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2023 MarsdenLR 2705
HIGH COURT MALAYA KUALA LUMPUR
MALAYSIA AIRLINES SDN BHD & ANOR – Appellant
Versus
AIR ASIA COM TRAVEL SDN BHD – Respondent
[Civil Suit No: WA-22IP-14-03/2022]
The court established that a delay in filing an interim injunction application may be excusable if the plaintiff first attempts to resolve the issue independently, and the balance of convenience favors granting the injunction to protect trademark rights.
Headnote:(A) Trademarks Act, 2019 - Trademark infringement, passing off, trade misrepresentation, unlawful interference with trade - Plaintiffs sought an interim injunction against the Defendant for using Plaintiffs' Marks on the Defendant's SuperApp, alleging infringement and misrepresentation - Defendant contended no infringement occurred. (Paras 3, 4, 14, 26, 37, 42)
(B) Delay - The court considered whether the Plaintiffs' delay in filing the application was inordinate and inexcusable, ultimately finding the delay was acceptable as the Plaintiffs attempted to resolve the issue independently first. (Paras 15, 20, 24)
(C) Balance of convenience - The court determined that the balance of convenience favored granting the injunction to protect the Plaintiffs' Marks and business reputation, despite the Defendant's claims of potential harm. (Paras 26, 30, 34)
(D) Adequate remedy - The court found that damages would not suffice to address the potential loss of goodwill and reputation for the Plaintiffs. (Paras 35, 36)
Findings of Court:
The court granted the interim injunction to restrain the Defendant from using the Plaintiffs' Marks pending trial, emphasizing the need to preserve the status quo and protect the Plaintiffs' rights. (Paras 42)
Result: The Plaintiffs' application was allowed, and the Defendant was ordered to pay costs. (Paras 42, 43)
| Table of Content |
|---|
| 1. plaintiffs allege trademark infringement. (Para 1 , 2 , 3 , 4 , 5) |
| 2. court addresses procedural matters. (Para 6 , 7 , 8 , 9 , 10 , 11 , 12) |
| 3. issues for decision outlined. (Para 13 , 14) |
| 4. delay in application considered. (Para 15 , 16 , 17 , 18 , 19 , 20 , 21 , 22 , 23) |
| 5. serious issues to be tried identified. (Para 24 , 25 , 26 , 27 , 28 , 29 , 30 , 31 , 32 , 33) |
| 6. damages not an adequate remedy. (Para 34 , 35 , 36) |
| 7. details of interim injunction specified. (Para 37 , 38 , 39 , 40 , 41) |
| 8. plaintiffs' application allowed. (Para 42) |
Introduction
[1] The Plaintiffs are in the business of providing airline transportation services, travel booking services, travel booking agency services, air travel services, travel reservation and booking services, etc. So is the Defendant, who operates low-cost airline transportation services under the "AirAsia" brand.
[2] The Plaintiff use various trademarks, consisting of the words "Malaysia Airlines" or "Firefly" or those words with their respective logos. Those trademarks are registered under the 2nd Defendants name. This action involves 12 of them (collectively, "Plaintiffs' Marks").
[3] This action against the Defendant is for damages and other relief for trademark infringement, passing off, trade misrepresentation and unlawful interference with trade. Their action is predominantly based on the allegation that the Plaintiffs' Marks appear on the Defendant's app known as the "AirAsia Super App" ("SuperApp"). Through the SuperApp, the Defendant sources the Plaintiffs' Airline tickets from other travel agents registered with the International Air Transport Association (IATA).
[4] The Defendant's stand is that the alleged acts do not amount to trademark infringement, passing off, trade misrepresentation or unlawful interference in trade.
[5] Seven and a half months after filing this action, the Plaintiff filed an application ("Plaintiffs' Application") for an interim injunction to restrain the Defendant et al until the disposal of this action.
A Preliminary Matter
[6] After hearing the parties on the Plaintiffs' Application on 22 June 2023,
I deferred my decision on it to 4 July 2023.
[7] Immediately after the case was called up on 4 July 2023 and Counsel for the parties had been customarily introduced, Learned Counsel for the Defendant sought leave to address the Court before I pronounced the decision. She referred to the letter dated 3 July 2023 that the Defendant's Solicitors had sent to the Court under cover of which was enclosed a proposed undertaking the Defendant was prepared to provide to the Plaintiffs. If accepted (and though neither the letter nor the undertaking expressly said so), it would dispense with any decision being made on the Plaintiffs' Application and it would presumably be withdrawn altogether. She also informed me that the proposed undertaking had been forwarded to the Plaintiffs' Solicitors who, due to shortness of time, had yet to respond. She also apologized for this late development.
[8] Obviously, the ball was now in the Plaintiffs' Court, and the Court needed to get the Plaintiffs' views on this latest development. Learned Counsel for the Plaintiffs confirmed that he had received the proposed undertaking and further confirmed that he had not been able to revert, because he had yet to obtain the Plaintiffs' instructions, more so because internally the Plaintiffs' response to the proposed undertaking had to be higher taken up internally within their respective organizations for a decision. Crucially, Learned Counsel for the Plaintiffs also informed the Court that his instructions were to proceed with the Plaintiff's Application and to receive the Court's decision on it if indeed the Court was ready to deliver it.
[9] In reply to that, Learned Counsel for the Defendant said that, if the Court were of the view that the proposed undertaking was fair and reasonable, then the Court could order it instead of making a decision on the Plaintiff's
