Munchy Food Industries Sdn Bhd Huasin Food Industries Sdn Bhd

Munchy Food Industries Sdn Bhd Huasin Food Industries Sdn Bhd

The Federal Court held that honest concurrent use under the TMA and variation of a registered trade mark are not relevant considerations in an infringement or passing-off action absent pleading and evidence; a registered proprietor is not obliged to seek variation before suing for infringement or passing-off; the Court of Appeal erred by raising and applying unpleaded statutory defences (section 20 TMA) and by substituting a co-existence remedy without it being pleaded and supported by evidence, and the High Court judgment finding infringement and passing-off was reinstated.

Citation
02(f)-85-11-2019(W) (Mahkamah Persekutuan)
Parties
Plaintiff/appellant: Munchy Food Industries Sdn Bhd; Defendant/respondent: Huasin Food Industries Sdn Bhd
Court
f
Jurisdiction
Malaysia
Judgment Date
5 October 2021
Case Number
02(f)-85-11-2019(W) (Mahkamah Persekutuan)
Procedural Posture
Civil Appeal — Trade Mark Infringement and Passing Off / Federal Court Final Judgment on Appeal From Court of Appeal and High Court
Outcome
Appeal allowed. Decision of the Court of Appeal set aside and High Court judgment reinstated.
Legal Topics
Honest Concurrent Use, Variation of Registered Trade Mark, Likelihood of Deception/confusion, Pleadings, Remedies
Source Language
Malay/English
Intellectual Property Trade Marks Passing Off Civil Procedure Honest Concurrent Use Variation of Registered Trade Mark Likelihood of Deception/confusion Pleadings +1 more

Case Brief

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Parties

Munchy Food Industries Sdn Bhd

Plaintiff/appellant

Huasin Food Industries Sdn Bhd

Defendant/respondent

Procedural Posture

Civil Appeal — Trade Mark Infringement and Passing Off / Federal Court Final Judgment on Appeal From Court of Appeal and High Court

Legal Issues

  1. 1 Whether honest concurrent rights under the Trade Marks Act are a relevant consideration in infringement and/or passing-off when defendant's mark is unregistered
  2. 2 Whether a plaintiff must seek variation of its registered trade mark before commencing infringement and/or passing-off proceedings when the defendant's mark is unregistered

Ratio Decidendi

The Federal Court held that honest concurrent use under the TMA and variation of a registered trade mark are not relevant considerations in an infringement or passing-off action absent pleading and evidence; a registered proprietor is not obliged to seek variation before suing for infringement or passing-off; the Court of Appeal erred by raising and applying unpleaded statutory defences (section 20 TMA) and by substituting a co-existence remedy without it being pleaded and supported by evidence, and the High Court judgment finding infringement and passing-off was reinstated.

Court Disposition

Appeal allowed. Decision of the Court of Appeal set aside and High Court judgment reinstated.

Orders

  • Appeal allowed with costs to the appellant
  • Decision of the Court of Appeal set aside