SINGAPORE: AMC IN DISPUTE

May 5th, 2015

 

In the case of The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd, the Singapore High Court dismissed the Plaintiff’s claims for infringement and passing off.

The Audience Motivation Company Asia Pte Ltd, (hereinafter referred to as “the Plaintiff”) is a Singapore company. 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 (e.g., gala or anniversary dinners), exhibitions, corporate road shows, CEO summits and concerts (as part of an event).

AMC Live Group China (S) Pte Ltd (formerly known as AMC Group China (S) Pte Ltd), (hereinafter referred to as “the Defendant) is also a Singapore company. The Defendant is in the business of providing event and concert organisation services. 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. At present, the Defendant’s business is headquartered in Chengdu, China, with operations in Singapore, China, Taiwan, Hong Kong and Malaysia.

The Plaintiff is the registered proprietor of the following trade marks in Singapore (collectively “the Plaintiff’s Marks”). T and the Plaintiff filed the trade mark applications in Singapore on 31 August 2012, and the Singapore applications were approved in January 2013.

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The Plaintiff’s Marks are registered in Classes 35, 41 and 42 under the following specifications:

(a) 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.

(b) Class 41: Event management services (organisation of educational, entertainment, sporting or cultural events).

(c) Class 42: Design of brand names; design of publicity material.

The Plaintiff alleged 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”)

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(hereinafter referred to as “the AMC Group Mark”)

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(hereinafter referred to as “the AMC Live Mark”)

The Defendant denied 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 has filed a trade mark application to register the “AMC Group Mark” in Classes 35 and 41 in Singapore under the specifications “promotion (advertising) of concerts” and “management of concerts” respectively. The Plaintiff had filed an opposition against the Defendant’s trade mark application once it was published for opposition.

Sometime in 2013, the Defendant stopped using the name “AMC Group” and “AMC Group Mark” as well as the website “www.amcgroup-china.com”. 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. The Defendant is now refers to itself as “AMC Live” or “AMC Live Group”, and uses the domain name “www.amclive-group.com”. The Defendant had also started using the “AMC Live Mark” instead of the “AMC Group Mark”.

The Plaintiff sued the Defendant on trade mark infringement and passing off. The Plaintiff claimed that the Defendant had infringed the Plaintiff’s Marks under Sections 27(2)(a), 27(2)(b) and 27(3) of the Singapore Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”).

The Defendant however denied the Plaintiff’s claims and the Defendant also contended 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;
  • the Plaintiff’s Marks are not well known;
  • the Defendant is entitled to rely on the defence under Section 28(1)(a) of the TMA (“the own name defence”);
  • the Defendant is entitled to rely on the defence under Section 28(2) of the TMA (“the prior use defence”); and
  • the Defendant is entitled to rely on the defence under Section 28(3) read with Section 9 of the TMA (“the honest concurrent use defence”).

The Defendant also denied that there can be no claim in passing off because:

  • the Plaintiff does not enjoy goodwill in the name “amc”;
  • the Defendant had not misrepresented its services as that of the Plaintiff;
  • the Defendant’s acts were not calculated 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 Plaintiff;
  • the Plaintiff did not suffer any damage as a result of the misrepresentation (if proven); and
  • there is honest concurrent use (as a common law defence). [The honest concurrent use defence was eventually abandoned].

Under infringement issues, the High Court held that although there is no similarity between the Plaintiff’s marks and the Defendant’s mark, the Plaintiff’s marks and the defendant’s mark are likely to deceive or cause confusion.

The Plaintiff tried to cast doubts on the bona fides of the Defendant’s choice of name and suggested that it was trying to ride on the success of the Plaintiff. However, there is no evidence to support this. There was evidence adduced to show that the acronym “amc” is used by a number of companies in Singapore. The fact that the Defendant (and its predecessors) had chosen “amc” as its trading name, does not, in itself, link that choice to the Plaintiff. In addition, the Defendant undertook a rebranding of the company (including its name, domain name and trade mark) which appears to be an attempt to avoid any confusion. Therefore, Court found that the Defendant’s choice of name was bona fide and the Defendant is entitled to rely on the own name defence under Section 28(1)(a) of the TMA.

Under passing-off, the Court held that the Plaintiff had not acquired goodwill in the “amc” name, that the element of misrepresentation is established and there is no damage to the Plaintiff’s reputation and goodwill.

The Court dismissed the Plaintiff’s claims in their entirety.