Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2023 MarsdenLR 1354

HIGH COURT MALAYA KUALA LUMPUR
SIKA AG & ORS – Appellant
Versus
NIPPON PAINT (MALAYSIA) SDN BHD – Respondent
[Civil Suit No: WA-22IP-64-10/2021]

Petitioner Advocates:Michael Soo Chow Ming,Yu Shi Yang,Serene Khoo ,Respondent Advocate: Teo Bong Kwang,Loo Wai Hoong,Kathreena Jit Kaur Korotana

The registered proprietor of a trademark has exclusive rights to sue for infringement, and a finding of distinctiveness is crucial for trademark validity, while copyright infringement must demonstrate substantial similarity.

Headnote:(A) Trademarks Act 2019 - Sections 48, 56, and 47(1) - Copyright Act 1987 - Sections 7(1)(a), 3, and 7(3)(a) - Trademark infringement, passing off, copyright infringement, and unlawful interference with trade - The 1st Plaintiff has the exclusive rights as the registered proprietor of the SIKALATEX Mark and has locus standi to bring the claim against the Defendant - The Defendant's counterclaim to invalidate the trademark was dismissed as the mark was found valid and distinctive (Paras 7, 11, 24, and 28) - The Defendant was not found to infringe the SIKALATEX Mark or commit passing off, as the LATEX 118 Mark was not deemed identical or similar (Paras 34, 46, and 78) - The Plaintiffs failed to establish goodwill and reputation specifically in the SIKALATEX 118 product (Paras 64 and 66) - The copyright in the Plaintiffs' Product Data Sheet was infringed by the Defendant, while the copyright in the Product Description was not (Paras 112 and 113) - The claims for unlawful interference with trade were dismissed (Paras 119 and 128).

(B) The court ruled that the Defendant's use of the LATEX 118 Mark does not infringe the SIKALATEX Mark, and the Plaintiffs failed to prove their claims of passing off and unlawful interference. (Paras 29, 34, and 119)

(C) The Defendant's counterclaim for unlawful interference was also dismissed as lodging a complaint was not deemed unlawful (Paras 124-126).

Findings of Court:
The court dismissed the Plaintiffs' claims for trademark infringement, passing off, and unlawful interference, but found the Defendant liable for copyright infringement of the Plaintiffs' Product Data Sheet.

Result: The Plaintiffs' claims were dismissed except for the copyright infringement claim, which was allowed with costs.

Table of Content
1. disputes revolve around trademark and copyright infringement. (Para 1 , 2 , 3 , 4)
2. locus standi for trademark claims is limited to registered proprietors. (Para 5 , 6 , 11)
3. rights of registered trademark proprietors under tma. (Para 7 , 8 , 9)
4. invalidating trademarks requires aggrieved person status. (Para 12 , 13 , 14)
5. definition of 'aggrieved person' in trademark law. (Para 15 , 16)
6. defendant qualifies as an aggrieved person. (Para 17 , 18 , 19)
7. defendant's arguments against trademark validity. (Para 20 , 21 , 22 , 23)
8. court finds sikalatex mark valid and distinctive. (Para 24 , 25 , 26)
9. requirements for trademark infringement claims. (Para 29 , 30 , 31)
10. court finds no infringement by defendant. (Para 32 , 33 , 34)
11. differences between sikalatex and latex 118 marks. (Para 35 , 36 , 37 , 38)
12. defendant's use of latex 118 not infringing. (Para 39 , 40 , 41 , 42 , 43)
13. elements of passing off claims. (Para 46 , 47 , 48)
14. plaintiffs narrow focus on passing off claims. (Para 49 , 50 , 51 , 52)
15. plaintiffs must establish goodwill for passing off. (Para 53 , 54 , 55 , 56)
16. court finds insufficient evidence of goodwill. (Para 57 , 58 , 59 , 60)
17. no misrepresentation found in passing off. (Para 61 , 62)
18. plaintiffs fail to prove passing off. (Para 63 , 64 , 65)
19. copyright infringement requires originality. (Para 83 , 84 , 85)
20. copyright eligibility criteria. (Para 86 , 87 , 88)
21. originality in copyright does not require novelty. (Para 89 , 90 , 91)
22. court finds plaintiffs' product description lacks originality. (Para 92 , 93 , 94)
23. plaintiffs' pds found to be original. (Para 100 , 101 , 102)
24. defendant's tds infringes plaintiffs' pds. (Para 103 , 104 , 105)
25. unlawful interference requires specific elements. (Para 114 , 115 , 116)
26. plaintiffs' copyright infringement does not constitute unlawful interference. (Para 117 , 118 , 119)
27. defendant's counterclaim for unlawful interference dismissed. (Para 123 , 124 , 125)
28. court declines suggestion for peaceful coexistence. (Para 129 , 130 , 131)
29. summary of findings and conclusions. (Para 135 , 136 , 137)
30. costs awarded to defendant. (Para 138 , 139 , 140)
31. court discharges previous order. (Para 141 , 142 , 143)

JUDGMENT

Azlan Sulaiman JC:

A. The Disputes And The Approach

[1] The disputes in this action revolve around the following products depicted by these pictorial images:

[2] The Plaintiffs' claims against the Defendant in this action are for damages and other relief for:

(i) infringement of Trademark Registration No: 2018051675;

(ii) passing off;

(iii) copyright infringement; and

(iv) unlawful interference with trade

[3] Apart from disputing all of these claims, the Defendant is counterclaiming against the Plaintiffs:

(i) for various declarations;

(ii) to invalidate Trademark Registration No: 2018051675;

(iii) damages and other relief for unlawful interference with trade; and

(iv) further and/or in the alternative, for a declaration that the Plaintiffs' products (including get-up) and the Defendant's products (including get-up) "shall be permitted and continue to co-exist in the market or course of trade without any further interference from the Plaintiffs". I call this "Middle Ground".

[4] In this Judgment, I shall deal with the Plaintiffs' claims and the Defendant's counterclaims in the following sections:

[5] The reason for dealing with the Defendant's counterclaim for trademark invalidation separately and before trademark infringement is that, if the Plaintiffs' trademark is found to be invalid or having been invalidly registered, then the consequential effect of that finding is that it should never have been registered in the first place, and there could not be any infringement of it by the Defendant.

[6] However, before even delving into the Defendant's counterclaim for trademark invalidation and the Plaintiffs' claim for trademark infringement, given that this action was filed by three Plaintiffs, the first step is t

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2023 MarsdenLR 1354

HIGH COURT MALAYA KUALA LUMPURSIKA AG & ORS – AppellantVersusNIPPON PAINT (MALAYSIA) SDN BHD – Respondent[Civil Suit No: WA-22IP-64-10/2021]

The registered proprietor of a trademark has exclusive rights to sue for infringement, and a finding of distinctiveness is crucial for trademark validity, while copyright infringement must demonstrate substantial similarity.

Cases Referred (5)

HIGH COURT MALAYA KUALA LUMPUR
SIKA AG & ORS – Appellant
Versus
NIPPON PAINT (MALAYSIA) SDN BHD – Respondent
[Civil Suit No: WA-22IP-64-10/2021]