High Court · Decided 20 March 2015

The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd

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[2015] SGHC 77Case no. Suit No 677 of 2013

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Lee Seiu Kin J :
Introduction
[1] 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
[2] The plaintiff is The Audience Motivation Company Asia Pte Ltd, a company incorporated in Singapore on 2 August 2000. 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).
[3] 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. The defendant carried on 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. According to the defendant, the operations are managed in the following manner:
(a) the defendant manages the business in Singapore;
(b) (“Sichuan Dahong”) manages the business in Chengdu, China;
(c) (“Dahong Yazhou”) manages the business in Taiwan;
(d) AMC Live Concerts (M) Sdn Bhd manages the business in Malaysia; and
(e) no company has been incorporated for the business in Hong Kong.
Background to the dispute
[4] The plaintiff is the registered proprietor of the following trade marks (collectively “the Plaintiff’s Marks”):
[5] The plaintiff filed their applications to register the Plaintiff’s Marks on 31 August 2012, and the applications were approved in January 2013. 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.
[6] 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. 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. At trial, however, the plaintiff appears to revert to its initial position. As the dates are pertinent to one of the issues, it will be discussed in greater detail later ([118] below).
[7] The Plaintiff’s Marks were allegedly used in trade publications, awards, recruitment advertisements, electronic direct mail, official correspondence, invoices, corporate gift premiums and others. 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), even though those marks were never registered.
[8] Further, the plaintiff points out that:
(a) The plaintiff won numerous marketing-related awards.
(b) 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).
(c) The plaintiff registered the domain name, “amcasia.com”, since November 2006, and has used the website extensively in Singapore, Malaysia, Thailand and China.
(d) The plaintiff had promoted and made available to the public its services under the Plaintiff’s Marks on its website on 10 February 2007.
[9] 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”):
[10] 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.
[11] 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, to design and conceive the Defendant’s Marks in or around 2008, 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). According to the defendant, the underlying idea for “AMC” was “A Music Company”.
[12] The defendant avers that the Defendant’s Marks are registered in China (and Taiwan), and widely used in China in promotional materials for music festivals and concerts since 2008. 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. The Defendant’s Marks have also allegedly been used on documents for transactions and/or collaborations with organisations from China and Singapore since 2008. 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. 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.
[13] 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. Even though the defendant filed its application on 14 February 2012, it was opposed by the plaintiff and is currently pending registration.
[14] Sometime in 2013, the defendants stopped using the name “AMC Group”, the 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. Consequently, the defendant now refers to itself as “AMC Live” or “AMC Live Group”, and uses the domain name “www.amclive-group.com”. According to the defendant, it had also started using the AMC Live Mark instead of the AMC Group Mark.
Plaintiff’s case
[15] 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”).
[16] 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:
(a) That the defendant’s use of the Defendant’s Marks infringes the plaintiff’s AMC Asia Mark.
(b) 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.
(c) 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.
[17] As for the claim in passing off, the plaintiff’s case is that:
(a) 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 goodwill in the name “amc” when used in relation to the said services.
(b) The defendant’s use of the name “amc” or “AMC Group China” misrepresents to the members of the public (and in particular, the actual and potential consumers of the plaintiff and the defendant) that the defendant’s services are that of the plaintiff and/or connected to or associated with the plaintiff.
(c) The defendant’s use of the name “amc” or “AMC Group China” was calculated to deceive or likely 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 the plaintiff.
(d) The plaintiff suffered or would suffer damage under the following heads as a result of the defendant’s use of “amc” or “AMC Group China”:
(i) inferiority of the defendant’s services;
(ii) loss of licensing/franchising opportunity or income;
(iii) likelihood of damage should the defendant get into financial, legal or other trouble;
(iv) misappropriation of the plaintiff’s goodwill and reputation;
(v) restriction on the plaintiff’s natural expansion into providing a greater range of event and concert organisation services;
(vi) loss of exclusivity and the erosion of distinctiveness of the Plaintiff’s Marks; and
(vii) dilution of the goodwill attached to the Plaintiff’s Marks.
Defendant’s case
[18] The defendant’s case is that there is no trade mark infringement because:
(a) The Defendant’s Marks are not identical/similar to the Plaintiff’s Marks, and there is no likelihood of confusion.
(b) The Plaintiff’s Marks are not well known.
(c) The defendant is entitled to rely on the defence under s 28(1)(a) of the TMA (“the own name defence”).
(d) The defendant is entitled to rely on the defence under s 28(2) of the TMA (“the prior use defence”).
(e) The defendant is entitled to rely on the defence under s 28(3) read with s 9 of the TMA (“the honest concurrent use defence”).
[19] In addition, the defendant avers that there can be no claim in passing off because:
(a) The plaintiff does not enjoy goodwill in the name “amc”.
(b) The defendant had not misrepresented its services as that of the plaintiff.
(c) 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 the plaintiff.
(d) The plaintiff did not suffer any damage as a result of the misrepresentation (if proven).
(e) There is honest concurrent use (as a common law defence).
[20] The honest concurrent use defence was eventually abandoned.
Issues before this Court
[21] The issues before this Court can be classified into two categories: first, issues that arise out of the claim in trade mark infringement and second, issues that arise out of the claim in passing off.
[22] The issues that arise out of the claim in trade mark infringement are as follows:
(a) Whether the Defendant’s Marks are similar to the Plaintiff’s Marks.
(b) Whether the Defendant’s Marks are used in relation to similar services.
(c) Whether there is a likelihood of confusion.
(d) Whether the defendant is entitled to any defences under the TMA.
[23] The issues that arise out of the claim in passing off are as follows:
(a) Whether the plaintiff enjoys goodwill in the name “amc”, the Plaintiff’s Marks and the domain name “amcasia.com”.
(b) Whether the defendant had misrepresented its services as that of the plaintiff’s services, and/or whether the defendant’s acts were calculated to deceive or mislead the members of the public to believe that the defendant’s services are that of the plaintiff and/or otherwise connected to or associated with the plaintiff.
(c) Whether the plaintiff’s interests have been damaged as a result of the defendant’s misrepresentation.
(d) Whether there is any defence to the claim in passing off.
[24] I will address them in turn.
First claim: Trade mark infringement
Issue 1: Similarity of marks
[25] The principles governing the comparison between marks for similarity are well-established: see Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941 (“Hai Tong”) at [40]. As such, I will not repeat them here.
