The court upheld the rights of unregistered trademark owners to seek remedies against fraudulent registrations and passing off, emphasizing consumer confusion and the protection of goodwill.

Lee Swee Seng JCA:

[1] This judgment explores the interface between the first and continuing use of an unregistered trademark bearing a noun "Neem" and sometimes coupled with a descriptive word "Active" as in "Neem Active" used in relation to toothpaste and a subsequent registration and use by a previous distributor of a similar trademark "Dr Neem" in a breach of contract, passing off, unlawful interference with business as well as in an expungement or rectification of trademark proceeding.

At the High Court

[2] The intellectual property disputes between the parties herein have its genesis in the 3 agreements entered into between the plaintiff's predecessors-in-title and Perusahaan Bumitulin (PB) with respect to the use of the unregistered trademark "Neem" and "Neem Active" ("Neem/Neem Active") in Malaysia in relation to the products being distributed in the designated countries.

[3] The plaintiff is the respondent this appeal and the defendants who are the appellants here are parties related in one way or another to Perusahaan Bumi Tulin Sdn Bhd ("PBTSB") and the third defendant. The High Court suit is Suit No: WA-22IP-21-02/2028 ("22IP Suit") which is the current Civil Appeal No: W-02(IPCV)(W)-551-03/2019 ("Appeal 551").

[4] The plaintiff succeeded in its cause of action under breach of contract, passing off and unlawful interference of trade where the use of the competing trademarks on toothpaste was concerned.

[5] There was also another related case heard together in the Court below where the plaintiff had applied for the second defendant's registered trademark "Dr Neem" to be removed. The second defendant was the sole defendant in the original originating summons action which was later converted into a writ and heard together. The High Court Suit is Suit No: WA-24IP-5-03/2018 ("24IP Suit") and the appeal therefrom to this Court is Civil Appeal No: W-02(IPCV)(W)-552-03/2018 ("Appeal 552").

[6] Essentially after the termination of the last of the 3 agreements, the plaintiff discovered that the defendants had used the trademark "Dr Neem" to pass off their products as that of the plaintiff in that the defendants had misrepresented and created confusion or deception vis-à-vis the "Neem/Neem Active" trademark of the plaintiff.

[7] The learned Judge found that the defendant in 24IP Suit with respect to Trademark Registration No 2014001321 for toothpaste had been obtained by fraud on the Registrar of Trademark as well as having created confusion or deception as against the plaintiff's "Neem/Neem Active" trademarks.

[8] A permanent injunction was inter alia granted in favour of the plaintiff and an order was made to have the second defendant's trademark "Dr Neem" rectified by entering a limitation to exclude its application to toothpaste. There were also other reliefs granted in favour of the plaintiff and the judgment is reported as Jyothy Laboratories Limited v. Puaneswarsn Renganathan and 2 Ors and Another Suit at paras [106] and at [107] the learned Judge dismissed the third defendant's counterclaim in 22IP Suit.

[9] In the High Court both the 22IP Suit and 24IP Suit were heard together and as expected the appeals by the respective defendant(s) were also heard together in the appeals before us.

The Parties

[10] The parties shall be referred to as the plaintiff and defendants or sometimes by their respective names for clarity and to avoid confusion of characters.

[11] The plaintiff in both the Suits who is the respondent in both the appeals is Jyothy Laboratories Limited ("Jyothy Lab"). The first, second and third defendants (D1-D3) in 22IP Suit are Puaneswaran a/l Renganathan t/a TSR Herbal World, Bumitulin Herbal World (M) Sdn Bhd ("Bumitulin") and Thangaraj Rajoo a/l Malayappan ("Rajoo") respectively. Rajoo also trades as the sole-proprietor under the name and style of PB.

[12] The sole defendant in 24IP Suit is D2 in 22IP Suit, Bumitulin.

The Plaintiff And Its Predecessors-In-Title

[13] The Calcutta Chemical Company Ltd ("CCCL") of