Most companies adopt methods to create an identity – such as through their trading name, logos, or brand colours – to differentiate themselves from other companies. What happens if the company has already established a strong presence in a particular location, only to find out one day that another company is using marks, or even names, that are identical or similar?
In 2013, Audience Motivation Company Asia (“Audience Motivation”) faced this problem. The case was finally resolved in April 2016.
Audience Motivation is an events management company which handles sales, media launches, and marketing events. Its clientele base includes Audi and Tiger. Audience Motivation has been using “amc!” mark dating as far back as July 2011, even though these marks were registered only on 31 August 2012.
Audience Motivation found that AMC Live Group China (S) (“AMC Live”), another event and concert management services company, was using the marks “amc live” and “amc AMC Group China”, which could potentially mislead the public that AMC Live and Audience Motivation were related. Audience Motivation decided to sue AMC Live for infringing the exclusive use of its “amc!” mark.
AMC Live was first incorporated in Singapore in January 2012. Its headquarters was initially located at Chengdu. Initial legal proceedings found that AMC Live’s domain name bore visual and aural similarities to Audience Motivation’s AMC Asia Mark. As both companies were in the area of events management, the Judge noted that there was a possibility of confusion due to AMC Live’s usage of similar trading and domain names as that of Audience Motivation.
In its defence, AMC Live used the own name defence (explained below) to argue that “AMC” was an acronym for “A Music Company”. On top of that, AMC Live argued that the AMC Group Mark and AMC Live Mark were in no way a resemblance of the “amc!” mark adopted by Audience Motivation.
The own name defense used by AMC Live was unsuccessful before the Court of Appeal, and Audience Motivation successfully claimed damages for trademark infringement.
How Does the “Own Name” Defense Work in Trademark Infringement?
Under s 28(1)(a) of the Trade Mark Act, a party is able to prove that he has not infringed a registered trade mark if he uses “his name or the name of his place of business”. The use of the name of one’s predecessor in business or name of a predecessor’s place of business will also absolve one of trademark infringement. This has to be used in line with honest commercial or industrial practices.
In this case, AMC Live’s own name defense does not fall in line with honest commercial practices because the acronym “amc” was not related to its parent company “Sichuan Da Hong Cultural Communication Co Ltd”. The Chengdu Company had also attempted to present itself as a local company with the name “amc”, in a job advertisement, even before AMC Live was incorporated. This was at a time when Audience Motivation was the only Singapore firm going by the name “amc”. In addition, the Chengdu firm had organised corporate events for Singapore companies such as SilkAir in September 2009, while presenting itself as “amc”.
Clearly, this was not an honest practice on the part of AMC Live and its defence failed.
