Malaysia Case Law: Decisions & Judgments | LexChat

Topic

Imperfect recollection test

Legal area

Court

23 May 2025

FERRARI S.p.A SUNRISE-MARK SDN BHD

Citation

WA-24IP-24-07/2024 (Mahkamah Tinggi)
Court

High Court
Case number

WA-24IP-24-07/2024 (Mahkamah Tinggi)

The Court upheld the Registrar's decision: on holistic comparison (side-by-side and imperfect recollection) the Defendant's Mark is not confusingly similar to the Plaintiff's Mark because the marks differ in key elements (two horses, prominent 'W', and 'WEE POWER'); disclaimed element 'POWER' may be considered in context and 'WEE' was distinctive from the founder's name; the goods and consumers are dissimilar (energy drinks versus luxury automobiles) so no likelihood of confusion exists. Therefore the originating summons to set aside the Registrar's decision is dismissed.
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.