Back
2009 MarsdenLR 1270
HIGH COURT MALAYA KUALA LUMPUR
TIEN YING HONG ENTERPRISE SDN BHD – Appellant
Versus
BEENION SDN BHD – Respondent
[Suit No: D6-22-1309-03]
The court ruled that parallel imports are unlawful without the registered trademark owner's consent, reaffirming the territorial nature of trademark rights.
Headnote:(A) Trade Marks Act 1976 - Sections 35, 38, and 40(1)(d) - Trademark infringement - Parallel importation of trademarked goods - The court found infringement due to unauthorized sale and distribution of batteries bearing 'SEIZAIKEN' trademark by the defendant, who lacked the plaintiff's consent and connection to legitimate sources. (Paras 1, 24, 25)
(B) Trademark law - The court emphasized that trademark rights are territorial, and only the registered owner in Malaysia can authorize the use of the trademark, making parallel imports illegal without consent. (Paras 14, 15)
Facts of the case:
The plaintiff, a registered trademark owner of 'SEIZAIKEN' batteries, alleged infringement against the defendant, who imported and sold batteries without permission, claiming these were legitimate parallel imports. (Paras 2, 4, 7)
Findings of Court:
The defendant's defense of parallel importation was rejected, affirming the plaintiff's exclusive rights to the trademark protection within Malaysia. (Paras 11, 24)
Issues: The primary issue was whether the defendant's actions constituted trademark infringement or fell under parallel importation protections. (Paras 26, 17)
Ratio Decidendi: The court ruled that parallel imports are not permissible when they lack the consent of the registered trademark holder, emphasizing the territorial nature of trademark rights. The defendant could not establish a legitimate source for the goods. (Paras 14, 24)
Result: Plaintiffs' claim allowed; an order was granted for remedies sought in the statement of claim.
| Table of Content |
|---|
| 1. trademark infringement regarding seizaiken (Para 1 , 2) |
| 2. plaintiff's rights in trademark distribution (Para 3 , 4 , 5 , 6) |
| 3. defendant's defense of parallel imports (Para 7 , 8 , 9 , 10) |
| 4. court's analysis on parallel imports (Para 11 , 12 , 13 , 14 , 15) |
| 5. consent in parallel imports (Para 16 , 17 , 18 , 19) |
| 6. misapplication of the winthrop case ruling (Para 20 , 21 , 22 , 23) |
| 7. final ruling on trademark infringement (Para 24) |
[1] This action raises a point of law concerning parallel importation in international trade. It has to do with the legitimacy of parallel imports in the area of trademark protection.
[2] The plaintiff's cause of action in this suit is trademark infringement of the plaintiffs rights to the trademark "SEIZAIKEN" pursuant to Trademark Registration No: 91/01413 under the Trade Marks Act 1976 (the Act) in respect of batteries in class 9.
The Plaintiff's Case
[3] In brief, the plaintiff's case is as follows. The plaintiff has the business of distributing and selling batteries for watches and clocks as well as watches and clock parts. The plaintiff is and has been the registered proprietor of the trademark "SEIZAIKEN" pursuant to Trademark Registration No: 91/01413 in class 9 under the Act in respect of batteries in class 9. Indeed, that registration subsists to the present day. As a result, thereof, the plaintiff is the sole and exclusive company in Malaysia that entitles them to sell and distribute batteries under the trademark SEIZAKEN, and where no other person or company including Seiko Instruments Inc and Star (Far East) Ltd is entitled to sell or distribute such batteries in Malaysia. The plaintiff never gave permission to the defendant to sell or distribute for sale the batteries having the said trademark SEIZAKEN. The defendant operates a business trading and selling watches, clocks and batteries for watches and clocks.
[4] The defendant has been from a date unknown to the plaintiff selling watch batteries in Malaysia under the mark SEIZAKEN (the said infringing use) without the license of the plaintiff, the said batteries also have no connection in the course of trade with the plaintiff. The plaintiff never appointed the defendant at any time to be a distributor of the batteries bearing the trademark SEIZAKEN. The said infringing use by the defendant is in the nature of the use of a mark that is identical with the said trademark as it is likely to deceive or cause confusion in the course of trade in relation to the very same goods. The use of the mark by the defendant likely is to be taken either as being use as a trademark, and/or as importing a reference made by the defendant purportedly having the right either as registered proprietor or registered user to use the said trademark or to goods, which the defendant is connected in the course of trade.
[5] On 26 September 202 and 27 September 2002, the defendant offered for sale a consignment of watch batteries bearing the mark SEIZAKEN to Marusho Inter Pacific of Suite 26.00, 26th Floor, Menara IMC,No: 8, Jalan Sultan Ismail, 50250 Kuala Lumpur The packaging used by the batteries that were supplied to Marusho Inter Pacific by the defendant were clearly different from the packaging used by the batteries that were supplied by the plaintiff and therefore the batteries sold by the defendant to Marusho Inter Pacific were not supplied by the plaintiff.
[6] Because of such infringement by the defendant, the plaintiff has suffered loss and/or damage. In the circumstances, the plaintiff claims against the defendant for an injunction, an inquiry as to damages, an account of profits, interest and costs.
The Defendant's Contention
[7] Learned counsel for the defendant in his submission only raised one issue. The main thrust of his argument is simply this. The defendant imported its batteries marked with "SEIZAIKEN" from Star (Far East) Ltd, a company based in Hong Kong, which in turn obtained the batteries from Seiko Instrument Inc in
