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2021 MarsdenLR 2500
FEDERAL COURT PUTRAJAYA
ORTUS EXPERT WHITE SDN BHD – Appellant
Versus
NOR YANNI ADOM & ANOR – Respondent
[Civil Appeal No: 02(F)-12-02-2020(W)]
In trademark infringement cases, essential features of the trademark must be assessed alongside disclaimed components to determine likelihood of consumer confusion; mere disclaimed terms do not invalidate claims of similarity and deception.
Headnote:(A) Trade Marks Act 1976 – Section 38 – Appeal in trademark infringement and passing off cases – Plaintiff alleged infringement based on similarity between 'Royal Expert White' and 'Real Expert White' – Court must consider essential features of trade mark and potential for confusion – Declarations made with respect to disclaimed words and the impact on likelihood of confusion must be expressly evaluated – The court ruled that disclaimed words cannot solely dictate confusion, but should be considered with overall trademark impression. (Paras 49, 76, 108)
(B) Passing Off – Elements of passing off including goodwill, misrepresentation, and damage established by evidence of consumer confusion between both products – Positive findings of misrepresentation bolstered by consumer testimonials regarding confusion – Court emphasized that loss of goodwill cannot solely stem from negative association unrelated to the plaintiff's brand. (Paras 115-126)
(C) Appeal Outcome – The Federal Court allowed the plaintiff's appeal, reinstating the High Court's decision that the plaintiff successfully established the claims for both trademark infringement and passing off. (Paras 149)
Introduction
[1] The appellant, Ortus Expert White Sdn Bhd was granted leave to appeal to the Federal Court on the following questions of law:
(a) Whether in a trade mark infringement and passing off action, the Court ought to consider the disclaimed words in juxtaposition or in combination with the essential features in the registered trade mark for the purpose of deciding whether there is a likelihood of confusion and/or deception?;
(b) In a tort of passing off case, can the goodwill of a business be destroyed completely by mere publication (s) of documents that make no specific reference to the business owner?
[2] In this judgment we shall refer to the parties as they were before the High Court.
[3] The plaintiff commenced an action against the defendants in the High Court premised on three causes of action, namely, infringement of trade mark of the plaintiff, breach of dealership agreement and the tort of passing off.
[4] After a full trial the learned High Court Judge decided in favour of the plaintiff on all the three causes of actions. However, upon appeal to the Court of Appeal, the decision was reversed in favour of the defendants with costs of RM40,000 to be paid to the defendants. Hence, the appeal by the plaintiff before us on the aforesaid questions of law.
Background
[5] The plaintiff is a distributing company for "Royal Expert" beauty products. These products bear a "Royal Expert White" trade mark which has been registered in the Register of Trade Marks under the Trade Marks Act 1976 ( TMA ) for goods in Class 3 (inter alia, creams for wrinkles and skin whitening). In that regard, the plaintiff is the owner of the registered trade mark which is set out below:
[6] The 1st defendant (D1) is the wife of the 2nd defendant (D2).
[7] D1 entered into a dealership agreement (Agreement) dated 9 September 2019 with the plaintiff. D2 is the sole proprietor of Rafica Resources (RR) and has distributed (together with D1) the plaintiff's products.
[8] D1 had sold skin whitening cream bearing the trade mark "Real Expert White" as well as packaging which is allegedly similar to the plaintiff's products. The defendants' products "Real Expert White" cream bears the mark as shown below:
[9] As a result, the plaintiff commenced an action against the defendants for the following causes of action:
(i) breach of the Agreement, namely cls 7.4 and 14.4;
(ii) trade mark infringement of the plaintiff's trade mark under s 38(1) (a) of the TMA when the defendants have sold "Real Expert White" products; and
(iii) passing-off "Real Expert White" products as the plaintiff's products.
[10] The plaintiff claims against the defendants for, inter alia:
(i) general damages for losses incurred;
(ii) an order for the defendants to give an account of all profits made by the defendants by manufacturing and/or distributing and/or selling whitening cream under the brand "Real Expert White"; and
(iii) an injunction to restrain the defendants or their agents from manufacturing and/or distributing and/or selling whitening cream under the brand "Real Expert White".
Proceedings At The High Court
[11] The case went for full trial in the High Court and at the close of the plaintiff's case, the defendants elected not to adduce any oral evidence.
[12] At the end of the trial, the High Court allowed the plaintiff's claim. The defendants were held liable on all the three causes of actions and assessment of damages was ordered accordingly.
[13] The issues addressed before the High Court were:
(i) What is the effect when the defendants elected not to adduce oral evidence in this case;
(ii) Whether the defendants have breached the Agreement by selling Real Expert White Products;
(iii) Whether the defendants could rely on a press release from the Ministry of Health pertaining to the application of reg 18A of the Control of Drugs and Cosmetics Regulations 1984 (CDCR 1984);
(iv) Whether the defendants infringed the plaintiff's registered trade mark under s 38(1)(a)
