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 goods, the plaintiff's contentions are as follows:

The plaintiff has since 1989 extensively used the trade marks "Ermenegildo Zegna" and "Zegna" in Malaysia in respect of menswear. By reason of extensive use and promotion of the said trade marks in respect of menswear, the plaintiff has acquired substantial goodwill in Malaysia in respect of its menswear as identified by the plaintiff's said trade marks. The plaintiff's trade marks are distinctive of the plaintiff in Malaysia and the plaintiff is the common law proprietor of the same in Malaysia.

The plaintiff contends that the defendant's trade mark "Emmer Zecna" is confusingly similar to the plaintiff's trade mark "Ermenegildo Zegna" and "Zegna" and its use by the defendant in respect of menswear amounts to a misrepresentation to the trade and public that the defendant's menswear is that of the plaintiff's or is in some way associated with the plaintiff.

Passing Off - The Business

[5] In respect of passing off in the business, the plaintiff's contentions are as follows:

The plaintiff has since 1989 used the trade names "Ermenegildo Zegna" and/or "Zegna" in respect of its boutiques in Malaysia. By reason of its extensive use in respect of its boutiques, the plaintiff claims that it has acquired substantial goodwill in Malaysia in respect of its business as identified by the plaintiff's said trade names. The plaintiff further claims that the plaintiff's said trade names are distinctive of the plaintiff in Malaysia and the plaintiff is the common law proprietor of the same in Malaysia.

The defendant uses the trade name "Emmer Zecna" in respect of its outlets in Malaysia which trade name is confusingly similar to the plaintiff's trade names.

By reason of the use of a confusingly similar trade name, the defendant has or is likely to misrepresent to the trade and the public in Malaysia that the defendant's outlets and business are that of the plaintiff or are associated with the plaintiff.

The Plaintiff

[6] The plaintiff is a member of the Ermenegildo Zegna group (the "Zegna Group") which is a world leader in the design, manufacture and marketing on a world-wide basis of fine menswear and other exclusive clothing of premium quality (the "Zegna Menswear").

The Defendant

[7] The defendant is a private limited company, incorporated in Malaysia on 13 September 1996 and carries on the business of marketing garments.

Factual Background

[8] The plaintiff is the registered proprietor of the trade marks "Zegna" (Trade Mark Registration No. 83/01273) and "Ermenegildo Zegna" (Trade Mark Registration No. 83/01275) in Malaysia in Class 25 in respect of clothing, boots, shoes and slippers. The plaintiff's Trade Mark Registrations are valid and subsisting.

[9] The plaintiff has since the early 1960s designed, manufact