In a recent Singaporean case, AMC Live Group China Pte Ltd (“AMC Live”) successfully used the “Own Name Defence” in response to infringement proceedings. The plaintiff, The Audience Motivation Company Asia Pte Ltd (“AMC Asia”) claimed that the defendant, AMC Live, had infringed two of its registered trademarks and also brought a claim against them for passing off.
The plaintiff is 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 (e.g., gala or anniversary dinners), exhibitions, corporate road shows, CEO summits and concerts (as part of an event). The defendant, on the other hand, is a company incorporated in Singapore on 20 January 2012. The defendant carries out the business of providing event and concert organisation services.
The plaintiff is the registered proprietor of the following trademarks:
“The AMC Asia Mark”
“The Human Exclamation Mark”
The plaintiff alleges that the defendant, in providing event and concert organization services, had used the following marks which are similar to the plaintiff’s marks.
“The AMC Group Mark”
“The AMC Live Mark”
The Court, chaired by the learned Justice Lee Seiu Kin, was of the view that the Human Exclamation mark was not an issue here as it is clear that it is not similar to the defendant’s marks. The main issue of the case is that the plaintiff’s AMC mark is similar to that of the defendant’s AMC mark and that both marks are used on services that are similar. After a methodical exercise of fact finding, the Court eventually found that the use of the defendant’s mark is likely to cause public confusion.
In light of the above findings, it is normally the case that the Court will then find the defendant guilty of trademark infringement. The failure of the defendant to rely on the defence of prior use (they hadn’t used the mark before the plaintiff) also did not augur well. However, when all seemed lost, the case then took a Shakespearean twist. The Defendant got off scot-free!
How didst the defendant accomplish such wondrous escape? Well, the deus ex machina came in the form of the “Own Name Defence”, that a party who uses his own name or the name of his place of business will not be found to have infringed upon a similar trademark, if the name had been adopted in accordance with honest practices of the trade.
Seeing that the tide has turned, the plaintiff sought to defang the defendant’s defence by arguing that the Own Name Defence only works if the defendant had used a mark that is identical to its incorporated name, namely AMC Live Group China Pte Ltd (which it hadn’t). However, the Court disagreed and taking a less stringent approach, accepted the use of the Defendant’s trading name (a name that it is commonly known by) as sufficient for it to rely on the defence.
The Court also found that the defendant had acted in accordance with honest practices because the defendant when choosing its AMC name, did not intend to take unfair advantage of the plaintiff’s goodwill. In coming to that, the Court took account of the fact that the defendant adopted the “amc” name, domain name and the AMC Group Mark in Singapore around the same time that the plaintiff started using the AMC Asia Mark. The Court accepted also that the defendant, when adopting its name, was unaware of the existence of the plaintiff and thus did not know that there was a likelihood of confusion. The defendant also undertook a rebranding of the company to avoid confusion. The fact that the word “amc” is used by several companies in Singapore also lends credence to the claims that the defendant had adopted its name independently without reference to the plaintiff’s.
The Own Name Defence proved to be the defendant’s ultimate trump card towards succeeding in defending their case, rising above the other facts in the plaintiff’s favour and eventually swaying the court’s decision.
The plaintiff’s case in passing-off was also struck off in a similar manner. The plaintiff was successful in establishing misrepresentation (the marks were similar and used on services that are similar) and also damages (the Court found that as the parties are not in an identical field of business and there was no diversion of sales. However, because the businesses of the parties are somewhat similar, the existence of the defendant is likely to restrict the natural expansion of the plaintiff’s business). Nevertheless, the plaintiff was denied the consolation prize, as the Court administered the coup de grâce by finding that the plaintiff had not acquired any reputation or goodwill in its trademark to succeed in its claim of passing off, adding a heap of salt to massive gaping injury.