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2012 MarsdenLR 38
HIGH COURT MALAYA, SHAH ALAM
BURUKAN MOHAMED & ORS – Appellant
Versus
SIRAJUDIN Y MOHAMED MYDIN & ORS – Respondent
[Civil Suit No: 22-705-2008]
The term 'continuing business' in a partnership agreement allows for use of a business name beyond existing outlets, enabling future expansion.
Headnote:(A) Agreement - Clause 2 - Trade marks - Passing-off - Court ruled that the words 'continuing business' in the agreement allowed use of the expression 'Restoran Kayu Nasi Kandar' for all future outlets, not restricted to existing ones. Defendants' claims of trademark infringement dismissed as differences in logos were established. (Paras 12, 23, 27)
(B) Passing-off Requirements - Court emphasized five characteristics: misrepresentation, made in course of trade, to prospective customers, calculated to injure goodwill, causing actual damage. (Para 12)
Facts of the case:
The dispute arose between parties over the use of trade signs and names related to a restaurant business. Plaintiffs claimed passing-off due to defendants' similar trade sign, while defendants counterclaimed alleging trademark infringement. (Paras 2, 3)
Findings of Court:
The court found that the expressions in the agreement allowed for continued use of the name across all outlets. The defendants' trademark was sufficiently distinct from the plaintiffs' business sign. (Paras 21, 25, 28)
Issues: The main questions were: 1) Whether 'continuing business' was limited to existing outlets; 2) Whether the second plaintiff had the right to use the name. (Paras 16, 24)
Ratio Decidendi: The court ruled that any use of the restaurant name is not limited to specific outlets but extends to future growth, affirming that the license comprehensively covers the business's expansion. (Paras 22, 25)
Result: Plaintiffs' claim allowed.
[1] This court has on 22 August 2011 on its own motion under O 14A of the Rules of the High 1980, and with consent of the parties directed parties to make submissions on two questions namely:
1. Whether on proper construction of cl 2 of the said Agreement, the words "continuing business" is restricted to the 2 outlets given to the 1st plaintiff, and the 1st plaintiff is not allowed to use the expression "Restoran Kayu Nasi Kandar" for other outlets?
2. Whether the 2nd plaintiff, in which both 1st plaintiff and his wife are shareholders (on equal share), has the license to use the expression "Restoran Kayu Nasi Kandar"?
