Malaysia Case Law: Decisions & Judgments

Topic

Goodwill

Legal area

Court

12 Dec 2025

GOLDEN DAMASCUS DIVERSIFIES SDN BHD AROI THAI KITCHEN (PUNCAK ALAM) SDN BHD

Citation

WA-22IP-94-09/2025 (Mahkamah Tinggi)
Court

High Court
Case number

WA-22IP-94-09/2025 (Mahkamah Tinggi)

The Court granted the interim injunction because the Plaintiff established a bona fide serious issue to be tried in a passing off claim (goodwill, misrepresentation and damage), damages would not adequately compensate prospective and cumulative harm to goodwill, and the balance of convenience favoured preserving the status quo pending trial; the Defendant's procedural objection failed and uncontroverted contractor evidence supported the Plaintiff's case.
22 May 2025

POLYMER CONNECT SDN. BHD (Def 1 Tuntutan Balas) ADVENT PACKAGING SDN. BHD ( 1 Tuntutan Balas) PIHAK KETIGA 1. ) Ooi Tse Biing (Def 2 Tuntutan Balas) 2. ) Megan Ong Fong Lee ( 2 Tuntutan Balas) 3. ) Matthew Ong Xing Ren ( 3 Tuntutan Balas) 4

Citation

BA-22NCvC-99-03/2024 (Mahkamah Tinggi)
Court

High Court
Case number

BA-22NCvC-99-03/2024 (Mahkamah Tinggi)

The application to re-amend was dismissed because the clarifications sought could properly and without prejudice be made by way of a reply to the counterclaim; allowing re-amendment after pleadings had closed would prejudice the defendant by necessitating refiling of defences and affect the counterclaim, causing unnecessary steps, delay and costs, and thus amounted to an improper use of the amendment procedure.
12 Dec 2024

TCE SPORTS SDN BHD BULLZEN SPORT (MALAYSIA) SDN BHD

Citation

P-02(IPCv)(W)-483-03/2023 (Mahkamah Rayuan)
Court

IPCv
Case number

P-02(IPCv)(W)-483-03/2023 (Mahkamah Rayuan)

The appeal was allowed because the plaintiff adduced uncontested sales revenue demonstrating goodwill; the court, applying the correct principle of comparing the entirety of the product get-up, found striking overall similarities between the plaintiff's and defendant's packaging (reinforced by the defendant's own opposition submissions) amounting to misrepresentation; given the similarity of the products, damage was properly inferred. The High Court judgment was therefore set aside and relief granted to the plaintiff.
11 Nov 2024

MARUAN BIN MOHD SAID (Menyaman dalam kapasiti sebagai Pengerusi PERSATUAN SENI SILAT CHAKARLA MALAYSIA) YANG MULIA JAAFAR BIN IBRAHIM (Disaman dalam kapasiti sebagai Pengerusi PERSATUAN SENI SILAT CHAKARLA JIJAN NEGERI SEMBILAN DARUL KHUSUS

Citation

NA-22IP-1-09/2021 (Mahkamah Tinggi)
Court

High Court
Case number

NA-22IP-1-09/2021 (Mahkamah Tinggi)

The court held that 'Chakarla' is descriptive/generic of a type of silat and lacks distinctiveness and goodwill in favour of plaintiff; defendant had prior continuous use and used the name bona fide to describe the martial art; plaintiff failed to prove misrepresentation or damage; claims were further barred by laches/acquiescence and limitation where applicable; accordingly plaintiff's trademark and passing off claims were dismissed with costs.
8 Dec 2021

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

Citation

02(f)-12-02/2020 (W) (Mahkamah Persekutuan)
Court

f
Case number

02(f)-12-02/2020 (W) (Mahkamah Persekutuan)

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.
13 Apr 2021

Mohammad Hafiz bin Hamidun Kamdar Sdn Berhad

Citation

02(f)-64-10/2020(W) (Mahkamah Persekutuan)
Court

f
Case number

02(f)-64-10/2020(W) (Mahkamah Persekutuan)

