VC GEORGE J It is relevant to commence these grounds of decision by referring to some aspects of the background to and highlighting some of the positions taken by each side to the dispute.

I pause to note that in the course of writing this judgment, references will be made to kanji or Chinese characters which are pictographs used in writing both by the Japanese and the Chinese. References will also be made to what are known as Chinese dialects. I will, in due course, endeavour to explain these with reference to the context.

The first plaintiff, a Japanese corporation, is the registered proprietor in Malaysia under the Trade Marks Act 1976 of the trade marks referred to in para 3 of the statement of claim in respect of their product, a herbal medicinal wine manufactured in Japan using a secret recipe and sold there as well as in various other countries, including Malaysia, as a tonic. The second plaintiff had been the first plaintiffs exclusive distributor of their medicinal wine in Malaysia from 1975-1988. In 1988, the third plaintiff took over the exclusive distributorship of the first plaintiffs medicinal wine. The first plaintiffs said trade marks were first registered in Malaysia in 1977 and were at all material times, according to the plaintiffs, subsisting and of full force and effect. The plaintiffs contend that the essential features of each of the said trade marks include what they say is the name given to their wine written by a combination of three kanji characters (

), the romanized word Yomeishu (which is the phonetic sound in the Japanese language of the said combination of the three kanji characters), their logo that depicts a stylized flying dragon and the stylized depictions of hilltops, clouds and water. The plaintiffs contend that the combination of the said three kanji characters is a coined or invented word within the meaning of s 10(1)(c) of the 1976 Act.

The plaintiffs also claim that, as a result of the extensive promotion of their product in various parts of the world, and particularly in Malaysia -- which promotion in Malaysia was commenced in 1970 and is continuing, and was directed to Chinese members of the Malaysian public and in which promotion the name given to the wine was presented visually by the said combination of the three characters as such, and audibly in the pronunciation of the combination of the three kanji characters in one or more locally-used Chinese dialects including Mandarin -- the first plaintiff had by 1980 acquired such a substantial reputation in respect of the said combination of the three characters; which alleged essential feature of the plaintiffs trade marks the Malaysian Chinese consumer had come to so associate with the product of the first plaintiff that the said combination of the three characters in any event has acquired a secondary meaning and has been -- at least since 1980 -- distinctive of the first plaintiffs product and that thereby they have acquired intellectual property rights in the reputation and goodwill associated with the use of the combination of the three characters and in the phonetic pronunciation of it in the major Chinese dialects used in Malaysia, including the Mandarin pronunciation of it, which is Yang Ming Jiu.

The defendant is a Malaysian importer and wholesaler of Chinese patent drugs and medicated wines. The defendants major shareholder (in effect) and managing director is Mr Low Chee Lik.

In May 1981, the first and second plaintiffs learnt that the defendant was importing a medicinal wine from a mainland Chinese exporter called China National Native Produce and Animal By-Products Import and Export Corporation, Hubei Native Produce branch (hereinafter referred to as CNNP-H) which the defendant put into the Malaysian market. Prominently displayed in the get-up of this Chinese wine is what counsel for the defendant says is a description (and not the name) of the wine written in Chinese by a combination of five