(After Trial)

Azlan Sulaiman JC:

Introduction

[1] Between 1963 and 2018, the Plaintiff successfully registered 24 trademarks (collectively, "the Plaintiff's Marks") in Malaysia in Classes 7, 9, 10, 12, 14, 16, 17, 18, 20, 21, 24 and 28. Seven of the Plaintiff's Marks are word marks consisting of the word "PIRELLI" ("the Plaintiff's Word Mark"), and other 17 are stylized word marks in which the word "Pirelli" has an elongated letter "P" over the letters "irelli", that looks like this ("the Plaintiff's Stylized Mark"):

[2] In these 17 Marks, the word "PIRELLI" is either in black print against a white-coloured background, or in red print against a yellow-coloured background.

[3] On 11 April 1986, the Defendant's trademark in Trademark Registration No 86001425 in Class 25, for articles of clothing, boots, shoes, slippers and socks was registered ("the Defendant's Mark"). It looks like this:

[4] The Plaintiff's claim against the Defendant here can be summarized as follows:

(i) For a declaration that the Plaintiff's trademarks are well-known marks and the other consequential relief that comes with being a well-known mark;

(ii) For passing off;

(iii) To revoke the Defendant's Mark for non-