The Singapore High Court considered the scope of the own name defence in section 28 of the Trade Marks Act for the first time in Singapore in The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd  SGHC 77. The court found that the defendant could avail itself of this defence in the present matter and the plaintiff’s application failed.
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 including the organisation of concerts as part of an event.
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’s business in Singapore was an extension of its business in Chengdu, China, where its operations were first established around 2007 and presently headquartered.
The plaintiff was the registered proprietor of two trade marks, 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.
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 Trade Marks Act (the “Act”), alleging that the defendant’s marks, the “AMC Group Mark” and the “AMC Live Mark” (collectively, 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.
The defendant denied both claims, stating that its marks were conceived independently and that “AMC” stood for “A Music Company”. The defendant asserted that its marks were registered in China and widely used for music promotional materials there since 2008 and also sought to rely on the prior use defence and the own name defence.
Trade mark infringement
To determine if a trade mark has been infringed, the court must determine if it is distinctive and 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 of the AMC Asia Mark 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 plaintiff’s AMC Asia Mark and the defendant’s marks bore 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” did 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 given that the defendant’s management of concerts would be similar to the plaintiff’s organisation of entertainment events. There was, however, no similarity in users as the users of the plaintiff’s services would be corporate entities while users of the defendant’s services would be the general public. There was also some substitutability in the services provided by the parties.
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. There was, therefore, a likelihood of confusion. The court was supported in its conclusion by the evidence of actual confusion adduced by the plaintiff.
The defendant sought to rely on the prior use defence under section 28(2) of the Act and the own name defence under section 28(1)(a) of the Act.
With respect to the defence of prior use, the plaintiff adduced evidence of 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 claimed 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.
With respect to the 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, as required under section 28(1) of the Act. 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 was 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 concluded 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 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.
The plaintiff also brought a claim in passing off which involved the court considering goodwill, misrepresentation and damage. 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.
For the reasons discussed above, the plaintiff’s claims were dismissed.
Dr Stanley Lai, SC
Allen & Gledhill LLP
Dr Stanley Lai, SC is the Head of the Intellectual Property practice.
Stanley specialises in all forms of IP litigation and information technology disputes, and is also a commercial litigator. He also maintains a strong advisory practice for IP management and strategy, serving a broad spectrum of clients.
In the biomedical sector, Stanley has substantial experience in advising on healthcare and medical regulatory issues concerning medicines, medical devices, clinical trials, product recalls and product liability.
Stanley is recommended as a Leading Individual in Chambers Asia-Pacific, The Legal 500 Asia Pacific and other leading legal publications. He has also written and published extensively on the subject of intellectual property and information technology law.
He is currently the Chairman of the Intellectual Property Office of Singapore and the first Singapore-born lawyer to have been conferred a Ph.D in Law from the University of Cambridge, UK. In January 2010, Stanley was appointed Senior Counsel.