[26] I would only add that the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell”) observed at [24]–[25] that technical distinctiveness (ie, capacity of a mark to function as a badge of origin) can either be inherent or acquired through use, and it is “an integral factor in the marks-similarity inquiry”. A mark which has greater technical distinctiveness “enjoys a high threshold before a competing sign will be considered dissimilar to it”: Staywell at [25], citing Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2013] 1 SLR 531 (“Sarika”) at [36]. Specifically, the Court of Appeal noted at [26] that the comparison of similar marks must be “based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” [emphasis added]. However, the Court of Appeal reiterated at [30] that distinctiveness is “a factor integrated into the visual, aural and conceptual analysis as to whether the competing marks are similar” [emphasis in original], and not a separate step of the inquiry. With this in mind, I proceed to compare the various marks.
Comparing AMC Asia Mark with AMC Group Mark
[27] For convenience, I shall reproduce the marks in question below:
[28] The analysis begins with the distinctiveness of the “amc” component of the AMC Asia Mark. The relevance is that, as highlighted in Sarika at [36], the greater the distinctiveness, the easier it is for a competing mark to be found to be similar despite modifications. It should nevertheless be borne in mind the cautionary words of Staywell at [29] that the distinctiveness of a particular component of a mark is only one of the factors that goes towards the overall analysis.
[29] The plaintiff claims that the dominant aspect of the AMC Asia Mark is the “amc” component. According to the plaintiff, the “amc” component is inherently distinctive as it is purely inventive or fancy in the sense that it is made up and has no meaning at all, and is arbitrary in the sense that it has nothing relevant to say about the goods in question themselves. In addition, I understand the plaintiff to be saying that the “amc” component has acquired distinctiveness through its extensive use. The defendant, on the other hand, appears to be disputing the distinctiveness of the “amc” component of the AMC Asia Mark. The defendant highlights that, first, the acronym “amc” is common in Singapore, and second, the plaintiff had always used the AMC Asia Mark together with its name, in the following manner:
[30] In my view, the “amc” component of the AMC Asia Mark is inherently distinctive as it consists of three letters that do not connote any meaning at all. Even though it is undisputed that “amc” is a “common acronym” in Singapore, I do not think that it would, on the facts of the present case, be sufficient to negate the inherent distinctiveness of “amc”. The fact that it is a common acronym does not render “amc” any less capable of being used as a mark or badge of origin of the service (see Hai Tong at [29]; Staywell at [24]). Given that the “amc” component of the AMC Asia Mark is inherently distinctive, it would not be necessary to consider if “amc” had acquired distinctiveness through use.
[31] As mentioned earlier ([29] above), the defendant appears to be challenging the distinctiveness of “amc” in the AMC Asia Mark on the basis that the acronym “amc” is common in Singapore and the plaintiff had always used the AMC Asia Mark together with its name. In support of its contention, the defendant cites The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2006] 2 SLR(R) 690 (“Polo/Lauren”) at [23]–[24], which states:
[32] However, the defendant’s contention is misconceived. In Polo/Lauren, the Court of Appeal found the word “POLO” is a “common English word” that is not inherently distinctive. It was in this context that the Court of Appeal said that any distinctiveness therefore must be acquired through use and that there is no such evidence of such use. In the present case, it is beyond doubt that “amc” is inherently distinctive and as such, there is no need for the plaintiff to show that it had acquired distinctiveness through use.
[33] I turn to consider the visual similarity of the AMC Asia Mark and the AMC Group Mark.
[34] The plaintiff contends that the distinctive and dominant element would be the “amc” component. The plaintiff further argues that the exclamation mark device in the AMC Asia Mark and the microphone device in the AMC Group Mark are visually similar, taking into account the imperfect recollection of the average consumer. According to the plaintiff, the word “asia” in the AMC Asia Mark and the words “Group China” in the AMC Group Mark are highly descriptive and generic such that they are of negligible significance because the average consumer would not pay much attention to them. The plaintiff also submits that the words “to create, entertain and inspire” in the AMC Group Mark are in very small font and has very little visual impact.
[35] On the other hand, the defendant submits that a “side-by-side comparison” of the AMC Asia Mark and the AMC Group Mark would reveal that they are not visually, aurally or conceptually similar. The defendant examines the individual components of the respective marks in detail and points out specific differences, including:
(a) the letters “amc” in the AMC Group Mark are “conjoined” and in bold, while the letters “amc” in AMC Asia Mark are not; and
(b) there is a “very prominent” exclamation mark device in the AMC Asia Mark, and there is a classic microphone device in the AMC Group Mark.
Nevertheless, the defendant agrees that the words “to create, entertain and inspire” are in very small font and would not be as prominent.
[36] In my view, the AMC Asia Mark and the AMC Group Mark have some degree of visual similarity. First of all, the defendant’s conclusion is flawed insofar as it adopted a “side-by-side comparison”. It is trite law that marks should not be compared side-by-side as the imperfect recollection of the consumer must be taken into account (see Sarika at [18]). A close scrutiny of the two marks would undoubtedly reveal differences that would not have been apparent otherwise ([35] above). In the present case “amc” is the distinctive and dominant element in the AMC Asia Mark. The AMC Group Mark is similar to the AMC Asia Mark because they share the identical letters “amc” and are both in lower case and similar font. Moreover, both marks use the double-storey letter “a” as opposed to a single-storey letter “a”. The reference to “asia” and “China”, in my view, would not offset the visual similarity. Neither would the reference to “AMC Group” render the two marks visually dissimilar. In this respect, the present case is similar to Doctor’s Associates Inc v Lim Eng Wah (trading as Subway NICHE) [2012] 3 SLR 193 (“Subway”), where Judith Prakash J found at [34] that the addition of the word “niche” did not offset the visual similarity given the distinctiveness of the subway mark. In fact, the present case is even more compelling than Subway given that the generic descriptive words like “asia”, “China” and “Group” would, in all likelihood, not leave much of an impression with a consumer, bearing in mind the imperfect recollection. In addition, the microphone device in the AMC Group Mark bears some similarity with the exclamation mark device in the AMC Asia Mark. In any event, the devices are relatively insignificant because they would not draw any significant attention away from the distinctive and dominant “amc” component. A consumer trying to recall the mark would more likely recall “amc” rather than the devices, and neither the exclamation mark nor the microphone devices would serve as a point of distinction between the marks. This is akin to the flower device in Hai Tong. In Hai Tong at [65], the Court of Appeal held that the flower device was relatively insignificant because, inter alia, (a) the textual component of the mark was distinctive as the words “Lady Rose” conveyed no meaning and had no notional or allusive quality, (b) the flower was not a feature that drew any significant attention away from the words, (c) a consumer trying to recall the mark would more likely recall the textual component rather than the device component, and (d) if the textual component were found to be substantially similar, it was unlikely that the simple stylised rose in the mark would serve as a point of distinction.
