The Own Name Defence is Often no Defence at All

13 September 2016

The Own Name Defence is Often no Defence at All

The Audience Motivation Company Asia Pte Ltd v. AMC Live Group China (S) Pte Ltd [2016] 3 SLR 517; [2016] SGCA 25

 

 

In The Audience Motivation Company Asia Pte Ltd v. AMC Live Group China (S) Pte Ltd, the Singapore Court of Appeal, in a ruling dated April 21, 2016, found in favour of the appellant, thus overturning a decision by the High Court which had dismissed the appellant’s (who was the plaintiff in the earlier suit) claims of trademark infringement under Section 27(2)(b) of the Trade Marks Act (TMA) and Passing Off of its AMC Asia Mark by the respondents.

 

Although the High Court ruled that there existed a prima facie case of infringement under Section 27(2)(b) of the appellant’s AMC Asia Mark, the High Court also found that the respondent was entitled to raise the own name defence as provided under Section 28(1)(a) of the TMA. The action of passing off failed as the High Court ruled that, although succeeding in establishing misrepresentation and damage, the appellant failed to demonstrate that it had acquired goodwill in the AMC Asia Mark at the relevant date.

 

In relation to the claim of passing off, the Court of Appeal held that documentary evidence in the form of invoices and awards won for specific events organized on behalf of certain clients such as Nokia and Hewlett- Packard as adduced by the appellant were indicative of regular sales. This was sufficient to establish that the appellant acquired goodwill by the relevant date.

 

Whilst agreeing with the decision of the High Court in its finding of a prima facie case of infringement of the AMC Asia Mark under Section 27(2)(b) of the TMA by the respondent, the Court of Appeal disagreed that the respondent was entitled to the own name defence.

 

The court revisited and clarified its position in Rainforest Coffee Products Pte Ltd v. Rainforest Café, Inc [2000] 1 SLR(R) 725 in light of revisions made to the Trade Marks Act and subsequent developments in the United Kingdom, holding that the own name defence applies to the use of not just the “full corporate name,” but may also be invoked in circumstances where the full corporate name is used as a trademark in a modified form, subject to the facts of the case.

 

The availability of the own name defence extends only to seeking justification of one’s own name as a trade mark and has no further scope. The Court of Appeal was not prepared to accept the use of one’s own name with other features which result in an appreciable increase in the likelihood of confusion that arises by reason only the similarity of the name. Given that corporate names are artificial creations that can be adopted and changed at will, the court recognized that, although the potential for abuse existed, it could be dealt with by the honest practises proviso under Section 28(1) which provides that the use of one’s own name must be “in accordance with honest practices in industrial or commercial matters.”

 

The Court of Appeal went on to clarify that the honest practices enquiry required both an objective assessment – based on what was commonly done in the business or industry and regarded as honest – and, also, a subjective test as to whether the particular motivations and intentions of the defendant were, in fact, honest. Both elements had to be made out but were not by themselves sufficient. The burden of proof lies squarely with the defendant who has to adduce evidence to prove use in accordance with honest practices to the satisfaction of the court. In instances where other sources of similarity between the marks exist, the defendant must adduce compelling reasons as to why this is the case – failing which, doubts may be raised over his bona fides.

 

In all, the own name defence is a narrow one with a very limited scope and – in view of potential abuse – justifiably so. A company seeking to register a trademark in Singapore should not rely on this defence as a substitute to performing necessary trademark searches.

 

 

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About the author

 Liangshu Huang

Liangshu Huang

Liangshu Huang is an IP specialist with mirandah asia. His practice areas cover IP consultancy and management.

 Gladys Mirandah

Gladys Mirandah

Gladys Mirandah is a Director of mirandah asia, an intellectual property boutique practice based in Singapore and Malaysia, with offices in Indonesia, Thailand, Vietnam and Philippines. She has over forty years experience in Intellectual Property practice.

 

Gladys specializes in intellectual property law and handles the full range of intellectual property matters including prosecution of patent, trademark and design registrations as well as litigation and enforcement actions on IP matters.

 

Gladys was a Committee Member of the Intellectual Property Committee of the Law Society of Singapore and has served as a Committee Member of the Singapore Chapter of the Asian Patent Attorneys Association (APAA).  She has also served as a Council Member of the ASEAN Intellectual Property Association.  Gladys is an active member in INTA having been involved in various committees such as the Membership Committee, the Meetings Committee, Planning Committee and Speaker and Training Sub-Committee. She has been a Chairperson and Speaker at INTA-organised events. Currently, Gladys is an active contributor to several publications including the ITMA Review and INTA Bulletin covering the Far East. She is also an Editor of INTA's Cancellation Actions Project covering Asia.

 

Gladys has participated in several international forums, including being a guest speaker for the Shanghai International Symposium, the Japan Group of APAA, the Customs Intellectual Property Information Center (CIPIC), the Institute of Trademark and Patent Attorneys of Australia (IPTA) and the Bayerische Patentanwaltsverein in Munich.

 

mirandah asia is a one-stop shop for intellectual property matters in ASEAN.

 

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