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2024 MarsdenLR 2881
HIGH COURT MALAYA KUALA LUMPUR
PORTLAND ARENA SDN BHD – Appellant
Versus
OPENAPPS SDN BHD – Respondent
[Civil Suit No: WA-22IP-27-04/2021]
Unauthorized use of a registered trademark constitutes infringement, leading to public confusion and misrepresentation, alongside passing off and copyright violations.
Headnote:(A) Trade Marks Act 2019 – Sections 54 and 55 – Copyright Act 1987 – Section 3 – Trademark infringement, passing off, and copyright infringement – Plaintiff, owner of the trademark 'MODULARCRAFT', claimed against Defendant for infringement, passing off, and copyright violation – Court found Defendant used Plaintiff's trademark without consent, leading to confusion and misrepresentation – Claims allowed with costs. (Paras 2, 16, 41, 63)
(B) Trademark Infringement – The Defendant's use of the MODULARCRAFT trademark was unauthorized and likely to deceive the public, constituting infringement under the Trade Marks Act. (Paras 25, 39)
(C) Passing Off – The Defendant's actions misrepresented its goods as those of the Plaintiff, damaging the Plaintiff's goodwill. (Paras 41, 50)
(D) Copyright Infringement – The Defendant reproduced the Plaintiff's copyrighted photographs without consent, infringing copyright protections. (Paras 52, 62)
Facts of the case: The Plaintiff, a registered owner of the 'MODULARCRAFT' trademark, claimed that the Defendant infringed its trademark, passed off its products as those of the Plaintiff, and infringed its copyright by using the Plaintiff's images without permission. (Paras 4-8)
Findings of Court: The Court found that the Defendant had infringed the Plaintiff's trademark, committed passing off, and infringed copyright, allowing all claims with costs. (Paras 63)
Issues: The main issues included whether the Defendant infringed the Plaintiff's trademark, passed off its products, and infringed copyright. (Paras 15)
Ratio Decidendi: The Court ruled that the Defendant's use of the trademark was unauthorized, leading to public confusion, and that the Defendant's actions constituted passing off and copyright infringement. (Paras 39, 50, 62)
Result: Claims allowed with costs.
JUDGMENT
Introduction
[1] The Plaintiff claimed against the Defendant for:
1.1 Infringement of the Plaintiff's trademark;
1.2 Tort of passing off; and
1.3 Copyright infringement.
[2] I had allowed all the Plaintiff's claims Consequent to that finding, I ordered for:
(a) a permanent injunction to prohibit the Defendant:
(i) from continuing to infringe the Plaintiff's trademark;
(ii) from ding any acts tantamount to passing off the Plaintiff's product and trademark;
(b) the destruction of any products or materials in any form in the Defendant's possession that are infringing the discontinuing pro, to prohibit and Plaintiff's trademark;
(c) delivery up of the infringing items; and
(d) damages to be determined at a separate assessment proceeding.
[3] The Defendant now appeals against that decision.
Facts
[4] The Plaintiff is the registered owner of the trademark "MODULARCRAFT", the details of which are as follows:
(i) Trademark No 2015050598 in Class 37 for a period of 10 years commencing 21 January 2015 - 21 January 2025;
(ii) Trademark No 2015058823 in Class 35 for a period of 10 years commencing 9 June 2015 - 9 June 2025; and
(iii) Trademark No 2015058826 in Class 42 for a period of 10 years commencing 9 June 2015 - 9 June 2025.
(hereinafter collectively referred to as "MODULARCRAFT T rademark")
[5] Classes 1 - 34 cover trademark used for goods, while Classes 35 - 45 deal with trademark used in respect of services. Class 35 includes services that covers advertising, business management, business administration and office functions. Class 37 includes mainly services rendered by contractors in the construction or making of permanent building. Class 42 covers scientific and technological services and research, industrial research, industrial design, design and development of computer hardware and software.
Plaintiff's Case
[6] The Plaintiff's case in brief are as follows:
6.1 Sometime in early February of 2018 the Defendant approached the Plaintiff to design and build a cabin called "Transportable Expandable Cabin" ("TEC"), which is referred to by the Defendant as "Tactical Expandable Cabin", to enable the Defendant to bid in a tender offered by the Ministry of Defence ("MINDEF").
6.2 Following that, the Plaintiff designed and built a TEC as requested by the Defendant which is called MODULARCRAFT Mobile System ("MMS").
6.3 The TEC/MMS consists mainly of 2 parts:
(i) The Plaintiff's part: building the structure, including the supply of furniture, air-conditioning system, power generator, power supply, lifting mechanism, mechanical and electricity; and
(ii) The Defendant's part: completing the structure with ICT support, including radio and integrators, computer system, network system, software, telephone, audio system, wireless access point, WIFI, GPS and laptops.
6.4 Portland Energy Sdn Bhd ("PESB"), the Plaintiff's subsidiary, and the Defendant entered into a Product Development NonDisclosure Agreement ("PDNDA") dated 23 December 2020. The PDNDA allows the Defendant access to confidential information on the MMS.
6.5 The Defendant had breached the PDNPA, by using a mark "MODULARCRAFT" in its business brochure published in its website, which is almost identical or which is so nearly resemble the MODULARCRAFT trademark as likely to deceive or cause confusion within the trade and amongst the public ("Defendant's Infringing Sign").
6.6 The Defendant's use of the Defendant's Infringing Sign in the course of the Defendant's trade without the Plaintiff's consent and permission tantamount to an infringement of the MODULARCRAFT Trademark. The Defendant had also committed a tort of passing off and had also infringed the Plaintiff's copyright.
6.7 The MODULARCRAFT Trademark which was registered in the Three Classes as detailed out earlier is as shown in Annexure A to the Plaintiff's Statement of Claim. The image of the said MODULARCRAFT Trademark is as below:
6.8 The Defendant's Infringing Sign as appeared in the Defendant's brochure is as shown in Anne
