The court established that a co-operative's jurisdiction is not solely limited to references by the MCSC, allowing for direct adjudication of trademark infringement and passing off claims under applicable laws.

JUDGMENT

(After trial)

A. Background

[1]The plaintiff (Plaintiff) and defendant (Defendant) are co-operative societies registered under the Co-operative Societies Act 1993 (CSA).

[2]The Plaintiff is the proprietor of the following four trade marks (4 RTM’s) registered under the Trade Marks Act 1976 ( TMA ):

(1)trade mark with the registration no. 09012165 (RTM No. 165) for goods in Class 16 (goods which include, among others, paper, cardboard, goods made from these materials, printed matters, bookbinding materials, photographs and stationery) (Class 16 Goods). A copy of RTM No. 165 is attached to this judgment as “Appendix A “;

(2)trade mark with the registration no. 09012166 (RTM No. 166) for goods in Class 25 (clothing, footwear and headgear) (Class 25 Goods). A copy of RTM No. 166 is attached to this judgment as “Appendix B”;

(3)trade mark with the registration no. 09012167 (RTM No. 167) for services in Class 35 (advertising, business management, business administration and office functions) (Class 35 Services). A copy of RTM No. 167 is attached to this judgment as “Appendix C”; and

(4)trade mark with the registration no. 09012168 (RTM No. 168) for services in Class 36 (insurance, financial affairs, monetary affairs and real estate affairs) (Class 36 Services). A copy of RTM No. 168 is attached to this judgment as “Appendix D”.

The Registrar of Trade Marks has imposed a disclaimer that the registration of the 4 RTM’s shall give no right to the exclusive use of the words “BANK PILIHAN ANDA” and “YOUR CHOICE BANK’ .

[3]In this suit (This Action), the Plaintiff claims that the Defendant’s website, brochures and promotional materials have -

(1)infringed 4 RTM’s under s 38(1)(a) TMA

(2)passed off the Defendant’s services, products and business as those of the Plaintiff’s.

B. Issues

[4]The following questions arise in this case:

(1)whether it was appropriate for the Defendant to object to the court’s jurisdiction to hear This Action under s 82(1)(d), (3)(c), (5) and (7) CSA

(2)in view of s 82(1)(d), (3)(c), (5) and (7) CSAcourt only have jurisdiction to decide this case when -

(a)the dispute between the Plaintiff and Defendant is referred by the Plaintiff or Defendant to Malaysia Co-operative Societies Commission (MCSC) under s 82(1)(d) CSA

(b)when MCSC requires the Plaintiff and Defendant to refer the dispute to court pursuant to s 82(3)(c) CSA (3)if s 82(1)(d), (3)(c), (5) and (7) CSAcourt’s jurisdiction to hear This Action when MSCS does not refer this case to court, whether s 82(1)(d), (3)(c), (5) and (7) CSAcourt’s judicial power to decide disputes under Article 121(1) of the Constitution ;

(4)if s 82(1)(d), (3)(c), (5) and (7) CSAcourt’s judicial power to adjudicate disputes pursuant to Article 121(1) of the Constitution, is s 82(1)(d), (3)(c), (5) and (7) CSA (5)if the court has jurisdiction to hear This Action without any reference by MCSC-

(a)whether the Defendant has infringed 4 RTM’s under s 38(1)(a) TMA s 40(1)(dd)

(b)has the Defendant committed a tort of passing off the Defendant’s services, products and business as those of the Plaintiff’s? If the Defendant has passed off its services, products and business as those of the Plaintiff’s, whether the Plaintiff is estopped from claiming from the Defendant based on the tort of passing off because of the Plaintiff’s conduct and/or representations.

C. Plaintiff’s case

[5]The Plaintiff called the following two witnesses in This Action:

(1)Encik Nizam bin Sani (SP1); and

(2)Encik Shaharudin bin Mohd. Sa’ad (SP2).

[6]SP1 is the Plaintiff’s Head of Marketing and Communication. SP1 gave the following evidence, among others:

(1)SP1 is in charge of all press statements made by the Plaintiff, including the press statement released on 10.5.2016 [Plaintiff’s Press Statement (10.5.2016)];

(2)the Plaintiff is established in 1954;

(3)in 2002 the Plaintiff has become a full-fledged Islamic co-operative bank;

(4)the Plaintiff provides, among others, consumer banking services, commercial financing, investment