Zakaria Mohd. Yatim J:

In this suit the first plaintiff claims that it is the registered proprieter of trademarks, ayam brand label in respect of its canned fish product in Malaysia. The second plaintiff is a permitted and licensed user of the said trademarks in Malaysia. The plaintiffs are alleging that the defendant has been infringing the said trademarks 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 trademarks 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 trademarks 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" trademark 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 trademarks and the getup in relation of the said goods and have caused the said trademarks 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 trademarks 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 trademarks but denied that the registration of the said trademarks was valid and subsisting. The defendant contends that it had been authorised by Mitsui & Company Ltd of Japan to use the "Botan Brand" trademarks in Malaysia in respect of canned fish. Mitsui & Company are the registered proprietors of the following trademarks in Malaysia, namely, (i) M/ 68789 in class 29 Botan Brand label and (ii) S/19089 in class 29 Botan Brand label. These trademarks are at all material times have been valid and subsisting. According to the defendant, the shapes, sizes and colour arrangements of the "Ayam Brand" and "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 trademark and get-up of the plaintiffs' "Ayam Brand" and that of the defendant's 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 plaintiff's trademarks or passed off their fish product as and for the canned fish product of the plaintiffs. The defendant claims prior user 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 plaintiff 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 other fish. The trademark of the company's