A trademark must be proven well-known through substantial evidence of recognition, use, and enforcement; claims for passing off and revocation require proof of goodwill, misrepresentation, and damage.

(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-use under s 46 of the Trademarks Act, 2019 ("the Act");

(iv) To invalidate the Defendant's Mark under s 47 of the Act; and

(v) For damages (including aggravated and exemplary damages) with interest and costs.

[5] The Defendant disputes all of Plaintiff's claims, and further contends that they should all be dismissed on the grounds of limitation, delay and/or laches.

The Issues

[6] Even though between them the Plaintiff and the Defendant agreed to eight issues that can be further reduced to the following six, in the order in which I propose to deal with them in this Judgment:

(1) Whether the Plaintiff's Marks are well-known trademarks under of the Act and are therefore entitled to the protections thereunder;

(2) Whether the Defendant has committed passing off;

(3) Whether the Defendant's Mark should be revoked for non-use under s 46 of the Act;

(4) Whether the Defendant's Mark should be invalidated under s 47 of the Act;

(5) Whether the Plaintiff's claims should be dismissed on the grounds of limitation, delay and/or laches; and

(6) What relief (if any) should be ordered?

Issue