Plaintiffs can sue for passing off if they establish goodwill in their marks, regardless of licensing agreements.

A. Introduction

[1] The plaintiff company (plaintiff) promotes and sells "slurry pumps" in Malaysia, Singapore and Brunei with the "WARMAL" mark (WARMAL Pumps). A copy of WARMAL mark is annexed to this judgment as "Annexure A".

[2] The defendant company (defendant) sells slurry pumps with the "WALMAR" mark (WALMAR Pumps). A copy of WALMAR mark is annexed to this judgment as "Annexure B".

[3] The plaintiff has filed this action against the defendant (This Suit) based on the following three causes of action:

(1) the defendant has committed a tort of passing off by:

(a) passing off WALMAR Pumps as WARMAL Pumps (passing off WARMAL mark); and

(b) passing off the defendants business as that of the plaintiffs (passing off the plaintiffs corporate name);

(2) the defendant has committed a tort of unlawful interference with the plaintiffs business; and

(3) WARMAL mark is a well-known trade mark which entitles the plaintiff to injunctive relief under s 70B(1) of the Trade Marks Act 1976 ( TMA ) against the defendant.

B. Issues

[4] The following questions arise in this case:

(1) whether the plaintiff has the locus standi to sue for the tort of passing off regarding WARMAL Pumps when the plaintiff is only an exclusive manufacturing licensee and sole agent for "WARMAN" pumps (WARMAN Pumps) in Malaysia, Singapore and Brunei;

(2) if the plaintiff has the locus standi to commence This Suit for the tort of passing off, has the defendant committed such a tort?;

(3) whether the defendant has committed the tort of unlawful interference with the plaintiffs business;

(4) if the defendant has committed the tort of passing off and/or the tort of unlawful interference with the plaintiffs business, whether the defendant can rely on the following defences

(a) the defendant only sells "OEM" (Original Equipment Manufacturer) pumps; and/or

(b) disclaimers in the defendants website.

I am not able to find a prior Malaysian case which has decided on the above two defences; and

(5) is WARMAL mark a well-known trade mark for the purpose of the enforcement of s 70B(1) TMA ?

C. Plaintiffs Case

[5] The plaintiffs Managing Director, Mr Chua Chun Hock (SP1), gave the following evidence, among others:

(1) the plaintiff was incorporated on 30 April 1987. The plaintiff sells WARMAL Pumps;

(2) the plaintiff has been appointed by Warman International Ltd (Warman) to be its exclusive manufacturing licensee and sole agent for WARMAN Pumps in Malaysia, Singapore and Brunei. SP1 clarified during re-examination that submersible and light duty slurry WARMAL Pumps are different from heavy duty slurry WARMAN Pumps. According to SP1, Warman subsequently changed its name to Weir Minerals Australia Ltd. (Weir);

(3) on 11 August 2015 the plaintiff had applied to the Registrar of Trade Marks (Registrar) to register WARMAL mark:

(a) for goods in Class 7 (pumps, accessories and spare parts for pumps); and

(b) for services in Class 37 (installation, assembly, repair, cleaning, servicing, replacement and maintenance of spare parts for pumps) (Plaintiffs Trade Mark Applications);

(4) the defendant was incorporated on 10 January 2013. On 15 May 2013, the defendant had applied to the Registrar to register

WALMAR mark for goods in Class7 (defendants Trade Mark Application). The plaintiff found out about the defendants Trade Mark Application when the Registrar objected to the plaintiffs Trade Mark Applications because of the likelihood of confusion between WARMAL and WALMAR marks;

(5) the defendant sells WALMAR Pumps which actually confuses the public to believe that WALMAR Pumps (sold by the defendant) are WARMAL Pumps (sold by the plaintiff) and the defendant is associated with the plaintiff. Hence, the filing of This Suit; and

(6) the plaintiffs solicitors had