While the AMC Group Mark has the words “to create, entertain and inspire” which are absent from the AMC Asia Mark, it is undisputed that they are in very small font and would not be as prominent. As such, the words “to create, entertain and inspire” would have limited visual impact on the consumers. However, I should add that the AMC Group Mark does look more complicated than the AMC Asia Mark. I therefore find that there is some degree of visual similarity between the AMC Asia Mark and the AMC Group Mark.
[37] I now consider the aural similarity of the AMC Asia Mark and the AMC Group Mark.
[38] The plaintiff submits that the distinctive and dominant component of the two marks, that is, “amc”, would be aurally similar given that both require the three letters to be read out individually. The defendant contends that there is no aural similarity, essentially because there are words in the AMC Group Mark which do not appear in the AMC Asia Mark.
[39] In Staywell at [31], the Court of Appeal noted that the trial judge had compared “ST. REGIS” and “PARK REGIS” and considered the word “Regis” to be the dominant and distinctive component of both marks when read out. The Court of Appeal agreed with the trial judge’s approach. The Court of Appeal observed that “Regis” enjoys a substantial degree of technical distinctiveness, as well as distinctiveness in the non-technical sense because it will stand out in the imperfect recollection of the customer. Having said that, the Court of Appeal went on to find at [33] that there is a high degree of aural similarity between the competing marks given the distinctiveness of the common “Regis” component in both the technical and non-technical senses.
[40] In the present case, the dominant and distinctive component of both marks when read out would be “amc”. It is not only technically distinctive ([30] above), but also distinctive in the non-technical sense because, like the “Regis” component in Staywell, it is the part which will stand out in the imperfect recollection of the customer. It is also pertinent to note that “amc”, being the first three syllables of both marks, are pronounced in an identical manner. While the AMC Group Mark has other words that are not present in the AMC Asia Mark, I do not think that this would drastically reduce the aural similarity of the two marks. In Subway, Prakash J considered at [36] that the common feature of the word “SUBWAY” in both marks renders the marks aurally similar notwithstanding the inclusion of “niche” in the offending mark. Likewise, the additional words “to create, entertain and inspire” in the AMC Group Mark would not reduce the obvious aural similarity between the dominant and distinctive component of the marks which are pronounced in an identical manner. In this regard, it is pertinent to note that the Court of Appeal in Staywell at [32] considered that the quantitative assessment (ie, whether the competing marks have more syllables in common than not) was an alternative approach.
[41] I move on to conceptual similarity.
[42] The plaintiff submits that there is conceptual similarity because both marks share the “amc” component which has no particular conceptual meaning. The defendant contends that the two marks are conceptually dissimilar. According to the defendant, the idea behind the AMC Group Mark is music and entertainment, and this is manifested in the microphone device as well as “amc” which stands for “A Music Company”. On the other hand, the defendant says that the idea behind AMC Asia Mark is the plaintiff’s desire to excite and motivate its audience and customers, and this is reflected in the exclamation mark device and “amc”, which is the acronym for “Audience Motivation Company”.
[43] It is well accepted that the inquiry as to conceptual similarity is directed at “the ideas that lie behind or inform the marks or signs in question”: Hai Tong at [70]; Sarika at [34]. However, it must be an idea that manifests in the look and feel of the mark, and not something that is known only to its creator: Sarika at [34], citing Hyundai Mobis v Mobil Petroleum Company, Inc [2007] SGIPOS 12. Contrary to the plaintiff’s submission, the marks in question cannot be conceptually similar because the common “amc” component has no conceptual meaning. In particular, it should be noted that both marks are composite marks with textual as well as device components. In Sarika, the Court of Appeal found at [34] that the words “Nutello” and “Nutella” are not conceptually similar because they are invented and meaningless with no particular idea underlying each of them. The Court of Appeal distinguished Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 (“Festina”) on the basis that the “Nutello” sign and “Nutella” mark do not have a device element which evoke ideas. In contrast, the “Festina” and “J.Estina” marks comprised of invented words as well as a crest device and a crown device respectively. The judge in Festina found that the crest and crown devices indicated a sense of “class” and “status” and thus concluded that there was conceptual similarity between the marks. In addition, the discussion of the Court of Appeal in Staywell at [35] clearly explains why the plaintiff’s approach is flawed:
[44] Coming back to the present case, while it may be true that the common “amc” component of the two marks in question do not, on its own, evoke any ideas in the minds of the customer, they cannot be taken in complete isolation. Unlike the visual and aural analysis, the “amc” component is not the conceptually dominant component of the composite marks. Instead, the AMC Asia Mark, with the exclamation mark device, would probably connote excitement and surprise. It is unlikely, however, for the customer to realise by simply looking at the AMC Asia Mark that the “amc” component was meant to refer to Audience Motivation Company. On the other hand, the AMC Group Mark which has a microphone device next to the “amc” component would likely evoke ideas of music and entertainment. This is supported by the words “to create, entertain and inspire”. However, it would not have been obvious when one sees the AMC Group Mark that the “amc” component was meant to convey the idea of “A Music Company”.
[45] This view is consistent with the case law. The present case is unlike Festina, where the device component of the marks evoked the same idea of “class” and “status” (see Festina at [45]), or Staywell, where the marks share a tendency to connote a place or location or building which are linked by the common reference to “Regis” (see Staywell at [37]). As shown above, the marks in the present case evoke totally different ideas. The reasoning in Sarika, where the invented words “Nutella” and Nutello” were unaccompanied by any device component (see Sarika at [34]), is also inapplicable in the present case given the differences in the facts.
[46] For the foregoing reasons, I find that there is no conceptual similarity between the AMC Asia Mark and AMC Group Mark.
[47] On the whole, taking into account the visual, aural and conceptual analysis, I find that the AMC Asia Mark and AMC Group Mark do bear some degree of similarity.
[48] I move on to consider the AMC Asia Mark and the AMC Live Mark.
Comparing AMC Asia Mark with AMC Live Mark
[49] For convenience, I reproduce again the marks below:
[50] As discussed earlier ([28]–[32] above), the “amc” component of the AMC Asia Mark is inherently distinctive. The same applies here. The parties’ arguments are substantially similar to the earlier issue concerning the similarity of the AMC Asia Mark and the AMC Group Mark, and insofar as they are similar, I will not repeat them below. With that, I proceed to examine the similarity of the two marks, starting with visual similarity.
