The court ruled that the Plaintiffs failed to prove trademark infringement or passing off due to the generic nature of 'SOCIAL' and lack of likelihood of confusion.

JUDGMENT

[After Full Trial]

Azlan Sulaiman JC:

Introduction

[1] At the heart of this action are the following trademarks:

("Trademarks")

And

("Defendants' Mark")

[2] The Plaintiffs' contends that the Trademarks are well-known trademarks. Their claims against the Defendants in this action are for damages and other relief for:

(i) trademark infringement; and

(ii) passing off.

[3] The word "Social" that appears in the Trademarks and the Defendant's Mark was at the heart of both claims.

Salient Facts

The Plaintiffs

[4] The 2nd Plaintiff ("Bluefire") was incorporated on 17 July 1989 as "Fashionhall Malaysia Sdn Bhd" and changed its name to "Bluefire (Malaysia) Sdn Bhd" on 18 December 1999. Its nature of business is "Proprietors of Restaurants". The 1st Plaintiff, Tan Mei Lee ("Tan") together with her husband, Urairat Ekachai ("Urairat") are its directors, and Tan holds a 40% shareholding in Bluefire.

The Trademarks

[5] On 2 August 2010, Tan submitted two applications for each of the Trademarks (and therefore four applications in all) to MyIPO to register the Trademarks in Classes 16 and 43. The applications were approved and the Trademarks registered. Those registrations expire only in August 2030. Class 16 is for goods and Class 43 is for services, as follows:

Class 16

"Book marks; Book ends; Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Calendars; Greeting cards; Cards; Advertising material expressed in card form; Cards (stationery); Business cards; Gift cards; Invitation cards; Menu cards; Printed matter in the form of cards; Writing cards; Name cards; Magazines (periodicals); Manuals (handbooks); Cookbooks; Newsletters; Newspapers; Pamphlets; Periodicals; Postcards; Posters; Printed publications; Tickets; Seal (stamps); Address stamps; Rubber stamps; Self-inking stamps, for office use; Catalogues; Tissue and napkins; Paper coasters; Place mats of paper; Paper placemats; Drawing or writing pads; Envelopes; Notebooks; Pen or pencil holders or cases; Photograph stands; Placards; Prints; Rulers; Erasers; Scrap books; Stamp pads; Stickers; Wrapping paper; All included in class 16."

Class 43

"Services for providing food and drink; Restaurant services, cafe and cafeteria services, canteen and catering services, banqueting; Lounge, bistro, poolroom, snack bar and bar services; Coffee shop services; Bakery services; Services rendered or associated with operating restaurants and other establishment or facilities engaged in providing food and drink prepared for consumption; Preparation services of food and drink for sale; Preparation services of carry-out foods and drinks; related services thereof; All included in class 43."

[6] The Plaintiffs' evidence of first use of the Trademarks was in 2001, when Bluefire opened a bar and restaurant in Bangsar, Kuala Lumpur called "the SOCIAL". Bluefire has currently expanded "the SOCIAL" to five outlets, the other four being in Publika, Desa Park City, Empire Sunway, and Mont Kiara. These outlets are also named "the SOCIAL", but to all five is added an asperand i.e. "@" and the location of that outlet. For example, the Bangsar outlet is now called "the SOCIAL @ Bangsar". All of the SOCIAL outlets are full-fledged bars and restaurants, with an expansive menu covering both western and oriental fare. Tan has at all times allowed Bluefire to use the Trademarks on Bluefire's the SOCIAL bars and restaurants.

The Plaintiffs' Previous Suits

[7] In 2010, Tan, Bluefire and Bluefire (KL) Sdn Bhd brought an action against a company called Golden Regal Restaurant Sdn Bhd regarding the latter's use of the mark "the SOCIAL @ KL". In the ensuing judgment dated 24 November 2011 after a full trial ("GRR Judgment"), the High Court ordered several relief, the following bein