Low Hop Bing J

CLAIM AND COUNTERCLAIM

The plaintiff’s claim is based on:

(a)the infringement of its registered trademarks viz ‘FUCIDIN’ (registration No 85/04916) and ‘FUCICORT’ (registration No M/90043) in Class 5 in respect of pharmaceutical and veterinary preparations on 7 November 1985 and 3 April 1981 respectively (collectively ‘the plaintiff’s trademarks’); and

(b)passing off or attempted passing off of pharmaceutical products, not being of the plaintiff’s, as and for the plaintiff’s.

The defendant has in turn made a counterclaim for rectification, to invalidate and expunge the registration of the plaintiff’s trademarks, and for damages arising from unlawful interference with the defendant’s trade or business.

AGREED FACTS

The plaintiff is a corporation, incorporated in Denmark. Its principal place of business is at 55, Industriparken, DK-2750, Batterup, Denmark. The plaintiff carries on the business of manufacturing and distributing, inter alia, antibiotic preparations containing fucidic acids bearing the trademarks.

The defendant is a private limited company incorporated under the Companies Act 1965. Its registered office is at 535B, Jalan Merdeka, Melaka Raya, 75000 Melaka. Its business address is at Lot 1, Jalan TTC, Cheng Industrial Estate, 75250 Melaka. The defendant carries on the business of manufacturing and sales of pharmaceutical and healthcare products.

The plaintiff’s trademarks have been registered for more than seven years and have been renewed. The pharmaceutical products bearing the plaintiff’s trademarks are prescription drugs.

The defendant manufactures, sells and offers for sale in Malaysia pharmaceutical products bearing the marks ‘AXCEL FUSIDIC’ and ‘AXCEL FUSI-CORTE’ (‘the defendant’s marks’). The defendant had supplied to Farmasi Sri Damansara Arah Raya Sdn Bhd of No 26-G Jalan Tanjung SD13/1, Bandar Sri Damansara, 52200 Kuala Lumpur at least one tube each of the pharmaceutical products bearing the defendant’s marks.

The defendant’s products prominently display the word ‘KOTRA’ beneath the defendant’s marks with the defendant’s name and address prominently printed in black, whereas the plaintiff’s products prominently display the device of a lion with the word ‘LEO’ beneath it.

The get-up of the defendant’s product bearing the words ‘AXCEL FUSI-CORTE’ is clearly different from the plaintiff’s in that the packaging displays blue horizontal stripes, on the top of the box, which run from left to right and green horizontal stripes running from the centre to the right margin of the box.

The get-up of the plaintiff’s product bearing the word ‘FUCIDIN’ is different from the defendant’s in that the packaging which has a predominant white background displays a prominent red vertical stripe, which is printed towards the middle of the box.

The get-up of the plaintiff’s product bearing the word ‘FUCICORT’ is different from the defendant’s in that the packaging which has a predominant white background displays a prominent red and yellow vertical stripe, which are printed towards the middle of the box.

The words used by the defendant are spelt with the alphabet ‘S’ in ‘FUSIDIC’ and the alphabets ‘S’ and ‘E’ in ‘FUSI-CORTE’, with a hyphen, whereas the plaintiff’s trademarks are spelt with the alphabets ‘C’ and ‘N’ in ‘FUCIDIN’, and with the alphabet ‘C’ but without the alphabet ‘E’ in ‘FUCICORT’, without any hyphen.

FINDING OF FACTS FROM EVIDENCE

In addition to the above agreed facts, I shall now unfold my finding of facts, on the basis of the evidence adduced.

The plaintiff is a fully integrated pharmaceutical company owned by the LEO Foundation which is an independent private foundation; its objective is to develop and promote the plaintiff’s position as an independent pharmaceutical group of companies with its own research, development, manufacturing, distribution, sales and marketing.

The plaintiff has been promoting and selling pharmaceutical products bearing the trademark ‘FUCIDIN’ and ‘FUCICORT’ in the following get-up resp