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2020 MarsdenLR 727
COURT OF APPEAL PUTRAJAYA
SKYWORLD DEVELOPMENT SDN BHD & ANOR – Appellant
Versus
SKYWORLD HOLDINGS SDN BHD & ORS – Respondent
[Civil Appeal No: W-02(IPCV)(W)-383-02-2019]
Trademark infringement occurs if a mark is likely to deceive, focusing on similarity in context of business activities and public confusion, regardless of actual market overlap.
Headnote:(A) Trade Marks Act 1976 – Section 38 – The appeal involves claims of trademark infringement, passing off, and unlawful interference. The plaintiffs are the registered owners of the 'SkyWorld' trademark, asserting that the defendants' use of similar names has caused confusion. The learned judge denied the infringement claim, stating the trademarks were not similar enough, relying on previous cases like Consitex SA v. TCL Marketing and Yong Teng Hing. (Paras 1-112)
(B)
Trade Mark Infringement – The court found errors in the lower court's reasoning related to the likelihood of confusion. Evidence showed that 'Skyworld' is aurally and visually similar, warranting a reevaluation of damage. The test established dictates that the registration does not suffice to withstand infringing claims. (Paras 1-112)
(C)
Passing Off – The court clarified that mere proof of existence and promotion of the trademark could establish goodwill without necessitating widespread recognition. The plaintiffs sufficiently demonstrated usage and promotion to ensure protection. (Paras 1-112)
(D)
Final Decision – Plaintiffs' appeal was allowed, and the original decision was overturned, reinstating claims with costs awarded to the plaintiffs. (Paras 1-112)
Introduction
[1] This is the appellants/plaintiffs appeal against the whole of the High Courts decision which dismissed the appellants/plaintiffs claims against the respondents/defendants for trade mark infringement, passing off and unlawful interference with trade.
[2] The parties shall hereinafter be referred to as they were at the High Court.
[3] The plaintiffs are the registered owner of the SkyWorld Registered Trade Marks in Class 37 as follows:
[4] The plaintiffs claim that the word "SkyWorld" is a prominent feature of the SkyWorld Registered Trade Marks. In addition, the word "SkyWorld" forms part of the plaintiffs company names and started using the "SkyWorld" Marks in 2014.
[5] The 1st to 4th defendants (Corporate Defendants) were all incorporated in 2017. The Corporate Defendants have been using the marks/words "Skyworld" and "Sky World" in relation to their company names, domain name as well as for their purported "Sky World City Sabah" project.
[6] The plaintiffs brought an action against the Corporate Defendants for using the marks/words "Skyworld" and "Sky World" in relation to their company names, domain name as well as for their purported "Sky World City Sabah" project. Hence, the defendants corporate names had infringed the plaintiffs registered trade marks "SkyWorld". In addition, plaintiffs claim against the defendants for passing off the plaintiffs business, products and/or services by the use in the course of trade of the SkyWorld Registered Trade Marks, Names, Website and Domain Name and unlawful interference with trade.
[7] At the High Court, the plaintiffs case is essentially that the defendants corporate names and website domain name are infringing in that they so nearly resemble the plaintiffs Registered Trade Marks as are likely to deceive or cause confusion in the course of the defendants carrying out their business of developing the Sky World City project. The learned judge had dealt with the plaintiffs claim in a full trial and delivered his decision in favour of the defendants. The grounds of judgment are found at pp 30 to 88 in Rekod Rayuan (Jilid 1-Bahagian A).
Decision Of The High Court
[8] The issue in this case is whether the defendants have used the plaintiffs trade marks in the course of trade without consent and the unlawful usage of the trade marks owned by the plaintiffs has caused deception or confusion among the prospective customers. It is the plaintiffs case that the defendants corporate names and website domain name are infringing in that they so nearly resemble the plaintiffs Registered Trade Marks as are likely to deceive or cause confusion in the course of the defendants carrying out their business of developing the Sky World City project.
[9] The learned judge ascertained the deception or confusion of trade marks based on the case of Consitex SA v. TCL Marketing Sdn Bhd , which had cited Parker Js decision in the well-known case of Re Pianotist Cos Application [1906] 23 RPC 774. The test in determining whether a mark is likely to deceive or cause confusion is to judge the two words by their look and by their sound and considered all the surrounding circumstances.
[10] The Federal Court case of Yong Teng Hing B/S Hong Kong Trading Co & Anor v. Walton International Limited, [2012] 6 MLJ 609 held that it is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source. Further, the more well-known or unusual a trade mark, the more likely is that consumers might be confused into believing that there is a trade connection between goods or services bearing the same or a similar mark.
[11] Further, the plaintiffs Registered Trade Marks are composite marks and one of them is a stylish verbal mark visually comprising of the word SkyWorld (specifically with the letters "S" and "W" spelt in uppercase letter) with a stroke underneath the
