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2025 MarsdenLR 4206
HIGH COURT MALAYA KUALA LUMPUR
ANTARA HOLIDAY VILLAS SDN BHD – Appellant
Versus
TEDULOUS TRAVEL & TOURS SDN BHD – Respondent
[Suit No: WA-22IP-59-09-2020]
Priority in use of a trademark prevails over registration; established use and goodwill are essential for trademark protection, dismissing claims of passing off and invalidating subsequent registrations.
Headnote:(A) Trademarks Act 2019 - Sections 47 and 55 - Trademark dispute involving prior use versus registered trademark - Plaintiff, the renowned hotel operator, claimed trademark infringement against defendant's use of 'LA VILLA' - Court found defendant established prior use since 2013, while plaintiff registered the mark in 2016 - Registration was deemed invalid, as defendant proved longstanding use and trademark protection under common law principles. (Paras 9, 12, 21, 29, 50)
(B) Passing Off - Essentials of passing off established, including goodwill, misrepresentation, and damage - Court ruled that plaintiff's actions constituted passing off, causing confusion in the marketplace. (Paras 37, 43)
Facts of the case:
The case arises from a dispute between two hotel operators where the plaintiff, having registered its trademark 'LA VILLA', alleges infringement by the defendant who had used the mark prior to the plaintiff's registration. Evidence showed defendant's use since July 2013 and plaintiff's initial erroneous claims of earlier use. (Paras 4, 6, 10, 34)
Findings of Court:
Defendant was ruled the rightful user of 'LA VILLA', with the plaintiff's registrations declared invalid. The plaintiff’s claims were dismissed and a permanent injunction was issued against the plaintiff. (Paras 9, 50)
Issues: (a) Who is the first and prior user of 'LA VILLA'? (b) Should the plaintiff's trademarks be invalidated? (c) Did the plaintiff engage in passing off? (d) Did the defendant infringe the plaintiff's trademarks? (Paras 11, 42)
Ratio Decidendi: The Court determined that rights in trademark law are based on actual use, where prior use dominates over registration. The plaintiff's later claims were rejected due to clear evidence supporting the defendant's precedence in the market. (Paras 22, 28, 50)
Result: Defendant's counterclaim allowed; plaintiff's claims dismissed with costs ordered against the plaintiff. (Paras 50, 51)
| Table of Content |
|---|
| 1. history and significance of hospitality branding in malaysia. (Para 1 , 2) |
| 2. background facts of the trademark dispute case. (Para 3 , 4 , 5 , 6 , 7 , 8) |
| 3. plaintiff's arguments for trademark ownership and protection. (Para 12 , 13 , 14 , 15 , 16) |
| 4. defendant's rebuttal and assertions of prior use. (Para 17 , 18 , 19 , 20) |
| 5. court's analysis on prior use of the trademark. (Para 21 , 22 , 23 , 24 , 25 , 26 , 27 , 28 , 29 , 30) |
| 6. assessment of the plaintiff's trademark registration validity. (Para 31 , 32 , 33 , 34 , 35 , 36) |
| 7. evaluation of passing off claim against the plaintiff. (Para 37 , 38 , 39 , 40 , 41 , 42 , 43) |
| 8. legal commentary on licensing and trademark rights. (Para 44 , 45 , 46 , 47) |
| 9. conclusion on trademark infringement claims. (Para 48) |
| 10. final conclusions and decision of the court. (Para 50 , 51) |
Introduction
[1] The story of hospitality in the Malay Peninsula is as old as its trading ports, its origins tracing back to the 15th century when merchants and travellers sought respite in the bustling port of Malacca. These early lodgings, though modest by modern standards, laid the foundation for the grand hotels and luxurious resorts that now define Malaysia's flourishing tourism industry. As Huang Zhong vividly recounts in Hai Yu (News from the Ocean), the hospitality trade of that era was deeply intertwined with commerce, with innkeepers providing not only food and shelter but a carefully curated experience—one that often came at a price:
"The merchants of the ships live in a hotel, the chief of which always gives female slaves to serve them and sends them food and drink morning and evening; but if one uses too freely of this, he may be sure that all his money will pass into the hands of the other."
(Groeneveldt 1960; pp 126-128)
[2] More than five centuries later, the essence of hospitality remains unchanged. A name, a reputation, goodwill, and the promise of an experience—all of these elements continue to define the success of a hotel. Today, these attributes find protection under the law of intellectual property, ensuring that a brand's identity and the goodwill it has built remain exclusive to its rightful owner. It is against this backdrop that the present dispute unfolds, set along the picturesque shores of Langkawi. Here, two competing establishments, each with its own history, ambition, and claim to distinctiveness, now find themselves locked in a legal battle over a name.
Background Facts
[3] The trial was convened on 20 and 21 November 2023, during which the Court examined witness testimonies and documentary evidence. The factual matrix that emerged presents a clear narrative of the events giving rise to this dispute.
[4] Antara Holiday Villas Sdn Bhd, the plaintiff, is a renowned hotel operator under the distinguished brand name "Holiday Villa". Under this brand, the plaintiff and its affiliated companies operate 27 hotels across 6 countries with nearly 6,000 rooms. On 24 March 2016, the plaintiff secured trademark registrations for "LA VILLA" under Classes 43 and 16 (TM Nos 2016002961 & 2016002962) (See Figure 1). This classification ensures comprehensive protection, with Class 43 covering the plaintiff's hospitality services, including food, beverages, and lodging; while Class 16 safeguards its printed materials, stationery, and marketing assets. This trademark was first utilised in February 2014 for the plaintiff's poolside restaurant, located within their 340-room beachfront resort in Langkawi known as Holiday Villa Resort & Beach Club Langkawi.
[5] Subsequently, the plaintiff broadened the use of the "LA VILLA" mark to encompass additional offerings, including a dedicated hotel wing at Holiday Villa Beach Resort & Spa Cherating. Demonstrating its intent to associate the mark with this exclusive and upscale hospitality experience—specifically their pool villa concept—the plaintiff, through its trademark agent, filed four additional trademark applications on 17 Jun
