In this suit, the first plaintiff claims that it is the registered proprietor of the trade mark, Ayam Brand label, in respect of its canned fish product in Malaysia. The second plaintiff is a permitted and licensed user of the said trade mark in Malaysia. The plaintiffs are alleging that the defendant has been infringing the said trade marks and passing off its canned fish as, and for, the canned fish of the plaintiffs.

The first plaintiff is a limited company incorporated under the laws of the Republic of Singapore, with a place of business at No 33, Wallich Street, Singapore 2. The second plaintiff is a limited company incorporated in Malaysia, with its registered office at 468-11, Jalan Ipoh, Kuala Lumpur. The defendant is a limited company incorporated in Malaysia, with its registered office at No 20-1, Jalan Pinggir, Kuala Lumpur, and a place of business at No 10, Jalan SS 13/3F Subang Jaya, Selangor.

The first plaintiff claims that it is the registered proprietor or applicant for registration of the following trade marks in Malaysia:

(a) M/73818 in class 29 Ayam Brand label (tall tin);

(b) M/73819 in class 29 Ayam Brand label (oval tin) (pending

registration); and

(c) M/73821 in class 29 Ayam Brand label (medium size tin).

The second plaintiff claims that it is the licensed user of the said trade marks in Malaysia in respect of mackerel (the said goods). According to the first plaintiff, its predecessors in title had been distributing the said goods from as early as 1892. In 1940, the first plaintiff registered its Ayam Brand trade mark in Malaysia under trademark registration No M/4488. Since 1960, the second plaintiff had been distributing the said goods in Malaysia and elsewhere. The plaintiffs contend that they have acquired a very substantial reputation and goodwill in Malaysia in respect of the said trade marks and the get-up in relation to the said goods and have caused the said trade marks to become associated or identified with a referable to themselves and have acquired a joint property right to the exclusion of others. The plaintiffs allege that the defendant had been infringing the said trade marks and passing off its canned fish as, and for, the canned fish of the plaintiff.

The defendant admits that the name of the first defendant appeared on the three registered trade marks but denied that the registration of the said trade marks was valid and subsisting. The defendant contends that it had been authorized by Mitsui & Co Ltd of Japan to use the Botan Brand trade marks in Malaysia in respect of canned fish. Mitsui & Co are the registered proprietors of the following trade marks in Malaysia, namely, (i) M/68789 in class 29 Botan Brand label; and (ii) S/19089 in class 29 Botan Brand label. These trade marks, at all material times, have been valid and subsisting. According to the defendant, the shapes, sizes and colour arrangements of the Ayam Brand & Botan Brand are similar but the shapes, sizes and colour arrangement are common to the trade in question. The defendant, however, maintains that there are distinctive differences in the trade mark and get-up of the plaintiffs Ayam Brand and that of the defendants Botan Brand product. By reason of the material differences, there is no likelihood of any confusing similarity or resemblance in the get-ups of the products in question, and as such, the defendant denies that it has infringed the plaintiffs trade marks or passed off their fish product as and for the canned fish product of the plaintiffs. The defendant claims prior use of the red and yellow label. The defendant also contends that the red and yellow label was common to the trade.

The evidence adduced by the plaintiffs is that, the first plaintiff was incorporated in Singapore in 1892. The company was founded by a Frenchman, Mr Alfred Clouet, who had served in the French Foreign Legion. The main product of the company was canned sardine and o