Trademark infringement occurs when a registered mark is used without consent, validating the owner's exclusive rights under the Trademarks Act.

JUDGMENT

Quay Chew Soon J:

Introduction

[1] The Plaintiffs ("P") action is for trademark infringement by the Defendant ("D"). In turn, D filed a counterclaim for a declaration that P is not the lawful owner of the registered trademark due to fraudulent registration.

[2] After a full trial, I allowed P's claim. I dismissed D's counterclaim. Here are the grounds of my judgment.

Background Facts

[3] The principal business activity of P is the operation of a restaurant business. The venture in question here is a steamboat business featuring fish cooked in a wooden barrel.

[4] It is an agreed fact that P is the registered proprietor in Malaysia of the trademark shown below ("Mark"):

[5] The following particulars vis-a-vis the Mark are also agreed:

(a) The Chinese characters (read as "Zhang Ji") bear no meaning. Whereas the Chinese characters (read as "Mu Tong Yu") means "wooden barrel fish"; and

(b) The Mark was registered on 18 May 2021, and is valid and subsisting in Malaysia until 18 May 2031.

[6] The Mark is registered under Trademark Class 43. This class includes services provided by persons or establishments whose aim is to prepare food and drinks for consumption.

The Plaintiff's Case

[7] P's case is this. Pursuant to s 48 of the Trademarks Act 2019 ("Trademarks Act"), P has the exclusive right to use the Mark. As well as the right to prevent other unauthorised persons from using the Mark, or any mark similar to it in relation to restaurant, bar and catering services.

[8] P's complaint is that D has infringed the Mark, by using the Mark in the course of trade. P invokes s 56 of the Trademarks Act, ie action for infringement.

[9] In the statement of claim, P seeks the following reliefs:

(a) a declaration reaffirming the status of P as the registered proprietor of the Mark, and the validity of the Mark;

(b) a declaration that the Mark has been infringed by D;

(c) a permanent injunction against D, to restrain D from infringing and using the Mark;

(d) an inquiry on damages or alternatively, at the option of P, an account for profit against D for all profits derived from the infringement of the Mark; and

(e) additional damages to be assessed for the infringement of the Mark.

The Defendant's Case

[10] D's case is this. The registration of the Mark by P is invalid and ought to be cancelled. The application for the registration of the Mark was made fraudulently. P had registered the Mark without the consent of the actual owner, a Chinese company known as Chengdu Xinzhangji Barrel Fish Catering Co Ltd ("China company").

[11] The China company is the owner of the following trademark registered in China:

[12] D claims that its barrel fish business was started in Malaysia through a business cooperation with the China company. It has a licence from the China company to use the Mark to sell barrel fish in Malaysia. It is an aggrieved person under the Trademarks Act.

[13] By way of the counterclaim, D seeks the following reliefs:

(a) a declaration that P is not the lawful owner of the Mark;

(b) a declaration that the registration of the Mark was obtained by P through fraud; and

(c) an order that the registration of the Mark be cancelled and be removed from the Trademark Register.

Issues To Be Determined

[14] The dispute between P and D is basically in relation to the use of the Mark by D in the barrel fish business. The principal issue is the validity or otherwise of the Mark registered by P. Related to that is whether D has infringed P's registered trademark.

[15] It is my finding that the registration of the Mark by P is valid. I further find that D has infringed P's registered trademark. Here are my reasons.

The Law

[16] The various acts which constitute infringement of a registered trademark is set out in s 54 of the Trademarks Act. It reads:

"54. Acts amounting to infringement of registered trademark

(1)A person infringes a registered trademark if he uses a sign which is identical with the trademark in relation to goods or services which are identical with those for