Malaysia Case Law: Decisions & Judgments

Topic

Trade mark infringement

Legal area

Court

2 Oct 2024

1. ) PERUSAHAAN OTOMOBIL KEDUA SDN. BHD. 2. ) PERODUA SALES SDN. BHD. LEE LAP KEE PENCELAH Kementerian Perdagangan Dalam Negeri dan Hal Ehwal Pengguna

Citation

WA-22IP-10-01/2020 (Mahkamah Tinggi)
Court

High Court
Case number

WA-22IP-10-01/2020 (Mahkamah Tinggi)

The defendant is bound by the Consent Judgment admitting infringement and passing off; the plaintiffs proved loss of business profits and loss of goodwill by reliance on uncontested invoices and the seizure list and by reference to plaintiffs' market position; damages awarded to compensate RM16,777.91 for loss of business profits and RM500,000 for loss of goodwill and reputation, together with costs.
2 Jun 2023

WA-22IP-63-10/2019 (Mahkamah Tinggi)

Citation

WA-22IP-63-10/2019 (Mahkamah Tinggi)
Court

High Court
Case number

WA-22IP-63-10/2019 (Mahkamah Tinggi)

Special damages for re-establishing production (RM121,655.50) and solicitor-client costs (RM82,729.83) and assessment costs (RM10,000.00) were awarded because plaintiff proved those expenses; claimed lost profits (RM1,936,103.40) were rejected and nominal damages of RM1,000.00 awarded because plaintiff elected to discontinue the product and failed to prove causal lost sales; exemplary damages awarded at RM500,000.00 as a proportionate punitive sum.
19 May 2023

RCB MARKETING SDN BHD MILANO MARKETING SDN BHD

Citation

PA-22IP-1-12/2020 (Mahkamah Tinggi)
Court

High Court
Case number

PA-22IP-1-12/2020 (Mahkamah Tinggi)

Absent exceptional circumstances, the trial should not be bifurcated; the documents sought by RCB are relevant and necessary for the fair and economical disposal of the action under Order 24 Rules 3 and 7 and must be produced; RCB's application for production is allowed with costs.
26 Jul 2022

WA-22IP-77-12/2019 (Mahkamah Tinggi)

Citation

WA-22IP-77-12/2019 (Mahkamah Tinggi)
Court

High Court
Case number

WA-22IP-77-12/2019 (Mahkamah Tinggi)

The Defendant reproduced the Plaintiffs' registered VERVE marks and copyrighted promotional materials on his commercial website to market the same development without consent; that use was in the course of trade and within the scope or associated field of the Plaintiffs' registrations, and was likely to cause confusion and false association; the Plaintiffs therefore proved trade mark infringement, passing off, copyright infringement and unlawful interference; the Defendant's implied consent defence failed; the abuse of process counterclaim failed; reliefs including injunctions, delivery up, d…
10 Mar 2022

1. Tan Kim Hock Product Centre Sdn. Bhd ( Pertama) 2. Siah Siu Eng ( Kedua) Tan Kimhock Tong Seng Food Industry Sdn Bhd

Citation

M-02(NCVC)(W)-1161-06/2017 (Mahkamah Rayuan)
Court

NCVC
Case number

M-02(NCVC)(W)-1161-06/2017 (Mahkamah Rayuan)

The court affirmed the High Court's factual findings that the Respondent acquired the business and goodwill (including the Created and Registered Marks) from TKH in 1976, the Registered Mark was not abandoned and remained in use, the 2nd Appellant did not co-create or co-own the Created Mark, and the Appellants' use of identical/confusing get-up and marks amounted to trade mark infringement and passing off; appeal dismissed.
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…
30 Dec 2019

TELEKOM MALAYSIA BERHAD & 1 LAGI CA MULTIMEDIA SDN BHD & 4 LAGI

Citation

WA-22IP50-10/2018 (Mahkamah Tinggi)
Court

High Court
Case number

WA-22IP50-10/2018 (Mahkamah Tinggi)

On the facts the defendants used the identical TMPOINT mark and www.tmpoint.com domain in the course of trade without authorization and contrary to the Agreement and Additional Terms; such use was within the scope of the Plaintiff’s trade mark registration and was likely to deceive or confuse consumers and to exploit Plaintiffs' goodwill; the domain was used/registered in bad faith post-termination; consequently Plaintiffs proved breach of contract, trade mark infringement, passing off and passing off of the domain, entitling them to transfer of the domain, injunction and account/inquiry into…
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.