[51] In my view, there is some degree of visual similarity between the AMC Asia Mark and the AMC Live Mark. Like before, the “amc” component of the AMC Asia Mark is the distinctive and dominant element of the AMC Asia Mark, and the reasoning at [30] applies equally here. The AMC Live Mark adds the word “live” after the “amc” component, and notably, in the same size and font type. There is also a slanted microphone device on the right side of the AMC Live Mark. However, I do not think that the addition of the word “live” would draw any significant attention away from the distinctive and dominant “amc” component. Also, the location of the slanted microphone, which is less prominent than the “amc” component in the AMC Live Mark, would not likely offset the visual similarity between the two marks. The words “to create, entertain and inspire” is in very small font and would have limited visual impact on the consumers. As such, I find that the AMC Asia Mark and the AMC Live Mark have some degree of visual similarity.
[52] As for aural similarity, I find that there is a high degree of aural similarity between the AMC Asia Mark and the AMC Live Mark for the same reasons stated at [40]. The addition of the word “live” after the distinctive and dominant “amc” component would not render the two marks aurally dissimilar.
[53] I move on to conceptual similarity. I find that there is no conceptual similarity between the AMC Asia Mark and AMC Live Mark for the same reasons stated at [44]. The addition of the word “live” in the AMC Live Mark is consistent with the ideas of music and entertainment.
[54] Accordingly, I find that the AMC Asia Mark and the AMC Group Mark do bear some degree of similarity.
Comparing AMC Asia Mark with the defendant’s trading name and domain name
[55] As mentioned earlier, the plaintiff contends that the defendant’s trading name and domain name infringe the AMC Asia Mark. As a preliminary issue, it must be considered if the trading name and domain name were used “in relation to” goods or services (s 27(2) of the TMA). This is a prerequisite for infringement. The learned authors of James Mellor et al, Kerly’s Law of Trade Marks and Trade Names (Sweet & Maxwell, 15th Ed, 2011) (“Kerly”) at paras 14-033 and 14-034 explained it as follows:
[56] The discussions of the Court of Justice of the European Union (“CJEU”) in Celine SARL v Celine SA (C-17/06) [2007] ETMR 80 at [21]–[23] is also helpful:
[57] In the present case, the use of “amc” in the defendant’s trading name and domain name would not only identify the company or designate its business but also denote the origin of the services provided by the defendant. It follows that the use of “amc” in the defendant’s name and domain name, in the present case, would suffice as use “in relation to” goods or services under s 27(2) of the TMA.
[58] Having dealt with the preliminary issue, I proceed now to examine whether the defendant’s trading name and domain name are similar to the plaintiff’s AMC Asia Mark. For convenience, I shall set them out below:
[59] The plaintiff’s case in this respect is that the defendant’s trading name and domain name comprise primarily of the dominant and distinctive “amc” component of the AMC Asia Mark and would therefore be visually, aurally and conceptually similar. In fact, the plaintiff claims that the defendant’s trading name and domain name are even more similar given that they do not have any significant modifications to distinguish itself from the “amc” component of the AMC Asia Mark.
[60] I begin the analysis with visual similarity. In my view, the defendant’s trading name and domain name are visually similar to the AMC Asia Mark. As mentioned earlier, “amc” is the dominant and distinctive component of the AMC Asia Mark. The defendant’s trading name and domain name bear a significant degree of visual similarity to the AMC Asia Mark on account of the distinctiveness of the “amc” component. This is notwithstanding minor differences like the exclamation mark device or the word “Group”. The reference to “asia” and “china” are generic and would not likely offset the visual similarity.
[61] As for the aural similarity, the “amc” component is still the dominant and distinctive component both in the technical and non-technical senses (see Staywell at [33]). As such, I find that the defendant’s trading name and domain name are aurally similar to the AMC Asia Mark.
[62] I move on to conceptual similarity. I have mentioned earlier that the AMC Asia Mark evokes ideas of excitement and surprise ([44] above). However, the defendant’s trading name and domain name are simply meaningless and have no particular idea underlying each of them. As such, I find that there is no conceptual similarity between the AMC Asia Mark and the defendant’s trading name and domain name.
[63] On the whole, I find that the AMC Asia Mark and the defendant’s trading name and domain name are similar.
Comparing Human Exclamation Mark with the Defendant’s Marks
[64] The last comparison would be between the Human Exclamation Mark and the Defendant’s Marks, which I reproduce below for convenience:
[65] The plaintiff appears to be suggesting that the comparison should be made between the Human Exclamation Mark and the words “to create, entertain and inspire”, which appears as part of the Defendant’s Marks. In my view, this is wrong, and the comparison should be done between the Human Exclamation Mark and the Defendant’s Marks as a whole. The plaintiff had not shown that the defendant used the words “to create, entertain and inspire” on its own as a trade mark. Rather, it appears that the words “to create, entertain and inspire” have only been used as an integral part of the Defendant’s Marks. As such, the alleged acts of infringement cannot be the use of the words “to create, entertain and inspire” on its own but must be the use of the Defendant’s Marks as a whole. I therefore proceed on this basis.
[66] The plaintiff contends that the textual component of the Human Exclamation Mark is the distinctive and dominant element of the mark. The plaintiff contends that the device component is merely decorative and calls for attention towards the words, and it does not denote the commercial origin of the goods in question.
[67] The Court of Appeal in Staywell at [23]–[24] explained distinctiveness in the technical and non-technical senses as follows:
[68] In the present case, the textual component of the Human Exclamation Mark (ie, to excite . to impress . to inspire) is completely descriptive. It is neither inherently distinctive nor has evidence been adduced to show that it has acquired distinctiveness through use. It is also not the distinctive (in the non-technical sense) or dominant component of the Human Exclamation Mark which stands out in the imperfect recollection of the consumer. In my view, the statement “to excite . to impress . to inspire” is not the distinctive and dominant component of the Human Exclamation Mark.
[69] I now proceed to consider whether the Defendant’s Marks are similar to the Human Exclamation Mark.
[70] The Human Exclamation Mark features three human figures which are obviously absent in the Defendant’s Mark. On the other hand, the Defendant’s Marks bear the words “amc” and “amc live” which are nowhere to be found in the Human Exclamation Mark. The only component that bears some resemblance would be the words “to excite . to impress . to inspire” in the Human Exclamation Mark and the words “to create, entertain and inspire” in the Defendant’s Marks. However, the words in the Human Exclamation Mark and the Defendant’s Marks are in very small font and can hardly be considered as prominent. I am of the opinion that, on the whole, there is no visual similarity.
[71] I also hold that there is no aural similarity. Even leaving aside the fact that the words “amc” and “amc live” do not appear in the Human Exclamation Mark, there is still no aural similarity between the words “to excite . to impress . to inspire” in the Human Exclamation Mark and the words “to create, entertain and inspire” in the Defendant’s Marks. Only the first and last words -“to” and “inspire” -are the same and all the other words in between are different. Further, the words in the Human Exclamation Mark appear to have pauses in between them, whereas the words in the Defendant’s Marks would normally be read in a continuous fashion. These factors increase the aural dissimilarity between the marks in question.