Where a celebrity has established factual goodwill in a name or indicium, the celebrity (or his licensee/related entity) has locus standi to sue in passing off against a third party misrepresenting that name; corporate form or technical non-joinder cannot defeat such a claim; the Federal Court restored the High Court's finding that the appellant owned the goodwill and allowed the appeal.
7 Apr 2021

1. ) SKYWORLD HOLDINGS SDN. BHD. 2. ) SKYWORLD GLOBAL SDN. BHD. 3. ) SKYWORLD (SABAH) SDN. BHD. 4. ) SKY WORLD CITY BERHAD 5. ) YONG FOOK MING 6. ) LEE CHIA LIN 1. ) SKYWORLD DEVELOPMENT SDN. BHD. 2. ) SKYWORLD CAPITAL BERHAD

Citation

02(f)-50-09/2020(W) (Mahkamah Persekutuan)
Court

f
Case number

02(f)-50-09/2020(W) (Mahkamah Persekutuan)

The Federal Court held that the High Court's factual findings that the defendants' corporate and domain names were not visually similar to the plaintiffs' registered composite SkyWorld marks were not plainly wrong; subsection 38(1) requires identity or such close resemblance as to be likely to deceive or cause confusion, which was not established on the totality of circumstances; consequently infringement under s.38 was not made out and, as misrepresentation/confusion was not established, the tort of passing off also failed. The Court therefore allowed the appeal and reinstated the High Court…
4 Nov 2020

1. MASITU MARKETING (M) SDN BHD (Syarikat No: 576865-M) 2. MASITU SDN BHD (Syarikat No. 266743-V) 3. MASITU MOULDING SDN BHD (Syarikat No. 563953-P) 1. MASFOAM ENGINEERING SDN BHD (Syarikat No. 1014502-U) 2. WONG NYOK KIAW 3. LEW YON FUAH (

Citation

JA-22IP-3-09/2019 (Mahkamah Tinggi)
Court

High Court
Case number

JA-22IP-3-09/2019 (Mahkamah Tinggi)

The court found the Defendants used the mark 'MASFOAM' in the course of trade (on invoices, delivery orders, business cards, website and social media and by incorporating a company name), the mark used was identical/indistinguishable from the registered Trade Mark, intention to infringe was irrelevant, the good faith name defence did not apply because the name was not a personal/place name and Defendants knew of the prior mark, Plaintiffs had acquired sufficient goodwill and the Defendants' use constituted misrepresentation likely to cause confusion and damage; consequently injunctions and mo…
10 Jul 2018

PUMP MATRIX ENGINEERING SDN BHD (No. Syarikat: 1030982-M) WARMAL WIL HEAVY DUTY PUMPS SDN BHD (No. Syarikat: 161203-D)

Citation

W-02(IPCv)(W)2444-12/2017 (Mahkamah Rayuan)
Court

IPCv
Case number

W-02(IPCv)(W)2444-12/2017 (Mahkamah Rayuan)

The Court of Appeal held the High Court did not err: the plaintiff proved goodwill in the WARMAL name and trade mark on evidence (brochures, metal name plates, audited accounts showing cumulative sales exceeding RM130 million, advertising and cross-border sales), had locus standi to sue in passing off as claim related to WARMAL not WARMAN, no adverse inference under s.114(g) was warranted because the distributorship agreement was not material, and the defendant committed passing off and unlawful interference; appeal dismissed and High Court order affirmed.
THE SCOTCH WHISKY ASSOCIATION v EWEIN WINERY (M) SDN BHD

Citation

THE SCOTCH WHISKY ASSOCIATION v EWEIN WINERY (M) SDN BHD
Court

Malaysian court

From the pleadings the court found both plaintiffs disclosed a reasonable cause of action in passing off; it was not plain and obvious they lacked pecuniary interest or proprietary rights and the second plaintiff need not be a registered proprietor to have a cause of action for passing off; accordingly both strike-out applications were dismissed with costs.