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 2000.1Statement of Claim (“SOC”) at para 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).2SOC at para 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 2012.3SOC at para 20. The defendant carried on the business of providing event and concert organisation services.4SOC at para 21. 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 2007.5Defence at para 8(a); Leong Seng Chet’s affidavit evidence-in-chief (“LSC’s AEIC”) at para 4. At present, the defendant’s business is headquartered in Chengdu, China, with operations in Singapore, China, Taiwan, Hong Kong and Malaysia.6Defence at para 8(a). According to the defendant, the operations are managed in the following manner: the defendant manages the business in Singapore;72nd Further & Better Particulars (“F&BP”) of Defence at para 1(b)(i). (“Sichuan Dahong”) manages the business in Chengdu, China;81st F&BP of Defence at para 1(a)(i). (“Dahong Yazhou”) manages the business in Taiwan;92nd F&BP of Defence at para 1(a)(iv). AMC Live Concerts (M) Sdn Bhd manages the business in Malaysia;102nd F&BP of Defence at para 1(a)(iv). 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”):11SOC at para 6.
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| | “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 2013.12SOC at para 10. The Plaintiff’s Marks are registered in Classes 35, 41 and 42 under the following specifications:13SOC at paras 7-9. 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 2010.14SOC at para 10. 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.151st F&BP on SOC at paras 4(a) and 4(b). At trial, however, the plaintiff appears to revert to its initial position.16Notes of Evidence (“NE”), 14.10.14, p 98 line1. 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.171st F&BP on SOC at para 4(c). 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),18SOC at para 10. even though those marks were never registered.191st F&BP on SOC at para 4(g).
Further, the plaintiff points out that: The plaintiff won numerous marketing-related awards.20SOC at para 12. 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).21SOC at para 14. The plaintiff registered the domain name, “amcasia.com”, since November 2006, and has used the website extensively in Singapore, Malaysia, Thailand and China.22SOC at para 16. Contrast 1st F&BP at para 7, which states 26 June 2000. The plaintiff had promoted and made available to the public its services under the Plaintiff’s Marks on its website on 10 February 2007.23SOC at para 33(e); 1st F&BP on SOC at para 15(d).
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”):24SOC at para 22.
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| | “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,251st F&BP on Defence at para 1(b)(v); 2nd F&BP of Defence at para 1(b)(iii). to design and conceive the Defendant’s Marks in or around 2008,26Defence at para 8(b). 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).27LSC’s AEIC at para 12. According to the defendant, the underlying idea for “AMC” was “A Music Company”.28Defence at para 8(b).
The defendant avers that the Defendant’s Marks are registered in China (and Taiwan29Defendant’s opening statement (“DOS”) at para 16; LSC’s AEIC at para 18 and LSC-6.), and widely used in China in promotional materials for music festivals and concerts since 2008.30Defence at para 8(c); LSC’s AEIC at paras 18 and 23. 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.31Defence at para 8(c). The Defendant’s Marks have also allegedly been used on documents for transactions and/or collaborations with organisations from China and Singapore since 2008.32Defence at para 8(d); LSC’s AEIC at para 24. 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.33Defence at para 8(e); SYL’s AEIC at paras 31–39 and SYL-8 to SYL-15. 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.34Defence at para 8(f); LSC’s AEIC at para 25.
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.35SOC at para 23; LSC’s AEIC at para 21. Even though the defendant filed its application on 14 February 2012,36LSC’s AEIC at para 21. it was opposed by the plaintiff and is currently pending registration.37NE, 14.10.14, p 11 line 13.
Sometime in 2013, the defendants stopped using the name “AMC Group”, the AMC Group Mark as well as the website “www.amcgroup-china.com”.38NE, 24.10.14, p 47, lines 1-18. 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 2013.39DOS at paras 9–10; NE, 28.10.14, p 37 line 1920. Consequently, the defendant now refers to itself as “AMC Live” or “AMC Live Group”,40DOS at para 9; NE, 28.10.14, p 70 line 27. and uses the domain name “www.amclive-group.com”.41DOS at para 14. According to the defendant, it had also started using the AMC Live Mark instead of the AMC Group Mark.42NE, 28.10.14, p 70 line 27.
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:43Plaintiff’s Written Submissions (“PWS”) at para 23. 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...