[72] Finally, I find there is barely any conceptual similarity between the Human Exclamation Mark and the Defendant’s Marks. The three human figure devices in the Human Exclamation Mark, together with the textual component, evoke ideas of excitement and surprise. This is different from the Defendant’s Marks. As I have elaborated earlier, the Defendant’s Marks would evoke ideas of music and entertainment ([44] and [53] above).
[73] Accordingly, I hold that there is no similarity between the Human Exclamation Mark and the Defendant’s Marks.
Issue 2: Similarity of services
[74] I next consider if there is similarity of services.
[75] The plaintiff contends that the defendant has used the Defendant’s Marks as well as the defendant’s trading name and domain name in relation to the business of organising and advertising of events and concerts, and this falls directly within the scope of services for which the Plaintiff’s Marks are registered for, namely, Classes 35 and 41. On the other hand, the defendant argues that there is no similarity of services, notwithstanding that the defendant had sought to register the Defendant’s Marks under the same International Classification of Goods and Services (“ICGS”) classes, because the actual items in each class as claimed by the parties are different.
[76] In my view, the proper approach is to compare, on the one hand, the actual services for which the allegedly infringing marks have been used and, on the other hand, the specification for which the trade mark has been registered. The starting point is s 27(2)(b) of the TMA, which reads:
[77] The plain language of the provision suggests that only the specification of the registered trade mark is relevant. However, the Court of Appeal in Sarika appears to have added a gloss over s 27(2)(b) of the TMA. The Court of Appeal explained at [45]–[47] and [51] that the service for which the allegedly infringing mark has been used must be compared to not only the specification for which the trade mark was registered but also its actual use:
[78] At this point, I pause to note that the Court of Appeal in Staywell at [58] appear to have implicitly taken a step back from the position in Sarika, suggesting that the focus lies solely with the specification for which the trade mark is registered, and not the actual good or service for which the trade mark is used:
[79] Pertinently, for this proposition the Court of Appeal in Staywell cited Sarika at [46]–[47] which clearly suggest that actual use is relevant. However, a look at Compass Publishing BV v Compass Logistics Ltd [2004] RPC 41 (“Compass”) at [22] would clarify the point:
[80] In view of those decisions of the Court of Appeal, there are two possible approaches. First, notwithstanding the observation in Staywell, which is obiter dicta, this Court remains bound by the unwieldy approach laid down in Sarika. Second, Sarika may be construed in the light of Staywell and the issue approached on the basis that actual use of the registered trade mark is not relevant to the question of similarity of goods and services. I would prefer the latter approach. The fact that there is similarity in the actual uses of the competing marks may be sufficient but should not be necessary for finding similarity of goods and services. Such a requirement would be inconsistent with the monopoly right conferred upon the trade mark proprietor. If that is the case, then to assess for similarity in the actual uses of the competing marks would be pointless and confusing. In considering similarity of goods and services, the plaintiff would only need to show that there is a similarity between the actual use by the allegedly infringing mark and the specification for which the trade mark was registered:
[81] For completeness, however, I proceed to analyse the facts in the present case on the Sarika approach, that is, compare both actual use as well as the specification of the registered trade mark.
[82] In Sarika, the Court of Appeal first applied the factors in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (commonly referred to as the “British Sugar factors”) in the comparison between the two actual products, ie, the Nutella spread and the Nutello beverage (at [52]). Having done so, the Court of Appeal observed at [53] that “many of the British Sugar factors may not be applicable as they were premised on comparing two actual products”. The Court of Appeal observed that the specification of the “Nutella” mark extends to products which have not yet been produced by the respondent, and as a result, the British Sugar factors “may not be entirely helpful” in the similarity analysis. Consequently, the Court of Appeal felt that the question that must ultimately be answered is whether the Nutello beverage can be considered a “chocolate product”, that is, the specification for which the “Nutella” mark is registered for.
[83] In my analysis, I follow the framework relied upon by the Court of Appeal in Sarika in analysing the similarity of goods and services, beginning with the comparison of the actual services using the British Sugar factors:
(a) Uses: There is some degree of similarity in the uses. The plaintiff provides events management services and has organised concerts as part of an event, while the defendant provides concert management services.
(b) Users: There is no similarity in the users. The users of the plaintiff’s services would usually be corporate entities seeking to advance its marketing objectives. On the other hand, the users of the defendant’s services are the members of the public.
(c) Physical nature: This factor is not applicable on the facts of the present case.
(d) Trade channels: The trade channels of the respective services are different. Unlike the defendant which sells concert tickets directly to the members of the public, the plaintiff does its sales pitch with the representatives of interested corporate entities.
(e) Substitutability: There is some degree of substitutability in the services provided by the parties. The plaintiff organises non-ticketed concerts and performances on behalf of its corporate clients, but would be able to organise ticketed concerts and performances as well. Likewise, the defendant would be able to organise other events when requested. In fact, the evidence suggests that the defendant has represented in its brochure that it was able to do so (even though it may not be true; see [186]–[187] below), and appears to have actually done so outside Singapore, eg, Formula One promotional events in Chengdu, China.
[84] Next, I proceed to compare the services for which the defendant had actually used the Defendant’s Marks and defendant’s trading name and domain name with the specifications for which the plaintiff had registered the Plaintiff’s Marks. If the approach in Staywell is the correct one (see [80] above), then this is the only comparison that needs to be done.
[85] The defendant applied for registration of the Defendant’s Marks under Class 35 and Class 41 (see [13] above). This is the same as the Plaintiff’s Marks (see [5] above). As observed by the Court of Appeal in Sarika at [51], the fact that the services fell within the same class in the ICGS classification system is indicative, but not determinative, that the services are similar. The Court of Appeal in Staywell reiterated at [82] that, on similarity of goods and services in the infringement context, it would be permissible to have regard to the classification in which the allegedly infringing goods or services would have been inserted if the alleged infringer sought registration of its mark.
[86] In addition, the specification within the classes are largely similar:
[87] More importantly, the defendant has actually used the Defendant’s Marks and defendant’s trading name and domain name in relation to its concert management services. There is no dispute about this.
