JUDGMENT

Ramly Ali J:

Introduction

[1] In this case, Aspect Synergy Sdn Bhd (ASSB) has applied for a declaration of non-infringement of trademark via its originating summons and Banyan Tree Holding Ltd. (BTHL) had counterclaimed against ASSB and OSK Property Holding Bhd (OSK Property) for passing off and trade mark infringement due to the use of ASSB's mark, 'Taman Sri Banyan, Country Heights and device ('ASSB's mark'). BTHL contended that ASSB's mark is similar to BTHL's mark, 'Banyan Tree & device' ('BTHL's mark').

The Parties

[2] ASSB and OSK Property Holdings Berhad are Malaysian companies. They are part of the OSK Group, a reputable group of companies in Malaysia. ASSB's nature of business is that of residential property development.

[3] BTHL is a Singapore company and its business is mainly management and development of resorts, hotels and spa. It does not have any resorts in Malaysia.

ASSB's Case

[4] ASSB is a wholly owned subsidiary of OSK Property, a public company listed on the Main Board of Bursa Malaysia. OSK Property is in turn the property arm and a direct subsidiary of OSK Holdings Berhad ('OSK Holdings'), which is also a public company listed on the Main Board of Bursa Malaysia since May 1991.

[5] OSK Property and its subsidiaries ('OSK Property Group') are reputable property developers whose name is no stranger in the property sector in Malaysia. To date, OSK Property Group's development projects located across Malaysia have a gross development value of over RM3 billion as can be seen from ASSB's listing of the gross development value of various projects under the OSK Property Group.

[6] Some of the OSK Property Group's major projects include, inter alia , the following up-market residential developments namely:

(a) Bandar Puteri Jaya & Hill Park in Sungai Petani, Kedah, with a gross development value of over RM2 billion ('Bandar Puteri Jaya Project');

(b) Mon't Jade in Seremban, with a gross development value of over RM180 million ('Mon't Jade Project');

(c) Seremban 3 in Seremban, with a gross development value of over RM46 million ('Seremban 3 Project');

(d) Taman Sri Banyan in Country Heights, Kajang, with a gross development value of over RM42 million.

(e) The OSK Property Group is also involved in the Sutera Damansara project to develop 100 acres of land in Sungai Buloh and they have recently acquired the Atria Shopping Centre for a purchase consideration of approximately RM75 million and also a piece of prime land in Jalan Yap Kwan Seng which is to be used for commercial purpose.

[7] In order to reflect the philosophy of building beautiful homes that blends into the natural environment, OSK Property Group has always used the names of trees and plants in almost all their developments, inter alia , such as follows:

(a) the use of pine trees in the mark for the Mon't Jade Project. The houses for the Mon't Jade Project bear names like "Tecoma", "Mahogany", "Alstonia" and "Gardenia";

(b) the houses for the Bandar Puteri Jaya Project bear names like "Sunflower", "Hibiscus", "Daffodil" and "Peony";

(c) the semi-detached house in the Seremban 3 Project is named "Lavender".

[8] The annual turnover of OSK Property Group for the period between 2003 to 2006 are as follows:

(a) 2003 - RM108,348,000;

(b) 2004 - RM74,314,000;

(c) 2005 - RM73,007,000;

(d) 2006 - RM68,917,134.

[9] The OSK Property Group has also won numerous awards including the following:

(a) In 2003, OSK Properties Sdn Bhd, won the state-organised landscaping competition in Kedah for the Bandar Puteri Jaya Project;

(b) OSK Properties Sdn Bhd was also listed in the Malaysia Book of Records for making the longest millipede lantern in April 2007.

[10] ASSB first purchased 5.4 acres of freehold land at Country Heights, Kajang sometime in the year 2004. ASSB then commence preparation for a high-end residential development project, which is a low-density gated community of luxurious homes located in a premier location - Country Heights, Kajang. The project comprises 10 units of semi-