong Kong and Malaysia.⁶ According to the defendant, the operations are managed in the following manner: the defendant manages the business in Singapore;⁷ (“Sichuan Dahong”) manages the business in Chengdu, China;⁸ (“Dahong Yazhou”) manages the business in Taiwan;⁹ AMC Live Concerts (M) Sdn Bhd manages the business in Malaysia;¹⁰ and no company has been incorporated for the business in Hong Kong.

Background to the dispute

The plaintiff is the registered proprietor of the following trade marks (collectively “the Plaintiff’s Marks”):¹¹

“the AMC Asia Mark”

“the Human Exclamation Mark”

The plaintiff filed their applications to register the Plaintiff’s Marks on 31 August 2012, and the applications were approved in January 2013.¹² The Plaintiff’s Marks are registered in Classes 35, 41 and 42 under the following specifications:¹³ 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.

There is some doubt over the dates on which the plaintiff first used the Plaintiff’s Marks. The plaintiff initially stated that it had used the AMC Asia Mark since 2009 and the Human Exclamation Mark since 2010.¹⁴ Later, the plaintiff said that those dates were wrong, and that it should have been January 2011 for the AMC Asia Mark and 23 May 2006 for the Human Exclamation Mark.¹⁵ At trial, however, the plaintiff appears to revert to its initial position.¹⁶ As the dates are pertinent to one of the issues, it will be discussed in greater detail later ([118] below).

The Plaintiff’s Marks were allegedly used in trade publications, awards, recruitment advertisements, electronic direct mail, official correspondence, invoices, corporate gift premiums and others.¹⁷ The plaintiff also claims that it had used marks that were similar to the AMC Asia Mark since it was incorporated (ie, 2 August 2000),¹⁸ even though those marks were never registered.¹⁹

Further, the plaintiff points out that: The plaintiff won numerous marketing-related awards.²⁰ The plaintiff had widely advertised and promoted their services under and by reference to the Plaintiff’s Marks (with annual marketing expenditure on such advertisement for the past five years at an average of $20,000 per annum).²¹ The plaintiff registered the domain name, “amcasia.com”, since November 2006, and has used the website extensively in Singapore, Malaysia, Thailand and China.²² The plaintiff had promoted and made available to the public its services under the Plaintiff’s Marks on its website on 10 February 2007.²³

The plaintiff alleges that the defendant, in providing event and concert organisation services, had used the following marks which are similar to the Plaintiff’s Marks (collectively “the Defendant’s Marks”):²⁴

“the AMC Group Mark”

“the AMC Live Mark”

The defendant denies the allegation that it has infringed upon the Plaintiff’s Marks or that it is passing off its services as those of the plaintiff or otherwise connected to or associated with the plaintiff.

The defendant asserts that it had engaged the professional assistance of Yap Soo Mei (“Betty Yap”), a “personal friend” of Leong Seng Chet (“Leong”), the chief executive officer of the defendant,²⁵ to design and conceive the Defendant’s Marks in or around 2008,²⁶ and that they were independently conceived to represent its business concept (ie, a cross-border artiste and concert management company primarily engaged in bringing quality musical performances to the masses).²⁷ According to the defendant, the underlying idea for “AMC” was “A Music Company”.²⁸

The defendant avers that the Defendant’s Marks are registered in China (and Taiwan²⁹), and widely used in China in promotional materials for music festivals and concerts since 2008.³⁰ In addition, the defendant highlights that it had worked with Singaporean artistes and their staff, and built up and maintained links with them throughout the course of business.³¹ The Defendant’s Marks have also allegedly been used on documents for transactions and/or collaborations with organisations from China and Singapore since 2008.³² The defendant, which was incorporated in Singapore on 20 January 2012, similarly used the Defendant’s Marks in Singapore on various promotional materials for concerts and artistes’ meeting sessions with fans in Singapore.³³ Apart from Singapore and China, the defendant also claims that the Defendant’s Marks have been used widely in Malaysia, Taiwan and Hong Kong as well.³⁴

The defendant had lodged its application to register the AMC Group Mark in Classes 35 and 41 under the specifications “promotion (advertising) of concerts” and “management of concerts” respectively.³⁵ Even though the defendant filed its application on 14 February 2012,³⁶ it was opposed by the plaintiff and is currently pending registration.³⁷

Sometime in 2013, the defendants stopped using the name “AMC Group”, the AMC Group Mark as well as the website “www.amcgroup-china.com”.³⁸ As part of its move to update its branding, the defendant had changed its name to “AMC Live Group China (S) Pte Ltd” at the end of 2013.³⁹ Consequently, the defendant now refers to itself as “AMC Live” or “AMC Live Group”,⁴⁰ and uses the domain name “www.amclive-group.com”.⁴¹ According to the defendant, it had also started using the AMC Live Mark instead of the AMC Group Mark.⁴²

Plaintiff’s case

The plaintiff’s case is based on trade mark infringement and passing off. The plaintiff claims that the defendant had infringed the Plaintiff’s Marks under ss 27(2)(a), 27(2)(b) and 27(3) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”).

I should point out at this juncture that the plaintiff had not, in its submissions, addressed the issues of identical or well-known marks. Instead, the plaintiff had limited its claim to trade mark infringement of similar marks under s 27(2)(b) of the TMA, in the following manner:⁴³ That the defendant’s use of the Defendant’s Marks infringes the plaintiff’s AMC Asia Mark. That the defendant’s use of the trading name “amc”, “AMC”, “AMC Group” and/or the domain name “www.amcgroup-china.com” infringes the plaintiff’s AMC Asia Mark. That the defendant’s use of the slogan “to create, entertain and inspire” (which appears in the AMC Group Mark and the AMC Live Mark) infringes the Plaintiff’s Human Exclamation Mark.

As for the claim in passing off, the plaintiff’s case is that: The “amc” name is distinctive of the services provided by the plaintiff, and the members of the public had associated the name “amc” with the services provided by the plaintiff, such that the plaintiff had acquired goodwill in the name “amc” when used in relation to the said services.⁴⁴ The defendant’s use of the name “amc” or “AMC Group China” misrepresents to the members of the public (and in particular, the actual and potential consumers of the plaintiff and the defendant) that the defendant’s services are that of the plaintiff and/or connected to or associated with the plaintiff.⁴⁵ The defendant’s use of the name “amc” or “AMC Group China” was calculated to deceive or likely to deceive and/or lead members of the public to believe that the defendant’s services are that of the plaintiff and/or otherwise connected to or associated with the plaintiff.⁴⁶ The plaintiff suffered or would suffer damage under the following heads as a result of the defendant’s use of “amc” or “AMC Group China”: inferiority of the defendant’s services; loss of licensing/franchising opportunity or income; likelihood of damage should the defendant get into financial, legal or other trouble; misappropriation of the plaintiff’s goodwill and reputation; restriction on the plaintiff’s natural expansion into providing a greater range of event and concert organisation services; loss of exclusivity and the erosion of distinctiveness of the Plaintiff’s Marks; and dilution of the goodwill attached to the Plaintiff’s Marks.

Defendant’s case

The defendant’s case is that there is no trade mark infringement because: The Defendant’s Marks are not identical/similar to the Plaintiff’s Marks, and there is no likelihood of confusion.⁴⁷ The...