[88] The key question here is whether the management of concerts (ie, actual use of the Defendant’s Marks and defendant’s trading name and domain name) can be considered as falling within the “advertising” and “event management services” specification (ie, the specification of the Plaintiff’s Marks). In Sarika, the Court of Appeal considered at [53] that the “chocolate product” specification is not restricted to the traditional solid form of chocolate products but encompasses all forms or textures. Specifically, the Court of Appeal found that products like chocolate-based beverages are simply further particularisation of “chocolate products” and would therefore be similar to “chocolate products”. The same reasoning would apply here as well. The “event management services” specification is not restricted to non-ticketed events or events commissioned by corporate entities for non-paying guests. In particular, the plaintiff specified the organisation of entertainment events, among others. In my view, concerts are a sub-set of “entertainment events”, and therefore, it follows that “management of concerts” would be similar to the organisation of “entertainment events”. The fact that their revenue model is different (ie, the plaintiff charges the corporate clients who organises the event, whereas the defendant charges the guests going for the concerts) should not matter.
[89] On the analysis above, I hold that there is similarity of services.
Issue 3: Likelihood of confusion
[90] The next step in the inquiry would be to assess the likelihood of confusion.
[91] The plaintiff submits that there is a likelihood of confusion, having regard to, inter alia, the high degree of similarity between the marks and the services. In addition, the plaintiff contends that the evidence of actual confusion points towards a finding that there is likelihood of confusion. The defendant claims otherwise, namely that the plaintiff had failed to prove that a substantial number of the relevant public would be confused.
[92] The likelihood of confusion must relate to the origin of the goods or services by virtue of the similar/identical marks and services. The Court of Appeal in Hai Tong at [74] explains the two aspects to the element of confusion:
[93] The likelihood of confusion as to the origin of the goods or services is not only in relation to actual use but also the other uses which the Plaintiff’s Marks are registered for. In this respect, the case of Compass, which has been cited in Staywell, is instructive. In that case, Laddie J considered at [22]–[25] that:
[94] The following two points are clear from the extract of Laddie J’s decision in Compass reproduced above:
(a) First, the question of whether there is a likelihood of confusion should be assessed on the basis that the registered trade mark has been used in respect of all the services covered by the registration.
(b) Second, the court may find that there is a likelihood of confusion between the actual use of the allegedly infringing mark and the notional use of the registered trade mark in relation to the services for which the trade mark is registered for.
[95] On the facts of the present case, the likelihood of confusion would have to be assessed in relation to the concert management services (as opposed to events in general).
[96] In the circumstances of the present case, the relevant public under s 27(2)(b) of the TMA would be the general public. It is oft-said that where a product is commonly available and purchased by the general public, the average consumer would be the general public: Sarika at [59] citing City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier [2010] 1 SLR 382 (“City Chain”) at [56]. Here, in relation to concert management services, the average consumer would be the general public.
[97] In assessing whether there is a likelihood of confusion, the Court of Appeal in Staywell set out at [96] some of the non-exhaustive factors. The factors can be summarised as follows:
(a) Factors relating to the impact of mark-similarity on consumer perception:
(i) degree of similarity of the mark themselves;
(ii) the reputation of the marks;
(iii) the impression given by the marks; and
(iv) the possibility of imperfect recollection of the marks.
(b) Factors relating to the impact of goods-similarity on consumer perception:
(i) the normal way in or the circumstances under which consumers would purchase goods of that type;
(ii) the price of the goods (as opposed to the price disparity between the competing goods);
(iii) the nature of the goods and whether they would tend to command a greater or lesser degree of fastidiousness and attention on the part of prospective purchasers; and
(iv) the likely characteristics of the relevant consumers and whether they would or would not tend to apply care or have specialist knowledge in making the purchase.
[98] In the present case, there is a likelihood of confusion as a result of the defendant’s use of the Defendant’s Marks and the defendant’s trading name and domain name. As mentioned earlier, the dominant and distinctive component of the Plaintiff’s Mark is “amc”. The words like “asia”, “Group China” and “live”, as well as the devices, would not reduce the likelihood of confusion, bearing in mind the imperfect recollection of the average consumer. The average consumer would understand “amc live” and “AMC Group China” to represent the plaintiff’s concert organising branch and its China office respectively. In addition, the nature of the service in question (ie, concerts) is such that the average consumer would in all likelihood focus more on the artistes and performance than on the organisers. Bearing in mind the nature of concert tickets, it is also unlikely that an average consumer would be fastidious and pay close attention to the marks. As such, I find that there is a likelihood of confusion.
[99] In addition, the plaintiff had called witnesses to testify on the likelihood of confusion. While the evidence of actual confusion may be helpful, the question of whether there is a likelihood of confusion is “ultimately one for the court rather than for witnesses”: Hai Tong at [99]–[100].
[100] The essence of the evidence from the plaintiff’s witnesses on this issue (consisting of one former employee, two suppliers and two customers) is that they were confused by the Defendant’s Marks as a result of their similarity with the Plaintiff’s Marks. Apart from the former employee, Wang Qifen (“Wang”), the rest of the four witnesses thought that the defendant was a subsidiary of the plaintiff. Wang, on the other hand, thought that the Defendant’s Marks refers to the plaintiff. The defendant’s objection was primarily based on the lack of evidence to support the bare assertions of the witnesses. However, I find the objection to be baseless since the witnesses are testifying on their state of mind (ie, confusion), and there is no need for the witnesses to have acted upon their confusion (Hai Tong at [101]).
[101] I should add that while the plaintiff had also called Simon Low Ai Kai (“Low”) to give evidence, this was omitted from its submissions. I should point out that the defendant contends that Low is not independent given his close ties and substantial business dealings with the plaintiff. Since the plaintiff had not submitted on it, I will not deal with it here.
[102] Having dealt with the evidence on actual confusion generally, I will now deal with the witnesses individually below, starting with Wang, the former employee.
[103] Wang, who worked with the plaintiff between 2004 and 2009, testified that she came across the defendant’s office in March 2013 and thought that the plaintiff had moved. According to her, it was because of the similarity in the marks. The defendant did not challenge Wang’s evidence.
[104] Anders Erik Kager (“Kager”), who was formerly working for Nokia Solutions Networks, one of the plaintiff’s clients, gave evidence that he was confused when he saw the AMC Group Mark and thought that the plaintiff had incorporated a new subsidiary. Like Wang, he explained that the confusion was due to the similarity in the marks. He also added that because of the distinctiveness of “amc” as well as the similarity in the font type and style, the addition of “live” would not make a difference in his mind. The defendant submits that Kager’s evidence has limited value given that he had not adequately explained or provided any corroborative evidence as to why he would be confused. I do not agree. Kager’s evidence is clear, and the fact that he is a self-proclaimed “brand fanatic” does not mean that he would not be confused by the Defendant’s Marks. It might well mean that even a person who pays close attention to marks in general would be confused by the Defendant’s Marks given their similarity to the AMC Asia Mark.
