A mere licensee does not acquire proprietary rights or goodwill over a trademark; hence, only the licensor retains ownership rights.

Introduction

[1] This appeal is against the decision of the High Court dated 21 August 2017 in respect of the consolidated actions consisting of two (2) separate High Court suits, namely WA-22IP-5-02/2016 ("Passing Off Suit") and WA- 22IP-31-06/2016 ("Expungement Suit").

[2] This appeal is brought by Appraisal Property Management Sdn Bhd ("APM"), JLL Property Services (Malaysia) Sdn Bhd ("JLLP") and Jones Lang Wootton Ltd ("JLWL"). They are the respective defendants in the Passing Off Suit initiated by the plaintiff, Singham Sulaiman Sdn Bhd (SSSB).

[3] In the Passing Off Suit, APM and JLLP's appeal is against the learned Judicial Commissioner's ("JC") decision to allow SSSB's claim for passing off under Jones Lang Wootton and JLW Marks. SSSB has been using the following trade marks ("JLW Marks") in its real estate business:

(i) "Jones Lang Wootton" name;

(ii) Jones Lang Wootton composite mark has been registered by SSSB in the Register of Trade Marks (Register) for services in Class 36 (Jones Lang Wootton Registered Trade Mark);

(iii) "Jones Lang" name; and

(iv) "JLW" mark.

[4] JLLP's appeal is also against the dismissal of its counterclaim against SSSB for passing off, on the basis that SSSB had continued to associate itself with "Jones Lang LaSalle" after January 2013 when such association had ceased to exist.

[5] In the Expungement Suit, JLWL is appealing against the High Court decision to dismiss its claim that SSSB had wrongfully registered the name and style "Jones Lang Wootton". In the High Court, cost of RM315,789.23 was ordered against the appellants.

[6] There is a cross-appeal by SSSB against the High Court's refusal to grant an injunction restraining APM and JLLP from passing off their services under the name of "JLL" and to award fees for two Counsel.

[7] The appeal (No W-02(IPCv)(W)-2580-12/2017), was first heard by this Court on 23 August 2018, which had allowed the appellants' appeal with costs of RM50,000.00, set aside the decision of the learned JC and ordered a re-trial of the consolidated suits before another judge.

[8] After obtaining leave to appeal, SSSB appealed to the Federal Court against the decision of this Court. On 1 September 2020 the Federal Court allowed SSSB's appeal with cost of RM75,000.00 (for both the Federal Court and Court of Appeal costs) and remitted the appeal back to this Court to be heard afresh before a new panel based on the grounds set out in the amended Memorandum of Appeal dated 28 March 2019.

[9] Having considered the Appeal Records and the submissions of the parties, we have made the following orders in our Broad Grounds of Decision:

(i) In the Passing Off Suit, the appellants' appeal is allowed and the decision of the learned JC that APM and JLLP have committed the tort of passing off with regards to Jones Lang Wootton and JLW Marks is set aside;

(ii) SSSB's cross-appeal is dismissed;

(iii) The decision of the learned Judge in dismissing JLLP's counterclaim is set aside and JLLP's counterclaim against SSSB for passing off, on the basis that SSSB had continued to associate itself with "Jones Lang LaSalle" is allowed; and

(iv) On the Expungement Suit, we allow JLWL's appeal and we set aside the decision of the learned JC and ordered that SSSB's registration of the name and style "Jones Lang Wootton" be expunged from the Trade Marks Registry.

The Salient Facts

[10] SSSB is a company incorporated in Malaysia and is a real estate consultant in Malaysia, offering services such as real estate agency, property and asset management, valuation advisory and consultancy etc.

[11] APM deals with property or facilities management services, whilst JLLP is a real estate agency. Both APM and JLLP are par