Common law ownership of a trademark is determined by the first user, not merely the creator, as established in passing off cases.

Introduction

[1] This is an appeal by the appellant, Mesuma Sports Sdn Bhd (the defendant in the High Court), pursuant to leave of this Court to Appeal against the whole decision of the Court of Appeal that affirmed the judgment of the High Court.

[2] The subject matter of the dispute between Mesuma Sports Sdn Bhd and the respondent, Majlis Sukan Negara Malaysia (the plaintiff in the High Court) revolved around 'the tiger stripes design' over goods such as sports attire for the use of all Malaysian athletes representing the country in various sports events held within the country and beyond. This case concerned the tort of passing off, which is a common law tort that can be used to enforce unregistered trade mark rights. To a large extent what is in contention in the present appeal is the common law ownership right to the tiger stripes design as an unregistered trade mark in a trade mark sense in the course of trade.

[3] We shall be referring to parties in this judgment in the capacity as they were in the High Court, namely the appellant as the defendant and the respondent as the plaintiff.

Background Facts

[4] The plaintiff is a statutory body established under the provisions of the National Sports Council of Malaysia Act 1971 (Act 29). Its main responsibility is the promotion of sports in the country.

[5] The defendant is a private limited company and is in the business of supplying sports apparel, equipment, accessories and sports goods generally. It had been a contract supplier of the same to the plaintiff since 1990.

[6] In 2005, the Ministry of Youth and Sports (the Ministry) with the cooperation of the plaintiff and a company known as 59 icons Sdn Bhd organised a New Jersey Design Competition (Competition) to design a new motif and colour for sports attire to be worn by all Malaysian athletes representing the country in sports events held within the country and internationally. The Ministry reserved its right to claim ownership of all drawings, artwork or concepts submitted by participants in the Competition and to use them for any purpose. The tiger stripes design was selected as the winning design of the Competition. After final selection, the Ministry on 14 November 2005 officially launched the said design. Subsequently, the Ministry entrusted the plaintiff with all responsibilities over the rights, ownership and management of the tiger stripes design.

[7] What happened next, was that, all Malaysian athletes who took part in the SEA Games held in Manila, Philippines in 2005 wore the sports attire incorporating the tiger stripes design for the first time. The plaintiff had appointed a manufacturer by the name of Antioni to produce and supply the sports attire bearing the tiger stripes design.

[8] Not long afterwards, the defendant was appointed as contract supplier by the plaintiff to produce sports attire bearing the tiger stripes design to be worn by Malaysian athletes for the 2006 Asian Games in Doha.

[9] It is important to keep in mind that some three years later, on 9 July 2009, the defendant claimed to be the first user of the tiger stripes design as a trade mark in the course of trade applied for registration of the design under the Trade Marks Act 1976 (the Act), while it was still a supplier of sports goods to the plaintiff.

[10] On 11 February 2011, the tiger stripes design was registered as a trade mark by the Registrar of Trade Marks in the name of the defendant as the proprietor in the register for a period of ten years from 9 July 2009 to 9 July 2019 in Class 18 and Class 25 under the Act and in respect of "sporting apparels, equipment and accessories and sports clothing" vide Trade Mark No: 09011365 and Trade Mark No: 09011366, respectively. The defendant admitted that its registered trade mark was entirely adapted from the plaintiff's tiger stripes design.

[11] In relation to this, the Court of Appeal observed that whilst the plaintiff had expended time, effort and expense to develop the tig