The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd: Trade Mark Infringement, Passing Off & Own Name Defence

In The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd, the Singapore Court of Appeal addressed claims of trade mark infringement and passing off. The Appellant, The Audience Motivation Company Asia Pte Ltd, alleged that the Respondent, AMC Live Group China (S) Pte Ltd, infringed its registered trade mark and engaged in passing off. The High Court dismissed the claims, but the Court of Appeal reversed the decision, finding the Respondent liable for trade mark infringement and passing off. The court held that the 'own name' defence under the Trade Marks Act was not applicable due to the Respondent's dishonest practices.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeal allowed. The Court of Appeal found the Respondent liable for trade mark infringement and passing off.

1.3 Case Type

Civil

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Singapore Court of Appeal judgment on trade mark infringement and passing off, focusing on the 'own name' defence and its applicability to companies.

1.7 Decision Date

20 April 2016

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
The Audience Motivation Company Asia Pte Ltd	Appellant	Corporation	Appeal Allowed	Won	Michael Moey Chin Woon of Moey & Yuen Dedar Singh Gill of Drew & Napier LLC Ong Sheng Li, Gabriel of Drew & Napier LLC
AMC Live Group China (S) Pte Ltd	Respondent	Corporation	Appeal Dismissed	Lost	Max Ng Chee Weng of Gateway Law Corporation Amira Budiyano of Gateway Law Corporation Mitchel Chua of Gateway Law Corporation

3. Judges

Judge Name	Title	Delivered Judgment
Sundaresh Menon	Chief Justice	Yes
Chao Hick Tin	Justice of the Court of Appeal	No
Andrew Phang Boon Leong	Justice of the Court of Appeal	No

4. Counsels

Counsel Name	Organization
Michael Moey Chin Woon	Moey & Yuen
Dedar Singh Gill	Drew & Napier LLC
Ong Sheng Li, Gabriel	Drew & Napier LLC
Max Ng Chee Weng	Gateway Law Corporation
Amira Budiyano	Gateway Law Corporation
Mitchel Chua	Gateway Law Corporation

4. Facts

Appellant registered proprietor of trade marks including 'the AMC Asia Mark'.
Respondent used marks similar to Appellant's, including 'the AMC Group Mark' and 'the AMC Live Mark'.
Appellant and Respondent provided similar services in events promotion and organization.
Former clients and suppliers of Appellant attested to actual confusion caused by similarity of marks.
Respondent's name 'amc' had no evident connection with the name of its predecessor, Chengdu Company.
Chengdu Company misrepresented itself as a Singaporean company known as 'amc' before Respondent's incorporation.
Respondent failed to provide a justifiable basis for its choice of name.

5. Formal Citations

The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd, Civil Appeal No 71 of 2015, [2016] SGCA 25

6. Timeline

Date	Event
1995-01-01	Audience Motivation Company Pte Ltd incorporated by Mr. Oh Bernard.
2000-08-02	The Audience Motivation Company Asia Pte Ltd incorporated in Singapore.
2002-04-04	Appellant used similar marks on invoices.
2007-01-01	Mr. Leong Seng Chet ventured into concert management in Chengdu, China.
2008-01-01	AMC Group Mark independently designed by Ms. Yap Soo Mei.
2008-01-01	AMC Group Mark first used in China for music festivals and concerts.
2009-09-16	Sichuan Xin Heng organized a company incentive trip for SilkAir.
2010-01-01	Sichuan Da Hong Cultural Communication Co Ltd incorporated in China.
2010-04-16	Chengdu Company posted a job advertisement online representing itself as a Singaporean company known as 'amc'.
2011-07-01	Appellant first used marks identical to those registered in 2012.
2011-07-01	Sichuan Xin Heng organized a Singapore F1 Grand Prix promotion event in Chengdu for the Singapore Tourism Board and Singapore GP Pte Ltd.
2012-01-20	AMC Live Group China (S) Pte Ltd incorporated in Singapore.
2012-02-04	Respondent organized promotional activities for a concert held in Singapore.
2012-02-14	Respondent applied to register the AMC Group Mark.
2012-08-31	Appellant's Marks registered in Classes 35, 41 and 42.
2013-07-15	Respondent applied to register the AMC Live Mark.
2013-11-04	Respondent changed its name from AMC Group China (S) Pte Ltd to AMC Live Group China (S) Pte Ltd.
2015-10-22	Hearing date.
2016-04-21	Judgment reserved.

7. Legal Issues

Trade Mark Infringement
- Outcome: The Court of Appeal found that the Respondent had infringed the Appellant's trade mark.
- Category: Substantive
- Sub-Issues:
  - Similarity of marks
  - Likelihood of confusion
  - Application of own name defence
Passing Off
- Outcome: The Court of Appeal found that the Respondent had engaged in passing off.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage
Own Name Defence
- Outcome: The Court of Appeal held that the own name defence was not applicable in this case due to the Respondent's dishonest practices.
- Category: Substantive
- Sub-Issues:
  - Honest practices
  - Use of corporate name
  - Use of trading name

