Low Hop Bing J:

Application

This is the plaintiff's application in encl. (4) for an interim injunction to restrain the first defendant and its two directors who are the second and the third defendants from using the Lam Soon Knife Label ("Lam Soon Knife Label"), and it is based on passing off and infringement of its copyright in the Lam Soon Knife Label, which comprises the following features:

(i) the knife device in a circle accompanied by the English word "knife" and the Bahasa Malaysia word "pisau" and a diagonal stripe;

(ii) the colour combination of red and yellow of the label; and

(iii) a statement as to the ingredients and other product information.

Brief Introduction

By way of a brief introduction, the plaintiff's claim in passing off is based on the goodwill it has generated and the artistic work in relation to the Lam Soon Knife Label while its claim in copyright is based on the ownership of the Lam Soon Knife Label by Lam Soon Oil and Soap Manufacturing Sdn. Bhd. which had assigned the same to the plaintiff by virtue of a deed dated 12 February 2001.

The defendants, on the other hand, dispute all the aforesaid claims of the plaintiff and contend that the first defendant is entitled to use a label which contains the above features, the entitlement being founded on the assignment by one Whang Tar Choung, the proprietor of the registered trade marks No. M/23682 with the caption "Big Knife Brand" and No. M/23670 with the caption "Sword Brand" (collectively referred to as the "aforesaid two trade marks") which comprise identical knife device encased in a circle ("Forward Supreme Knife Label"). The defendants claim that the said Whang Tar Choung had managed, owned and/or controlled the plaintiff for a long time and had also licensed the use of the knife device to the plaintiff and which use by the plaintiff accrued to the benefit of Whang Tar Choung qua licensor. The defendants claim that this benefit has been assigned by Whang Tar Choung to the first defendant.

Submission For Plaintiff

Relying on authorities Encik T. Siaw, assisted by Cik Fiona Bodipalar learned counsel for the plaintiff, submitted that:

1. the "Forward Supreme Knife Label" is closely similar, if not identical, to the "Lam Soon Knife Label";

2. there is tremendous brand recognition, goodwill and reputation in the "Lam Soon Knife Label", all of which are exclusively associated with or atrributed to the plaintiff;

3. the plaintiff has used the "Lam Soon Knife Label" exclusively since 1985;

4. the plaintiff has a pending application for the "Lam Soon Knife Label" as a trade mark;

5. the plaintiff is the owner of the copyright subsisting in the "Lam Soon Knife Label";

6. the defendants only commenced the use of the "Forward Supreme Knife Label" in or around November 2000 and in Sabah;

7. the whole of the "Lam Soon Knife Label" is a trade mark, and by way of a comparison of the "Lam Soon Knife Label" and the "Forward Supreme Knife Label" and viewed as a whole, the "Lam Soon Knife Label", and the aforesaid two trade marks are entirely different;

8. apart from the knife device, there are other elements in the "Lam Soon Knife Label" such as the colour scheme which is protected by copyright, the Chinese characters and the "pisau" mark which are the exclusive properties of the plaintiff;

9. the first defendant's unauthorised use of the "pisau" mark is in fact an infringement of the plaintiff's "pisau" mark;

10. in respect of copyright infringement, the "Forward Supreme Knife Label" copies each and every element of the "Lam Soon Knife Label" including the knife device, the placements of the various elements and the colour scheme;

11. the "Forward Supreme Knife Label" does not use the knife device found in the aforesaid two trade marks but uses the "Lam Soon Knife Label" and the differences in the knife devices include the direction and angle the knives point and the shape of the handles;

12. the plaintiff owns the registration for the Big Knife Brand for t