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2024 MarsdenLR 3240
HIGH COURT MALAYA KUALA LUMPUR
SOCIETE JAS HENNESY & CO – Appellant
Versus
MSZ GOLDEN SDN BHD & ANOR – Respondent
[Civil Suit No: WA-22IP-12-01/2024]
Plaintiff successfully established trademark infringement and passing off against the 1st Defendant, warranting summary judgment, while the 2nd Defendant was not found personally liable.
Headnote:(A) Trademarks Act 2019 - Section 54 - Summary judgment for trademark infringement, passing off, and unlawful interference with trade - Plaintiff established prima facie case for infringement and passing off against 1st Defendant, who failed to provide any defense - 2nd Defendant not liable due to lack of evidence of personal involvement. (Paras 15, 17, 23, 36, 42)
(B) Summary Judgment - Requirements for summary judgment under O 14 r 1 - Plaintiff fulfilled all necessary conditions, shifting burden to Defendant to show why judgment should not be granted. (Paras 11, 13)
(C) Passing Off - Plaintiff must establish goodwill, misrepresentation by Defendant, and likelihood of damage - Plaintiff demonstrated all elements successfully. (Paras 24, 30, 36)
(D) Unlawful Interference - Established once trademark infringement and passing off are proven - 1st Defendant found liable for unlawful interference with trade. (Paras 37, 40)
Facts of the case:
Plaintiff, a French company, filed for summary judgment against Defendants for trademark infringement and passing off after two raids uncovered counterfeit products resembling Plaintiff's cognac. (Paras 1-9)
Findings of Court:
Plaintiff entitled to summary judgment against 1st Defendant for trademark infringement and passing off; 2nd Defendant not liable. (Paras 42-43)
Issues: Whether Plaintiff established a case for trademark infringement, passing off, and unlawful interference with trade. (Paras 15, 24, 37)
Ratio Decidendi: Court ruled that the Plaintiff met all requirements for summary judgment, and the 1st Defendant's failure to challenge the claims warranted judgment in favor of the Plaintiff. (Paras 17, 23, 42)
Result: Plaintiff's application allowed against 1st Defendant; dismissed against 2nd Defendant.
JUDGMENT
Introduction
[1] On 29 January 2024, the Plaintiff filed this action against the Defendants for trademark infringement, passing off, and unlawful interference with trade, and now applies for summary judgment of those claims ("Plaintiff's Application"). This Judgment is on the Plaintiff's Application.
Salient Facts
[2] The Plaintiff is a company incorporated in France and was founded by Richard Hennessy in 1875 in Cognac, France. It has at all material times been involved in the business of manufacturing, distilling, bottling, exporting, distributing, supplying, selling and/or offering for sale a wide range of alcoholic beverages. The product at the heart of this action is its cognac (brandy), sold and marketed under the brand name Hennessy Cognac VSOP ("Plaintiff's Product"). The Plaintiff's Product is exclusively manufactured, distilled and bottled in Cognac, France and not anywhere else in the world. From Cognac, the Plaintiff's Product is exported, distributed, supplied, sold and/or offered for sale to the rest of the world, including Malaysia. On or around 1988, the Plaintiff and United Distillers Pic formed a joint-venture company in Malaysia now named Moet Hennessy Diageo Malaysia Sdn Bhd ("MHDM") to import and/or distribute the Plaintiff's Product in Malaysia.
[3] In the course of its business, the Plaintiff since 2002 and over the years since then registered fourteen trademarks in Malaysia (collectively, "Plaintiff's Trademarks"). They all appear on the Plaintiff's Product.
[4] In addition, affixed to the Plaintiff's Product are various get-up which is distinct to and identifiable with the Plaintiff's Trademark and the Plaintiff's Product (collectively, "Plaintiffs Get-Up").
[5] The single channel of import, supply and distribution of the Plaintiff's Product to and within Malaysia through MHDM, the Plaintiff Trademarks, and the Plaintiff's Get-Up collectively enable the Plaintiff to monitor, supervise and manage quality control over the Plaintiff's Product sold within Malaysia and to further ensure that only genuine Plaintiff's Product is actually imported, supplied and distributed.
[6] The 1st Defendant was incorporated in 2014, has a registered address in Jalan Ipoh, Kuala Lumpur and a business address in Taman Desa Kuala Lumpur ("Taman Desa Premise") and carries on business, inter alia, as proprietors, owners, operators and managers of restaurants, food outlets, stores, and fast food. The 2nd Defendant is a director of the 1st Defendant, but not a shareholder. The majority shareholder of the 1st Defendant is one Mohammad Ashraf Bin Mohammad Shameer who holds 70% of the shares in the 1st Defendant. He is also a director. The importance of this little snippet of information will become apparent later in this judgment.
[7] On 16 January 2020, the Enforcement Division of the Ministry of the Domestic Trade and Cost of Living ("the Authorities") acting on the Plaintiff's complaint of trademark infringement conducted a raid on the Taman Desa Premises, and seized 3 bottles of liquor resembling the Plaintiff's Product ("Seized Product"). Upon examination of the Seized Product, the Plaintiff confirmed and verified that all of it did not originate from and were not manufactured by the Plaintiff and were therefore counterfeit product. On the demand of the Plaintiff (through its Solicitors), the 1st Defendant provided to the Plaintiff a Letter of Undertaking dated 18 March 2022 ("Letter of Undertaking") signed by the 2nd Defendant, in the following terms, namely:
[8] Despite the Letter of Undertaking, on 7 November 2023 the Authorities conducted a second raid on the Taman Desa Premises, and this time seized 18 bottles of liquor resembling the Plaintiff's Product ("Further Seized Product"), which the Plaintiff again examined and again confirmed and verified that all of it did not originate from and were not manufactured by the Plaintiff and were therefore counterfeit product.
[9] On 29 January 2024, the Plaintiff
