In the case of St. John Ambulans Malaysia v PJ Uniform Sdn. Bhd., the High Court of Malaya in Shah Alam, found that PJ Uniform Sdn. Bhd. had infringed the registered trade mark of St. John Ambulans Malaysia (the “SJAM” emblem).
St. John Ambulans Malaysia (hereinafter referred as the Plaintiff) is a statutorily incorporated body with charitable objects. The Plaintiff relied upon the “SJAM” emblem for identification as well as promotion of its public profile. In July 2011, the Plaintiff was granted the Trademark Registration Certificate for the “SJAM” emblem in Class 25 for “articles of clothing, footwear, and headgear”.
PJ Uniform Sdn. Bhd. (hereinafter referred as the Defendant) is a private limited company engaged in the business of manufacture, sales, supply and retail of uniform clothing under the “Professor” brand name. In November 2012, it was found that two of the Defendant’s retail premises in Selangor were selling, and had in possession, T-shirts having the “SJAM” emblem imprinted on them despite being warned by the Plaintiff through a copy of warning notice.
The Plaintiff commenced a suit contending that the Defendant; had infringed the Plaintiff’s registered trade mark pursuant to Section 38 of the Trade Marks Act 1976 and/or had committed passing off of the Plaintiff’s “SJAM” emblem following Seet Chuan Seng & Anor v Tee Yih Jia Foods Manufacturing Pte Ltd [1994] 2 MLJ 770 and H&R Johnson Tiles & Anor v H&R Johnson (M) Bhd [1998] 4 MLJ 13.
The Court considered a few important issues in the trade mark law. Firstly, whether the Defendant’s use of the mark must be identical to constitute an infringement pursuant to Section 38(1)(a) of the Trade Marks Act 1976 or merely show resemblance so as to cause deception or confusion. The Court took the latter approach and concluded that the emblem used by the Defendant exhibited very close resemblance to that of the Plaintiff so as to cause confusion or deception. The Court found that there were three minute differences in the emblems which are not obvious unless a meticulous comparison is undertaken. Furthermore, the Court accepted the testimony of one of the Plaintiff’s witness that customers who had bought the T-shirt from the Defendant sought to return them to the Plaintiff in request for an exchange from the Plaintiff.