YONG SZE FUN & ANOR vs SYARIKAT ZAMANI HJ TAMIN SDN BHD & ANOR

Headnote Court Copy Facts Arguments Court observation Judicial Analysis Case Map Category Hierarchy Table of Content

2011 MarsdenLR 3412

COURT OF APPEAL PUTRAJAYA
YONG SZE FUN & ANOR – Appellant
Versus
SYARIKAT ZAMANI HJ TAMIN SDN BHD & ANOR – Respondent
[Civil Appeal No: W-02-367-2006]

Important Points

The court established that prior use of a trademark confers exclusive rights, and unauthorized use leading to consumer confusion constitutes passing-off.

Subject

Intellectual Property - Trademark Law

Act Referred

Trade Marks Act 1976 (Act 175): S.82

Headnote

(A) Trade Marks Act 1976 - Passing-off - Plaintiffs sought injunction against defendants for using the trademark 'TAMIN' for cordials and syrups claiming it causes confusion with their established brand - High Court ruled in favor of plaintiffs, upholding their rights to the trademark due to prior use since 1951. (Paras 1-272)

(B) The law on passing-off protects goodwill associated with a mark, requiring proof of prior use, misrepresentation, and potential damage. The plaintiffs were found to have established goodwill and reputation due to their extensive use of the 'TAMIN' trademark across a variety of food and drink products. (Paras 48-72, 238-248)

Facts of the case:
Plaintiffs, incorporated in 1988, claimed defendants commenced use of 'TAMIN' trademark in 1990, leading to public confusion regarding the source of syrups. The plaintiffs provided evidence showing early use of 'TAMIN' in relation to food products from 1951. (Paras 5-28)

Findings of Court:
High Court found the plaintiffs had the prior right to the 'TAMIN' trademark, which the defendants infringed, causing damage to the plaintiffs' goodwill. Court emphasized the significance of reputation and prior use. (Paras 3, 237)

Issues: Whether the plaintiffs established rights to the 'TAMIN' trademark and whether the defendants' use of it constituted passing-off, resulting in customer confusion and damage to brand reputation. (Paras 186-274)

Ratio Decidendi: The court concluded that the plaintiffs, having used 'TAMIN' well before the defendants, held the rightful claim, irrespective of the defendants' argument of honest concurrent use. The similarity in the products would lead to confusion in the eyes of the consumer. (Paras 176-275)

Result: Appeals dismissed; defendants ordered to cease use of 'TAMIN' and awarded costs.

Petitioner Advocates:Naban Bahri Yeow,Foong Cheng Leong ,Respondent Advocate: S Indran,SF Wong,Chew Chui Yiang

Table of Content
1. identification of parties in the case. (Para 2 , 3)
2. details of plaintiffs' claim and defendants' counter-claim. (Para 4 , 5 , 6)
3. facts regarding the trademark 'tamin' usage and its history. (Para 22 , 23 , 24 , 25 , 26 , 27 , 28 , 29 , 30 , 31 , 32 , 33 , 34 , 35)
4. court observations on the evidence and confusion. (Para 37 , 38 , 39 , 41 , 45 , 49 , 50 , 90)
5. principles governing passing-off and trademark rights. (Para 46 , 47 , 48 , 140 , 152)
6. conclusion on the plaintiffs' rights to the 'tamin' trademark. (Para 268 , 269 , 270)

[2] After a full trial, the High Court gave judgment in favour of the plaintiffs. The plaintiffs' prayers in the Statement of Claim were allowed with costs with a consequential order that damages be assessed by the registrar. The High Court also dismissed the defendants' counter-claim with costs.

[3] Aggrieved, the defendants appealed to this Court. The defendants were the appellants and the plaintiffs were the respondents before us. But, for brevity, we reiterate that the parties will be referred to like what they were referred to at the High Court as the plaintiffs and the defendants respectively.

Statement of Claim

[4] At pp 215 to 216 of the appeal record at Jilid 2, the plaintiffs sought for the following prayers:

"(1) An injunction to restrain the defendants, whether acting by their directors, officers, servants or agents or any of them in combination or otherwise howsoever from doing the following acts or any of them, that is to say:

(a) passing-off or attempting to pass-off syrups and other goods of a similar description by the manufacture, supply, distribution sales and offer for sales of the same with the trademark 'TAMIN' or any other trademark which is deceptively and confusingly similar thereto;

(b) unlawfully appropriating the plaintiffs' goodwill, reputation and commercial advantage in the field of trade and business relating to sauces and other products of a similar description or assisting any others to do so by the manufacture supply, distribution sales and offer for sales of the same the trademark 'TAMIN' or any other trademark which is deceptively and confusingly similar thereto; and

(c) an order for full discovery of all relevant documents particularly invoices, contracts, customers' records, sales records, delivery orders, customer declaration forms and shipping documents and other documents relating to the defendants' manufacture, supply, distribution sales and offer for sales of the same the trademark 'TAMIN' or any other trademark which is deceptively and confusingly similar thereto.

(2) An order for delivery up to the plaintiffs or its solicitors or authorised agents for destruction of all the offending goods bearing the 'TAMIN' trademark in the possession, custody, power or control of the defendants.

(3) Inquiry as to damages or at the plaintiffs' option an account of the defendants' profits in respect of their passing off acts.

(4) Interest.

(5) Costs.

(6) Such further and other relief as the Court may deem fit."

Defence And Counter-Claim

[5] The defendants in their defence responded to all the paragraphs averred in the Statement of Claim and the defendants also advanced a counter-claim. In their counter-claim, the defendants sought for the following prayers (see pp 241 to 243 of the appeal record at Jilid 2):

"(1) A permanent injunction to restrain the plaintiffs, whether by their directors, officers, servants or agents or any of them or otherwise howsoever from doing the following acts or any of them, that is to say:

(a) using any trademark which includes the word 'TAMIN' or any colourably similar word in relation to cordials, flavourings and syrups;

(b) manufacturing, importing, distributing, selling or offering for sale cordials, flavouring and syrups bearing the trademark consisting of the word 'TAMIN' not being the products of the defendants;