Ramly Ali J:

Introduction: Summary Of The Plaintiff's Claim

[1] The plaintiff's claim against the defendant is based on three causes of action, namely:

(a) trade mark infringement;

(b) passing off in respect of goods; and

(c) passing off in respect of the business.

[2] The plaintiff's trade marks and trade names are "Ermenegildo Zegna" and "Zegna" whilst the defendant's trade mark and trade name in "Emmer Zecna".

Trade Mark Infringement

[3] In respect of trade mark infringement, the plaintiff's contentions are as follows:

The plaintiff is the registered proprietor in Malaysia of the trade marks "Ermenegildo Zegna" and "Zegna" in Class 25 in respect of clothing, boots, shoes and slippers pursuant to Trade Mark Registration Nos. 83/01273 and 83/01275.

The defendant uses the trade mark "Emmer Zecna" in respect of menswear.

It is the plaintiff's contention that the trade mark "Emmer Zecna" is confusingly similar to the plaintiff's registered trade marks "Ermenegildo Zegna" and "Zegna" and thus amounts to an infringement of the plaintiff's Trade Mark Registration Nos. 83/01273 and 83/01275 for "Zegna" and "Ermenegildo Zegna".

Passing Off - Goods

[4] In respect of passing off in