ORTUS EXPERT WHITE SDN BHD 1. NOR YANNI BINTI ADOM 2. NOORFAEZAL BIN ROMLI

ORTUS EXPERT WHITE SDN BHD 1. NOR YANNI BINTI ADOM 2. NOORFAEZAL BIN ROMLI

The Federal Court held that in trade mark infringement actions the court must consider disclaimed words in juxtaposition or in combination with the registered mark's essential features when assessing likelihood of confusion under the imperfect recollection test; applying that test the defendants' use of 'Real Expert White' and associated get-up infringed the registered mark and constituted passing off; and goodwill is not destroyed merely by unrelated press publications so the second question is answered in the negative.

Citation
02(f)-12-02/2020 (W) (Mahkamah Persekutuan)
Parties
Appellant / Plaintiff (original): Ortus Expert White Sdn Bhd; 1st Respondent / Defendant: Nor Yanni binti Adom; 2nd Respondent / Defendant: Noorfaezal bin Romli (trading as Rafica Resources)
Court
f
Jurisdiction
Malaysia
Judgment Date
8 December 2021
Case Number
02(f)-12-02/2020 (W) (Mahkamah Persekutuan)
Procedural Posture
Civil Appeal (trade Mark Infringement, Passing Off, Breach of Dealership Agreement) / Federal Court Final Judgment (appeal From Court of Appeal; High Court Decision Remitted Affirmed)
Outcome
Appeal allowed; High Court judgment affirmed; Court of Appeal judgment set aside; matter remitted to High Court for assessment of damages
Legal Topics
Disclaimer in Trade Marks, Likelihood of Confusion/deception, Essential Features of a Mark, Goodwill, Misrepresentation, Expungement V Infringement, Imperfect Recollection Test
Source Language
Malay/English
Trade Mark Law Passing Off (tort) Contract Law (dealership) Evidence Regulatory Law (control of Drugs and Cosmetics) Disclaimer in Trade Marks Likelihood of Confusion/deception Essential Features of a Mark +4 more

Case Brief

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Parties

Ortus Expert White Sdn Bhd

Appellant / Plaintiff (original)

Nor Yanni binti Adom

1st Respondent / Defendant

Noorfaezal bin Romli (trading as Rafica Resources)

2nd Respondent / Defendant

Procedural Posture

Civil Appeal (trade Mark Infringement, Passing Off, Breach of Dealership Agreement) / Federal Court Final Judgment (appeal From Court of Appeal; High Court Decision Remitted Affirmed)

Legal Issues

  1. 1 Whether disclaimed words in a registered trade mark may be considered in combination with essential features when assessing likelihood of confusion in an infringement action
  2. 2 Whether goodwill can be destroyed solely by publication(s)/press release not specifically naming the business owner
  3. 3 Whether defendants infringed plaintiff's registered trade mark under s38 TMA

Ratio Decidendi

The Federal Court held that in trade mark infringement actions the court must consider disclaimed words in juxtaposition or in combination with the registered mark's essential features when assessing likelihood of confusion under the imperfect recollection test; applying that test the defendants' use of 'Real Expert White' and associated get-up infringed the registered mark and constituted passing off; and goodwill is not destroyed merely by unrelated press publications so the second question is answered in the negative.

Court Disposition

Appeal allowed; High Court judgment affirmed; Court of Appeal judgment set aside; matter remitted to High Court for assessment of damages

Orders

  • Allow appeal by Ortus Expert White Sdn Bhd
  • Affirm High Court decision finding infringement, passing off and breach of dealership agreement