The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd
Judge | Sundaresh Menon CJ |
Judgment Date | 21 April 2016 |
Neutral Citation | [2016] SGCA 25 |
Docket Number | Civil Appeal No 71 of 2015 |
Published date | 17 January 2017 |
Plaintiff Counsel | Dedar Singh Gill and Ong Sheng Li, Gabriel (Drew & Napier LLC) instructed by Michael Moey Chin Woon (Moey & Yuen) |
Hearing Date | 22 October 2015 |
Defendant Counsel | Max Ng Chee Weng, Amira Budiyano and Mitchel Chua (Gateway Law Corporation) |
Subject Matter | Passing Off,Infringement,Own Name Defence,Defence,Goodwill,Trade Marks and Trade Names |
Court | Court of Three Judges (Singapore) |
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 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:
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:
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The Appellant’s Marks were registered on 31 August 2012 in Classes 35, 41 and 42, which have the following specifications:
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 MarksThe 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:
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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)(
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
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 OffIn 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 usThe 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:
In our judgment, the Judge’s finding of
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