1. ) Guangzhou Light Industry & Trade Group Ltd 2. ) Guangzhou Eaglecoin Enterprises Group Corporation (also Known As Guangdong Cannery) 3. ) Kim Guan Hap Kee Sdn Bhd Lintas Superstore Sdn Bhd

1. ) Guangzhou Light Industry & Trade Group Ltd 2. ) Guangzhou Eaglecoin Enterprises Group Corporation (also Known As Guangdong Cannery) 3. ) Kim Guan Hap Kee Sdn Bhd Lintas Superstore Sdn Bhd

The Federal Court held the Court of Appeal erred: parallel import defence under s40(1)(dd) TMA fails absent express or implied consent by the proprietor/registered user; where goods are territorially restricted, materially different and non‑compliant with domestic regulatory requirements, trademark rights are not exhausted and importation/resale constitutes infringement and passing off; High Court judgment is reinstated.

Citation
02(f)-62-10/2020(S) (Mahkamah Persekutuan)
Parties
Appellant/plaintiff: Guangzhou Light Industry & Trade Group Ltd; Appellant/plaintiff: Guangzhou Eaglecoin Enterprises Group Corporation (also known as Guangdong Cannery); Appellant/plaintiff: Kim Guan Hap Kee Sdn Bhd; Respondent/defendant: Lintas Superstore Sdn Bhd
Court
f
Jurisdiction
Malaysia
Judgment Date
3 June 2022
Case Number
02(f)-62-10/2020(S) (Mahkamah Persekutuan)
Procedural Posture
Civil Appeal (trademark Infringement and Passing Off) / Final Appeal to the Federal Court (appeal From Court of Appeal and High Court)
Outcome
Appeal allowed; High Court judgment reinstated; Court of Appeal decision set aside
Legal Topics
Parallel Importation, Exhaustion of Trademark Rights, Implied Consent, Material Differences, Passing Off, Territorial Restriction, Labelling and Import Compliance
Source Language
Malay/English
Intellectual Property Trademark Law Commercial Law Consumer Protection Food and Regulatory Law Parallel Importation Exhaustion of Trademark Rights Implied Consent +4 more

Case Brief

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Parties

Guangzhou Light Industry & Trade Group Ltd

Appellant/plaintiff

Guangzhou Eaglecoin Enterprises Group Corporation (also known as Guangdong Cannery)

Appellant/plaintiff

Kim Guan Hap Kee Sdn Bhd

Appellant/plaintiff

Lintas Superstore Sdn Bhd

Respondent/defendant

Procedural Posture

Civil Appeal (trademark Infringement and Passing Off) / Final Appeal to the Federal Court (appeal From Court of Appeal and High Court)

Legal Issues

  1. 1 Whether trademark rights are exhausted worldwide despite express territorial sale restriction
  2. 2 Whether parallel importation may be prohibited where imported goods are materially different from authorised domestic goods
  3. 3 Whether quantity of purchase can establish implied consent to resale abroad

Ratio Decidendi

The Federal Court held the Court of Appeal erred: parallel import defence under s40(1)(dd) TMA fails absent express or implied consent by the proprietor/registered user; where goods are territorially restricted, materially different and non‑compliant with domestic regulatory requirements, trademark rights are not exhausted and importation/resale constitutes infringement and passing off; High Court judgment is reinstated.

Court Disposition

Appeal allowed; High Court judgment reinstated; Court of Appeal decision set aside

Orders

  • Allow the appeal by the plaintiffs
  • Set aside the decision of the Court of Appeal