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2025 MarsdenLR 3024
HIGH COURT MALAYA KUALA LUMPUR
ANTARA HOLIDAYS VILLAS SDN BHD – Appellant
Versus
TEDULOUS TRAVEL & TOURS SDN BHD – Respondent
[Suit No: WA-22IP-59-09/2020]
Priority of use in trademark law prevails over registration, protecting the rights of the first user against claims of infringement and passing off.
Headnote:(A) Trademarks Act 2019 - Sections 16, 47, 48, 52, 53, 54, and 55 - Trademark infringement and passing off - Plaintiff's claims dismissed as defendant established prior use of 'LA VILLA' trademark since July 2013, invalidating plaintiff's registered trademarks - Plaintiff's actions constituted passing off, leading to a permanent injunction against its use of the mark. (Paras 9, 50, 51)
(B) Trademark Registration - Priority of use prevails over registration - The court emphasized that the first user principle safeguards commercial identity and goodwill. (Paras 21, 29)
Facts of the case:
The plaintiff, operating under the brand 'Holiday Villa', claimed trademark infringement against the defendant, who had been using 'LA VILLA' since July 2013. The plaintiff registered the mark in March 2016. The court found the defendant to be the prior user.
Findings of Court:
The defendant's use of 'LA VILLA' was established as prior and continuous, leading to the invalidation of the plaintiff's trademarks and a ruling in favor of the defendant.
Issues: The main issues included the determination of the first user of the trademark, the validity of the plaintiff's trademarks, and whether passing off occurred.
Ratio Decidendi: The court ruled that priority in use prevails over registration, and the plaintiff's claims of trademark infringement and passing off were dismissed due to the defendant's established rights.
Result: Plaintiff's claims dismissed; defendant's counterclaim allowed.
JUDGMENT
Introduction
[1] The story of hospitality in the Malay Peninsula is as old as its trading ports, its origins tracing back to the 15th century when merchants and travelers sought respite in the bustling port of Malacca. These early lodgings, though modest by modern standards, laid the foundation for the grand hotels and luxurious resorts that now define Malaysia's flourishing tourism industry. As Huang Zhong vividly recounts in Hai Yu (News from the Ocean), the hospitality trade of that era was deeply intertwined with commerce, with innkeepers providing not only food and shelter but a carefully curated experience—one that often came at a price:
"The merchants of the ships live in a hotel, the chief of which always gives female slaves to serve them and sends them food and drink morning and evening; but if one uses too freely of this, he may be sure that all his money will pass into the hands of the other."
(Groeneveldt 1960; pp 126-128)
[2] More than five centuries later, the essence of hospitality remains unchanged. A name, a reputation, goodwill, and the promise of an experience—all of these elements continue to define the success of a hotel. Today, these attributes find protection under the law of intellectual property, ensuring that a brand's identity and the goodwill it has built remain exclusive to its rightful owner. It is against this backdrop that the present dispute unfolds, set along the picturesque shores of Langkawi. Here, two competing establishments, each with its own history, ambition, and claim to distinctiveness, now find themselves locked in a legal battle over a name.
Background Facts
[3] The trial was convened on 20 and 21 November 2023, during which the Court examined witness testimonies and documentary evidence. The factual matrix that emerged presents a clear narrative of the events giving rise to this dispute.
[4] Antara Holiday Villas Sdn Bhd, the plaintiff, is a renowned hotel operator under the distinguished brand name "Holiday Villa". Under this brand, the plaintiff and its affiliated companies operate 27 hotels across 6 countries with nearly 6,000 rooms On 24 March 2016, the plaintiff secured trademark registrations for "LA VILLA" under Classes 43 and 16 (TM Nos 2016002961 & 2016002962) (See Figure 1). This classification ensures comprehensive protection, with Class 43 covering the plaintiff's hospitality services, including food, beverages, and lodging; while Class 16 safeguards its printed materials, stationery, and marketing assets. This trademark was first utilized in February 2014 for the plaintiff's poolside restaurant, located within their 340-room beachfront resort in Langkawi known as Holiday Villa Resort & Beach Club Langkawi.
[5] Subsequently, the plaintiff broadened the use of the "LA VILLA" mark to encompass additional offerings, including a dedicated hotel wing at Holiday Villa Beach Resort & Spa Cherating. Demonstrating their intent to associate the mark with this exclusive and upscale hospitality experiences— specifically their pool villa concept—the plaintiff through their trademark agent filed four additional trademark applications on 17 June 2019 (Application Nos 2019021454, 2019021456, T2019021460 & 20190214561) (See Figure 2 & 3). By the time the matter proceeded to trial, all four applications had been duly approved by the trademark office.
[6] The defendant, Tedulous Travel & Tours Sdn Bhd, has been running a boutique accommodation business in Langkawi under the name "LA VILLA" since July 2013, despite not registering the trademark (see Figures 3, 4, and 5). This accommodation consists of 11 pool villas located 3 kilometers north-northeast of the plaintiff's 15-acre resort, in an inland area of Langkawi without direct access to the beach.
[7] One month after submitting four new "LA VILLA" trademark applications for their boutique hotel (Figure 2 & 3), the plaintiff, through their solicitors, Messrs PK Yong & Co, issued a demand dated 19 July 2019, seekin
