19 June, 2016
Trade mark – trade mark infringement – own name defence
— The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd [2016] SGCA 25, (Singapore, Court of Appeal, 21 April 2016)
Facts
The Audience Motivation Company Asia Pte Ltd (“Appellant”) is an events management company incorporated in Singapore on 2 August 2000, and is involved in the management of marketing events including corporate sales launches, media launches and road shows. Its clientele includes prominent local and international companies.
AMC Live Group China (S) Pte Ltd (“Respondent”) is part of a group of companies which provides event and concert management services across the region in China, Singapore, Taiwan, Malaysia and Hong Kong, and was incorporated in Singapore on 20 January 2012. The group has its origins in Chengdu, China, where its group chief executive officer, Mr Leong Seng Chet (“Mr Leong”), first ventured into the concert management industry in 2007.
The Appellant is the registered proprietor of the following trade marks (collectively, the “Appellant’s Marks”), which it claims have been infringed by the Respondent’s marks (click here)
The Appellant’s Marks were registered on 31 August 2012 in respect of the following services:
- Class 35: “Advertising; event management services (organisation ofexhibitions 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”.
The following marks (collectively, the “Respondent’s Marks”) were used by the Respondent, and are alleged to be similar to, and to have infringed, the Appellant’s Marks (click here).
These marks were not registered at the time of the trial or the appeal.
The Appellant claimed that the Respondent had infringed the AMC Asia Mark under Section 27(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev. Ed.) (“TMA”) and passing off in relation to the Appellant’s Marks.
At first instance, the High Court found that the Respondent’s Marks, trading name and domain names were visually and aurally similar to the AMC Asia Mark, especially in relation to the “amc” acronym. The High Court 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 in addition to actual confusion caused by the similarity of the Respondent’s Marks with the AMC Asia Mark. Thus, the High Court judge found that there was prima facie infringement of the AMC Asia Mark under Section 27(2)(b) of the TMA.
However, the High Court found that the own name defence under Section 28(1)(a) of the TMA was applicable in the circumstances and consequently dismissed the Appellant’s trade mark infringement claim. In particular, the High Court 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.
In relation to the claim of passing off, the High Court held that there was misrepresentation and damage but not goodwill. In this respect, the High Court found 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 and hence a claim in passing off.
The present application is an appeal against the whole of the High Court decision, except for the finding that the Respondent’s Marks were not similar to, and hence did not infringe, the Human Exclamation Mark.
In addressing this appeal, the Court of Appeal considered the following issues, among other things:
- Whether there was an infringement of the AMC Asia Mark pursuant to Section 27(2)(b) of the TMA; and
- If so, whether the own name defence under Section 28(1)(a) of the TMA was not available to the Respondent in the present case.
Decision
Trade mark infringement – Section 27(2)(b) of the TMA
The Court of Appeal found that there were visual and aural similarities between the Respondent’s Marks and the AMC Asia Mark, and thereby affirmed the High Court’s finding of trade mark infringement. In particular, the Respondent’s use of the “amc” acronym in lower case in a similar font, including the use of a double-storey letter “a”, and the microphone in the Respondent’s Marks, which was similar to the exclamation mark in the AMC Asia Mark, led to the conclusion that the Respondent’s Marks and the AMC Asia Mark were visually and aurally similar.
There was also a likelihood of confusion and evidence of actual confusion, as seen in the testimonies of the Appellant’s witnesses at trial. Further, the Court of Appeal found that there was a prima facie case of identity (and not just similarity) of goods and services, as the Respondent had intended to register the AMC Group Mark in Classes 35 and 41 (for which the AMC Asia Mark was registered in) prior to the present proceedings. It did not matter that the Appellant and Respondent targeted different segments of the events management market at the point in time of the case.
On the findings above, the Court of Appeal affirmed the High Court’s finding that there was a prima facie case of trade mark infringement.
