The following paragraph summarizes the relationship between the Plaintiffs and Defendants. The 1st Plaintiff is in the business of manufacture, distribution, and retail of rice under various brand names. The 2nd plaintiff is the Managing Director of the 1st Plaintiff and the mother of the 2nd Defendant. The 1st Defendant shares the similar business nature of the 1st Plaintiff under various trade names. The 2nd Defendant is the Managing Director of the 1st Defendant. This suit follows two earlier suits: During the 1st Suit, the Plaintiffs claimed that the Defendants have infringed the Plaintiff’s registered trademarks, the 1st Plaintiff’s copyright of the rice packaging, and have committed the tort of passing off in respect of the Plaintiff’s goods and services. The Plaintiffs also alleged that the Defendants’ unlawful interference with the Plaintiff’s course of trade had impacted their business. In a 2nd suit, the Plaintiffs claimed that the Defendants have infringed FAIZA LOGO TM and have unlawfully interfered with their course of trade by infringing the trademark. Following the two suits by the Plaintiffs, the Defendants counterclaimed, among others, that; (1) the 2nd Defendant owns the copyright in the 1st Defendants Rice Packaging and the 1st Plaintiff’s Rice Packaging, (2) the Defendants are the rightful proprietors of 1st Defendants marks and are entitled to the trademark applications, (3) the 2nd Defendant is the beneficial owner of 30% shares in the 1st Plaintiff, and (4) an injunction to restrain the Plaintiffs from unlawfully interfering with the 1st Defendant’s trade in connection with the use of Defendants’ marks and rice packaging in their course of trade.
In the earlier suits, The High Court had earlier ruled in the favour of the Plaintiffs. The High Court dismissed the Defendants’ counterclaim and allowed the Plaintiffs’ claim. The High Court found that there was no basis for the Defendants’ shares and monetary claims; the Defendant’s rice packaging has indeed infringed the 1st Plaintiff’s copyright; the 2nd Plaintiff is the creator and 1st user of the Faiza mark while the 1st Plaintiff is the 1st user of the Plaintiff’s Registered Trade Marks; the 2nd Defendant has no copyright which has been infringed by the Plaintiff, as so he has claimed, therefore, the Defendant is unable to apply to the Court to expunge the Plaintiffs’ Registered Trademark Registry and that the use of the 1st Defendants’ marks have evidently infringed the Plaintiffs’ Registered Trademarks under Section 38(1)(a) of the Trade Mark Act. Furthermore, the 1st Defendant has committed the tort of passing off its business and goods sold as those of the 1st Plaintiff.
In the subsequent appeal by the Defendants’, the Defendants’ were seeking a declaration that the 2nd Defendant owns the copyright in the 1st Defendant’s rice packaging and 1st Plaintiff’s rice packaging whilst claiming to be the rightful proprietor of the 1st Defendant’s Mark and their right to file trademark applications and to expunge the Plaintiffs’ registered trademarks from the Registry. However, the Court of Appeal found that the Defendants did not deny the Plaintiffs are the registered proprietors of FAIZA marks and they have indeed used marks that were similar to that of the Plaintiffs’. The Defendant’s arguments were that the FAIZA marks were erroneously entered into the Registry or have been entered into the Registry without sufficient cause as the 2nd Defendant claims that he is the proprietor of the copyright which subsists in the works of the 1st Plaintiff’s rice packaging. The Defendants’ claims were found to be baseless as, in the context of FAIZA mark, the Plaintiffs were undisputedly the first user of the mark since its corporation under its previous name, “Kumpulan Syarikat Faiza”, that later changed its name to “Syarikat Faiza Sdn. Bhd.”, dating back to 1992 until the present. On the contrary, the Defendants were incorporated in 2013 and changed its name to the present name in 2014. Furthermore, the Defendants did not deny that the Plaintiff were the rightful registered proprietors of FAIZA. The Defendants also failed to satisfy the Court that the Defendants own the copyright in the 1st Defendant’s rice packaging and that they are the rightful proprietors of the 1st Defendant’s mark. Adding on to that, the change of name to the 2nd Plaintiff to “Syarikat Faiza Sdn. Bhd” proves that there was already substantial goodwill in the name and it is well known in the business community of similar trade.
In view of that, the Court finds that the Defendant’s allegation that FAIZA marks had been registered without any sufficient cause is baseless. The Court dismissed the Defendants’ appeal with a cost of MYR10,000.00.[:]