[105] Ang Chun Heng (“Ang”), the sales coordinator of Shotech Press Pte Ltd, one of the plaintiff’s suppliers, also testified that he thought that the plaintiff had incorporated a new subsidiary when he saw the AMC Group Mark. The defendant contends that Ang’s evidence has limited value because he had not exhibited any evidence in his AEIC. Again, I find the defendant’s contention to be without merit; the question of confusion relates to the state of mind of the witness and no objective evidence is necessary to establish that. Moreover, there is no need to show that Ang had acted upon his confusion (see Hai Tong at [101]) to establish the likelihood of confusion.
[106] Lyndsey Lam Yenn Jinn (“Lam”), the senior manager of EMC International SARL, who was one of the plaintiff’s clients, testified that he heard the radio advertisement for a concert said to be presented by “amc live” and thought that it was organised by the plaintiff. He was surprised when he heard the advertisement and wondered if the plaintiff went into organising concerts. He called Bernard Oh (“Oh”), the chief executive officer of the plaintiff, to check and found out that it was not the plaintiff. He explained that there is a likelihood of confusion given the similarity of the marks. The defendant challenged the evidence of Lam on the basis that his confusion was ultimately dispelled and that he had only provided bare assertions. However, the defendant’s contention is misplaced. The fact that Lam’s confusion was eventually cleared because he was able to check with Oh did not mean that there was no likelihood of confusion in relation to the average consumer.
[107] Chong Yuen Hwa (“Chong”), the director of Dezign Format Pte Ltd, one of the plaintiff’s suppliers, testified that he was confused by the AMC Group Mark and thought that the plaintiff had incorporated a new subsidiary. This was because the marks were similar, and the words “Group China” and the microphone device did not indicate to him that it was a different, unrelated entity. The defendant submits that Chong’s evidence should be given little weight in light of the inconsistencies. In particular, the defendant highlights that Chong had said that he would not be confused if he knows the nature of the company’s business, and that he said he would not be confused by the words “AMC LIVE HOUSE”. It is difficult to see where the inconsistency lies. Chong was shown the picture of a sign with “amc” and “Arcon Marketing Communications” written below that. He said that he was not confused as he knew that it was a different company doing “design and exhibition”. He also testified that if the mark reads “AMC Renovation” or “AMC Investment” he would not be confused. Thereafter, he was asked if the words “AMC LIVE HOUSE” is confusing, and he said no because he knew that the defendant is a concert and events management planning company. It appears that the evidence of Chong was relatively consistent and truthful. He is merely saying that he is not confused given that he had found out that the defendant is actually a different, unrelated entity.
[108] At this juncture, I should deal with the defendant’s point about the doctrine of initial interest confusion. The defendant argues that the witnesses are aware of the plaintiff and the Plaintiff’s Marks such that there would not be any confusion “at least beyond any initial and preliminary confusion”. Having said that, the defendant points to Staywell where the Court of Appeal rejected the doctrine of initial interest confusion. In my view, the defendant’s contention is misconceived. Undoubtedly, the witnesses would have checked with the plaintiff and therefore dispelled their confusion. This must be the case; otherwise, they would not be giving evidence in court on behalf of the plaintiff. However, this has absolutely no bearing on the question of whether there is a likelihood of confusion, which must be assessed based on the average consumer.
[110] I therefore consider that the evidence of the witnesses, which has not been undermined by the defendant’s unmeritorious objections, support the finding that there is a likelihood of confusion and so hold.
Issue 4: Defences
[111] The defendant claims that it is entitled to rely on two defences against the plaintiff’s claim of trade mark infringement, namely:
(a) the prior use defence under s 28(2) of the TMA; and
(b) the own name defence under s 28(1)(a) of the TMA.
Prior use defence
[112] I begin with the prior use defence. Section 28(2) of the TMA states as follows:
[113] The defendant argues that it had, through its predecessors and Leong, used the AMC Group Mark as early as 2008. The defendant claims that it had therefore used the allegedly infringing mark before the date of registration of the AMC Asia Mark (ie, 31 August 2012), as well as the date of the plaintiff’s first use of the AMC Asia Mark. The defendant also claims that because the AMC Live Mark is “merely an update” of the AMC Group Mark, the prior use defence would apply to the AMC Live Mark as well. The plaintiff, on the other hand, claims that the defendant had not used the Defendant’s Marks before the plaintiff’s first use of the AMC Asia Mark.
[114] To begin, it should be pointed out that only the use of the marks in Singapore would be relevant for the purpose of the prior use defence. In Subway, Prakash J considered at [59] that the proprietor’s use of the trade mark prior to registration must have been used in Singapore:
[115] Further, the Court of Appeal in Future Enterprises Pte Ltd v McDonald’s Corp [2007] 2 SLR(R) 845 (“Future Enterprises”) implicitly accepted at [11] that the use of the allegedly infringing mark must also be in Singapore:
[116] Bearing this in mind, I proceed to consider the evidence of the use of the respective marks in question, starting with the AMC Asia Mark.
[117] The AMC Asia Mark was registered on 31 August 2012. As such, only use of the AMC Asia Mark before 31 August 2012 would be relevant for the present purpose. The plaintiff submits that the AMC Asia Mark was first used in 2009. As mentioned earlier (see [6] above), there is some doubt over the date on which the plaintiff first used the AMC Asia Mark. In its statement of claim, the plaintiff states that it had used the AMC Asia Mark since 2009. This was supported by Oh’s evidence in his AEIC. However, the plaintiff stated in its answer to the defendant’s first request for further and better particulars (“F&BP”) that the date was wrong and it should have been January 2011 instead. It was also stated that the statement of claim would be amended to reflect this. No such amendment was made. When Oh was cross-examined on this point, he insisted that the date of first use was 2009, and that he was unaware of the change in the answer to the F&BP.
[118] On the evidence, however, the plaintiff could only prove that the AMC Asia Mark was first used on 1 July 2011. I note that Oh had failed to produce tax invoices (which would show the plaintiff’s trade mark in use at that period of time) for 2009 and 2010, even though he had exhibited tax invoices from 2005 to 2008 as well as 2011. In fact, the plaintiff had not adduced any documentary evidence to show the use of the AMC Asia Mark in 2009 and 2010. As such, I find that the plaintiff’s first use of the AMC Asia Mark was on 1 July 2011.
[119] As between the date of registration (ie, 31 August 2012) and the date of the plaintiff’s first use (ie, 1 July 2011), the latter is earlier. Hence, for the defendant to rely on the prior use defence, it will have to show that it had used the AMC Group Mark as well as its trading name and domain name before 1 July 2011.
[120] The defendant was incorporated on 20 January 2012, and thus could not have used the AMC Group Mark before that. Leong accepts this. However, the defendant claims that the AMC Group Mark had been used by its predecessors. Specifically, the defendant identified two concerts where the AMC Group Mark was used prior to 2012.