Own name defence – Use of a company’s own name
First, the Court of Appeal held that the defence is only available insofar as one seeks to justify the use of one’s own name in the trade mark. Hence, it was not possible to embellish the use of one’s own name with other features and yet remain within the scope of the defence, as other similarities arising from the addition of a similar logo, the adaptation or modification of the person’s name or the application of other design similarities could act as a source of confusion, or add to the confusion already occasioned by use of the actual name in question.
Second, the Court of Appeal took into account the fact that the present TMA was enacted with the intention to, among other things, ensure compliance with the Agreement on Trade-Related Aspects of Intellectual Property Rights, and as such did not resolve the present interpretation of Section 28(1)(a) of the TMA through a straightforward application of the Interpretation Act.
Having established that point, the Court of Appeal held that the defence is available to a company in relation to the use of its own name, subject to the Court being satisfied that such use is within the ambit of honest practices. This included the partial use of a company’s corporate name as well as trading names.
In both of the points above, the Court of Appeal held that the use of an own name or company’s own name, whether in whole or in part, was subject to the “honest practices” proviso below.
Own name defence – “Honest practices”
Third, the Court of Appeal pointed out that “honest practices in industrial or commercial matters” as provided for in Section 28(1)(a) of the TMA indicated an objective assessment based on what is commonly done and regarded as honest in the business or industry. However, it did not accept the view that such a wording entailed the removal of the subjective inquiry of honesty, and held that the Courts were entitled to assess honesty by reference to the motivations and intentions of the Respondent in addition to the objective assessment above.
Further, because this was a defence to infringement, the burden of proof lay on the defendant to prove that they had acted honestly within the subjective and objective meaning of the word on the balance of probabilities. Thus, the bare assertion of a defendant would not be sufficient to establish the defence.
Own name defence – Assessment
Based on the facts of the present case, the Court of Appeal held that the Respondent could not rely on the own name defence under Section 28(1)(a) of the TMA, in particular because the Respondent’s use of the “amc” name did not accord with honest practices as established above. This was for the following reasons:
- The name ‘amc’ had no evident connection with or relation to the name of 四川大弘文化传播有限公司, translated as Sichuan Da Hong Cultural Communication Co Ltd (the “Chengdu Company”), which was the first company to be incorporated within the group of companies run by Mr Leong;
- Only the Appellant was known by the name “amc” in the local events management scene prior to the incorporation of the Respondent. During this time, the Chengdu Company was involved in the management of various events in Singapore, during which it presented itself as “amc”. This strongly suggested active misrepresentation on the Respondent’s part;
- The Respondent’s witness could not adequately explain why she had designed logos that used exactly the Appellant’s abbreviated name “AMC Asia” when the group was only operating in China and not Asia at the time;
- The direct contradiction between the Respondent’s witness’s evidence with the Respondent’s other evidence; and
- The Respondent’s inability to account for the similarities addressed in the trade mark infringement point above.
Thus, based on the circumstances above, the Court of Appeal reversed the High Court’s decision, and held that the Respondent had failed to discharge the burden of proving that the “amc” name, the AMC Group Mark and the AMC Live Mark were honestly and independently conceived or that the use of the “amc” name accorded with honest practices.
Comments
This decision is the first time the Court of Appeal has dealt with the own name defence as it exists under Section 28(1)(a) of the present TMA. As such, it is highly instructive on the scope of and the evidence necessary to establish an own name defence in the case of trade mark infringement. It can be seen from the case that the own name defence is limited in scope, being applicable only to use of one’s own name and not to embellishments of the same, and being subject to restrictions of “honest practices”.
The Court of Appeal also highlighted that the burden is on the defendant to prove upon the balance of probabilities that they were both subjectively and objectively honest for in order to avail themselves of the defence.
A copy of the decision may be accessed at:
For further information, please contact:
Jeffrey Lim, Partner, WongPartnership
jeffrey.lim@wongpartnership.com
