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2020 MarsdenLR 2704
COURT OF APPEAL PUTRAJAYA
DIESEL SPA – Appellant
Versus
BONTTON SDN BHD – Respondent
[Civil Appeal No: W-02-(IPCV)(A)-1594-08/2016]
The court recognized the doctrine of using one's own name in commerce, affirming a party's right to use its own trademark when not misleading, thus granting a declaration of non-infringement.
Headnote:(A) Specific Relief Act 1950 – Section 41 – Trade Marks Act 1976 – Section 40(1)(a) – Appeal regarding the Court's jurisdiction to grant declaratory relief and recognition of trademark under the own name doctrine; High Court dismissed the Originating Summons; the appellant sought a declaration of non-infringement concerning its trademark 'DIESEL'. (Paras 1, 40, 148)
(B) Discretion of Court – The inherent jurisdiction of the Court may be invoked to grant declaratory decrees even where there are explicit remedies under the law; however, it should not be unnecessarily restrictive in interpreting statutory provisions. (Paras 41-44)
(C) Use of Own Name Doctrine – The appellant has a legal right to use its own name in trade, demonstrating bona fide use and significant reputation in connection with its products, thus justifying the Court’s recognition of non-infringement. (Paras 84, 148)
Facts of the case: The appellant, Diesel SpA, established in 1978, sought to secure declaratory orders regarding the use of its trademark 'DIESEL' in Malaysia, contesting the rights of the respondent whose goods also bear the same mark. (Paras 5-15)
Findings of Court: The Court disagreed with the High Court’s narrow interpretation of s. 41 of the Specific Relief Act and affirmed the appellant's right to use its own name; it identified significant goodwill associated with the 'DIESEL' trademark. (Paras 61, 148)
Issues: The main issues included the Court’s power to grant declaratory relief under the Specific Relief Act and the applicability of the own name doctrine concerning trademark usage. (Paras 1, 40)
Ratio Decidendi: The Court opined that the own name doctrine, as afforded under Section 40(1)(a) of the Trade Marks Act, allows for a bona fide use by a person of their own name without infringing upon registered trademarks, provided it is not misleading. (Paras 80-82)
Result: Appeal allowed, with costs; the order sought by the appellant for declaration of non-infringement was granted. (Paras 148)
IN THE COURT OF APPEALS
Between:
[Name of Appellant]
Appellant
And:
[Name of Respondent]
Respondent
APPEAL FROM THE DECISION OF THE LOWER COURT
NOTICE OF APPEAL
The appellant respectfully appeals to this Honourable Court against the decision of the lower court on the following grounds:
-
The lower court erred in its interpretation and application of the legal principles concerning the right to use one's own name in trade and business, failing to recognize that such right is a fundamental and inherent right that warrants protection under the law when used bona fide and in good faith (!) .
-
The court incorrectly limited the scope of protection available for the use of a personal name, thereby restricting the appellant’s ability to defend against claims of infringement or to assert non-infringement through declaratory relief, contrary to the established legal principles (!) .
-
The lower court failed to adequately acknowledge the statutory provisions that explicitly or implicitly recognize and safeguard the bona fide use of one's own name, and erred in concluding that such use necessarily constitutes infringement when it coincides with a registered trade mark (!) .
-
The court erred in its interpretation of the jurisdiction and authority of the courts to issue declaratory orders, including negative declarations of non-infringement, which are essential to protect the fundamental rights of individuals engaged in trade and commerce (!) .
-
The lower court overlooked the principle that the law permits the concurrent use of the same trade mark by different parties when such use is bona fide and in good faith, thus unjustly favoring the respondent’s exclusive rights and undermining fair competition (!) .
WHEREFORE, the appellant respectfully requests that this Honourable Court:
a) Set aside the decision of the lower court;
b) Reaffirm the fundamental rights of individuals to use their own names in trade and business;
c) Clarify the scope of protection available for bona fide use of personal names;
d) Recognize the authority of courts to issue declaratory orders to safeguard such rights;
e) Grant such further relief as the Court may deem just and proper.
Dated this _ day of ___, 20____.
[Signature of Appellant or Counsel]
[Name of Counsel or Appellant]
[Address]
[Contact Details]
JUDGMENT
[1] This appeal concerns several novel issues, particularly on whether the Court has discretionary powers under s 41 of the Specific Relief Act 1950 [ SRA ]; O 15 r 16 of the Rules of 2012 [RC] and/or inherent jurisdiction to grant, amongst others, a negative declaration; and whether the Court should grant recognition of trade mark under the "own name doctrine".
[2] The High Court was disinclined to grant the orders sought and the Originating Summons was dismissed.
Factual Background
[3] The factual backdrop is culled from the affidavits filed and exchanged between the parties. The appellant filed a total of five affidavits and affidavits-in-reply while the respondent filed four.
[4] This is the appellants version on how the mark or name "DIESEL" or "Diesel" came to pass.
[5] In 1978, Renzo Rosso founded the appellant company, Diesel SpA. He coined the mark and named the company "Diesel" after being inspired by the oil crisis that affected the world at that time. The details of how Mr Rosso came to be so inspired may be found in a book titled "Be Stupid for Successful Living" that Renzo Rosso wrote about himself and how he started Diesel SpA. Although so titled, it is anything but that; its reverse psychology urging and motivating the reader to chase or to follow their dreams fearlessly and to believe in their abilities, rather than to conform to societal norms Guido Corbetta, Professor of Corporate Strategy at Rosconi University, Milan, in the preface to the book wrote:
"I cannot hide my fondness for entrepreneurs, for people who risk what they have in order to chase a dream that comes straight from the heart. I admire their determination, their willingness to work hard, their ability to stay a step ahead of everyone else, their commitment to never playing it safe and accepting the possibility of failure. I like them because they make real contributions to improving the world in which we live. Renzo Rosso is a true entrepreneur, who, in a little over thirty years, has created an international company, and in an area Americans once seemed destined to dominate forever. He achieved this through trial and error, all based on his conviction that "playing it safe" doesnt lead to innovation, while risk leads to evolution."... Renzo Rosso isnt literally stupid; he doesnt; fit the dictionary definition of a person who "possesses or reveals very low intelligence. " But the word "stupid" is of Latin origin, and its related to the verb "to stupefy". So it seems clear to me why Rosso writes, in the future, when the Be Stupid ad campaign is over, the philosophy that inspired it will remain inscribed in Diesels DNA. " His is a philosophy that aims to teach people to be amazed by what happens and to stupefy others."
[6] Renzo Rosso incorporated the appellant as a private limited liability company in Italy in 1982. It started off as a "tiny jeans manufacturer", a company involved in manufacturing, exporting, distributing, offering for sale and selling a wide-ranging collection of jeans, clothing and accessories using the mark, "DIESEL". It has since expanded and evolved into a lifestyle company with products beyond clothing and apparel products; covering footwear, watches, jewelry, eyewear, fragrances, small leather goods, luggage, helmets, headphones, bikes, motorbikes as well as a complete home collection. Its target consumers are the youths.
[7] The appellant is now one of Italys leading business enterprises with a turnover of over USD1 billion. It has over 5,000 retail points of sales and 300 single-branded Diesel stores in more than 80 countries around the world, starting out in Europe in 1978 before expanding to the United States of America in 1979 and by 1982, the appellants goods bearing the mark "DIESEL" was already being exported to and sold in Asia. Since 2002, the appellant has become part of the holding company OTB (Only The Brave), also founded by Renzo Rosso. OTB is the parent company to several other fa