[121] The first concert is the “onelove the music festival” in 2008. The plaintiff produced a poster which was supposedly used to promote the concert. The poster shows a variant of the AMC Group Mark without the words “AMC Group China” to the right. Two points are worth noting here. First, the event was held in Chengdu, China and not Singapore. Second, the AMC Group Mark was not used; only a variant was used. Put simply, the poster does not show that the defendant first used the AMC Group Mark in Singapore in 2008.
[122] For completeness, I should comment that there is a dispute over the authenticity of the poster exhibited in Leong’s AEIC. During the hearing, the defendant tendered another version of what appears to be the same poster, except that the variant of the AMC Group Mark is replaced by a mark that reads “The Concept Company” (“the TCC Mark”). Leong explained on cross-examination that he was previously operating under the name The Concept Company, and that while the poster initially used the TCC Mark, it was later changed to reflect the variant of the AMC Group Mark when Betty Yap gave him the first draft. I note that The Concept Company is listed as one of the “event organizers”. It is odd that Leong would change the TCC Mark to the variant of the AMC Group Mark and keep the name listed under “event organizers” as The Concept Company. However, this is immaterial given that the poster does not show that the AMC Group Mark was used in Singapore in 2008 (at [121]).
[123] The second concert is Stephanie Sun’s “The Answer Is ...” concert in 2009. The poster exhibited in Leong’s AEIC clearly shows that the concert was held in Chengdu, China. In addition, the poster also shows a variant of the AMC Group Mark without the words “AMC Group China” to the right. Accordingly, the poster also does not show that the defendant had first used the AMC Group Mark in Singapore in 2009.
[124] The defendant also produced documents such as the Contract Services Agreements with Silk Air (Singapore) Pte Ltd and Overseas Ticketing Partnership Agreement with Singapore GP Pte Ltd, but they do not show that the defendant had used the AMC Group Mark in Singapore before 2011. In Future Enterprises at [11], the Court of Appeal found that the invoices adduced were insufficient to “surmount the threshold of proving use” so as to constitute prior use defence. I find that the same applies here as well.
[125] It appears from the evidence that the AMC Group Mark was first used in Singapore only in 2012. In particular, the evidence shows that the AMC Group Mark was first used in relation to the Sandy Lam Concert held on 6 April 2012, as well as the promotional activities on 4 February 2012.
[126] Since the defendant is unable to show that it had used the AMC Group Mark before 1 July 2011, which is the date on which the plaintiff first used the AMC Asia Mark, it follows that the defendant would not be entitled to rely on the prior use defence under s 28(2) of the TMA in relation to the use of the AMC Group Mark.
[127] As for the use of its trading name (ie, “amc”, “AMC” or “AMC Group China”) and domain name, there is no evidence that they have been used in Singapore prior to 2012 as well. It follows that the defendant would likewise not be entitled to rely on the prior use defence under s 28(2) of the TMA in relation to the use of the trading name and domain name.
Own name defence
[128] I move on to the defendant’s second defence. Section 28(1)(a) of the TMA states:
[129] The defendant submits 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. The plaintiff contends that the defendant was not using the Defendant’s Marks in accordance with honest practices in industrial or commercial matters.
[130] This defence gives rise to three issues in the present case, namely:
(a) Whether the defence extends to use of the name as a trade mark?
(b) Whether the defence extends to use of a company’s name, and if so, whether it extends to the use of the full corporate name or the name in which the company is commonly known to the public?
(c) Whether the threshold requirement (ie, that the use is in accordance with honest practices in industrial or commercial matters) can be established?
(1) Use of name as a trade mark
[131] The last point is whether s 28(1)(a) of the TMA applies to the use of one’s own name as a trade mark.
[132] I start by observing that the plain language of s 28(1) of the TMA does not state that it allows the use of a name as a trade mark. This can be contrasted with s 28(2) of the TMA which specifically states that “a person does not infringe a registered trade mark by using an unregistered trade mark ...” However, in my view, the lack of specificity on the possible uses under s 28(1) is neutral and capable of a wide reading to encompass not only use as an unregistered trade mark but other uses. A similar view is expressed in Susanna H S Leong, Intellectual Property Law of Singapore (Academy Publishing, 2013) (“Susanna Leong”) at para 29.063.
[133] The English courts take a broad reading of the own name defence as well. In Reed Executive plc v Reed Business Information Ltd [2004] RPC 40 (“Reed”), the English Court of Appeal considered at [125] that:
[134] In my view, this should not prevent a company from raising s 28(1)(a) of the TMA as a defence (assuming the requirements are met).
(2) Use of a company’s name
[135] In order to avail itself to the own name defence, the defendant must first show that the defence extends to the use of a company’s name, as opposed to a natural person’s name. There is no local authority directly on point. However in my opinion, there are good reasons why the defence should extend to the use of a company’s name. The language used in s 28(1)(a) of the TMA is wide enough to cover the use of a company’s name. Further, the Court of Appeal in Rainforest Coffee Products Pte Ltd v Rainforest Café, Inc [2000] 1 SLR(R) 725 (“Rainforest”) at [51]–[55] proceeded on the basis that the bona fide use of name defence was available to a company under the s 52(a) of the Trade Marks Act (Cap 332, 1992 Rev Ed) (“TMA 1992”) (see Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (Sweet & Maxwell, Rev Ed, 2009) (“Ng-Loy”) at paras 24.1.3–24.1.4 for a discussion). In the same vein, the English cases have held that the defence under s 11(2)(a) of the UK Trade Marks Act 1994 (c 26)(UK) (“UK TMA 1994”) (which is in pari materia with s 28(1)(a) of the TMA) extends to companies: see, eg, Scandecor Development AB v Scandecor Marketing AB [2002] FSR 7 at [54]; Euromarket Designs Inc v Peters and Crate & Barrel Ltd [2001] FSR 288 (“Euromarket”) at [30]; Reed at [116]. In addition, common sense would dictate that s 28(1)(a) of the TMA be construed as extending to companies. As explained by Jacob J in Euromarket at [31]:
[136] The learned author in Susanna Leong at para 29.057 takes the same view and said:
[137] The next question is whether the defence only applies to the registered corporate name (with or without the words “Pte Ltd”) or the trading name by which it is commonly known to its customers.
[138] I start with the English cases. Euromarket dealt with s 11(2)(a) of the UK TMA 1994. In that case, the second defendant is an Irish company by the name of Crate & Barrel Ltd. It operated a store called “Crate & Barrel” in Dublin. The plaintiff, who operates a successful chain of stores under the registered trade mark “Crate & Barrel” in the United States commenced infringement proceedings against the second defendant. Jacob J considered at [39] that the omission of the word “Ltd” would not prevent the second defendant from relying on the defence.

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The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd

Grounds of decision

Introduction

Facts

Parties to the dispute

Background to the dispute

Plaintiff’s case

Defendant’s case

Issues before this Court

First claim: Trade mark infringement

Issue 1: Similarity of marks

Comparing AMC Asia Mark with AMC Group Mark

Comparing AMC Asia Mark with AMC Live Mark

Comparing AMC Asia Mark with the defendant’s trading name and domain name

Comparing Human Exclamation Mark with the Defendant’s Marks

Issue 2: Similarity of services

Issue 3: Likelihood of confusion

Issue 4: Defences

Prior use defence

Own name defence

(a) Whether the defence extends to use of the name as a trade mark?

(1) Use of name as a trade mark

(2) Use of a company’s name