8. Remedies Sought

Injunction
Damages

9. Cause of Actions

Trade Mark Infringement
Passing Off

10. Practice Areas

Trade Mark Infringement
Intellectual Property Litigation

11. Industries

Events Management
Advertising
Marketing

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd	High Court	Yes	[2015] 3 SLR 321	Singapore	The High Court decision that was appealed against in the current judgment.
Rainforest Coffee Products Pte Ltd v Rainforest Café, Inc	Court of Appeal	Yes	[2000] 1 SLR(R) 725	Singapore	Considered in relation to the own name defence under the Trade Marks Act.
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal	Court of Appeal	Yes	[2014] 1 SLR 911	Singapore	Cited for the principle of similarity of services in trade mark infringement.
Reed Executive plc and another v Reed Business Information Ltd and others	English Court of Appeal	Yes	[2004] RPC 40	England and Wales	Cited for the applicability of the own name defence to the use of one's own name as a trade mark.
Joseph Rodgers & Sons Ld v W N Rodgers & Co	English High Court	Yes	Joseph Rodgers & Sons Ld v W N Rodgers & Co (1924) 41 RPC 277	England and Wales	Cited for the origins of the own name defence in the context of passing off.
Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and others	English Court of Appeal	Yes	[2010] RPC 16	England and Wales	Cited for the principle that a company cannot justify using a trading name newly adopted which conflicted with a registered trade mark.
Asprey & Garrard Ltd v WRA (Guns) Ltd and another	English Court of Appeal	Yes	[2002] FSR 31	England and Wales	Cited for the principle that the own name defence is not available to names of new companies as otherwise a route to piracy would be obvious.
Premier Luggage and Bags Ltd v Premier Company (UK) Pte Ltd and another	English Court of Appeal	Yes	[2003] FSR 5	England and Wales	Cited for the principle that the own name defence is not available where the name used was not the name of the company, but an abbreviation or adaption of that name.
Samuel Smith Old Brewery (Tadcaster) v Philip Lee (Trading as “Cropton Brewery”)	England and Wales High Court	Yes	[2012] FSR 7	England and Wales	Cited for the factors to consider when assessing the 'honest practices' proviso.
Stichting BDO and others v BDO Unibank, Inc and others	England and Wales High Court	Yes	[2013] EWHC 418 (Ch)	England and Wales	Cited for the factors to consider when assessing the 'honest practices' proviso.
Maier and another v Asos plc and another	English Court of Appeal	Yes	[2015] EWCA Civ 220	England and Wales	Cited for the principle that the fact that the defendant did not intend to confuse the public or trade off the trade mark proprietor’s goodwill would be relevant to the 'honest practices' inquiry.
The Singapore Professional Golfers’ Association v Chen Eng Waye and others	Court of Appeal	Yes	[2013] 2 SLR 495	Singapore	Cited for the principle that the focus in the law of passing off is on the actual or anticipated effect of the defendant’s actions on the minds of those constituting the relevant segment of the public.
Case C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH	European Court of Justice	Yes	[2004] RPC 39	European Union	Cited for the guidance given by the European Court of Justice in relation to the 'honest practices' proviso under s 11(2)(a) of the UK Trade Marks Act.
Guy Neale and others v Ku De Ta SG Pte Ltd	Court of Appeal	Yes	[2015] 4 SLR 283	Singapore	Cited for the principle that a claim for passing off must be premised on proof of goodwill in the plaintiff’s business.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal	Court of Appeal	Yes	[2013] 2 SLR 94	Singapore	Cited for the principle that a claim for passing off must be premised on proof of goodwill in the plaintiff’s business.
The Commissioners of Inland Revenue v Muller & Co’s Margarine, Limited	House of Lords	Yes	[1901] AC 217	United Kingdom	Cited for the principle that the court’s concern is whether there exists any attractive force in the plaintiff’s business that brings in custom.
Novelty Pte Ltd v Amanresorts Ltd and another	High Court	Yes	[2009] 3 SLR(R) 216	Singapore	Cited for the principle that the action for passing off is not directly concerned with the protection of a mark, logo or get-up of a business.
Mobil Petroleum Co, Inc v Hyundai Mobis	Court of Appeal	Yes	[2010] 1 SLR 512	Singapore	Cited for the principle that the primary question is whether the Respondent’s use of these devices would lead the relevant segment of the public to believe that the services provided by the Respondent were actually services provided by the Appellant or that the Respondent was economically related to the Appellant.
Alfred Dunhill Limited v Sunoptic SA	English Court of Appeal	Yes	[1979] FSR 337	England and Wales	Cited for the principle that a plaintiff who has established goodwill in one form of commercial activity may be entitled to protection from passing off vis-à-vis another form of commercial activity which is a natural expansion of the first.
S C Johnson & Son, Inc v Johnson	United States Court of Appeals, Second Circuit	Yes	S C Johnson & Son, Inc v Johnson 116 F 2d 427 (2nd Cir, 1940)	United States	Cited for the principle that a merchant who has sold one kind of goods sometimes finds himself driven to add other ‘lines’ in order to hold or develop his existing market.
IN Newman Ltd v Adlem	England and Wales Court of Appeal	Yes	[2005] All ER (D) 288	England and Wales	Cited for the principle that if the defendant is able to say that the name he is using for trading purposes is his own name which he had before the trading in question began, it will in practice be less difficult for him to show that the adoption of that name as a business name was not passing off.
Reed Executive plc and another v Reed Business Information Ltd and others	England and Wales High Court	Yes	[2003] RPC 12	England and Wales	Cited for the principle that the only defence is “no passing off”, because there is no deception leading to damage to the relevant goodwill.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed) s 27(2)(b)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 28(1)(a)	Singapore
Trade Marks Act (Cap 332, 1992 Rev Ed) s 52(a)	Singapore
Interpretation Act (Cap 1, 2002 Rev Ed) s 2(1)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark infringement
Passing off
Own name defence
Honest practices
Goodwill
Misrepresentation
Likelihood of confusion
AMC Asia Mark
AMC Group Mark
AMC Live Mark
Events management
Corporate name
Trading name

15.2 Keywords

Trade mark
Infringement
Passing off
Own name defence
Singapore
Events management
AMC
Goodwill
Misrepresentation

17. Areas of Law

Area Name	Relevance Score
Trademarks	95
Passing Off	90
Contract Law	10
Commercial Law	5

16. Subjects

Trade Mark Law
Intellectual Property Law
Passing Off
Civil Litigation