The main issues discussed in this case are that the canned food, specifically fried dace with salted black beans and unsalted beans, bearing the mark “Eagle Coin” are sold in the Defendant’s supermarket located in Borneo city of Kota Kinabalu. Plaintiffs filed a suit against the Defendant, claiming that the Defendant is infringing their registered trademark and the Plaintiffs also claimed for passing-off.
Under the tort of passing-off, there are three essential elements to be considered:
- That the Plaintiffs have goodwill attached to the business regarding the mark used by the Plaintiffs in respect of the Plaintiffs’ s or services;
- That the Defendant has misrepresented to the public by using a mark which is likely to confuse or deceive the public to believe that the Defendant’s goods or services are that of the Plaintiffs’; and
- That there is a likelihood of damage to the Plaintiffs due to the Defendant’s misrepresentation.
The 3rd Plaintiff is the sole registered user of the “Eagle Coin” trademark in Malaysia and has been marketing the fried dace with the “Eagle Coin” trademark for quite some time. In fact, the Defendant had previously purchased the good of the 3rd Plaintiff and sold the good in the Defendant’s supermarket. Therefore, the 3rd Plaintiff established that there is goodwill attached to the fried dace that they marketed in Malaysia with the “Eagle Coin” trademark. The 3rd Plaintiff also established at the trial that the good sold by the Defendant, despite the common origin, is not the same good that is sold by the 3rd Plaintiff as the Defendant’s good does not comply with the requirements of Malaysian law.
The 3rd Plaintiff’s good complied with the requirement of Malaysian law including “halal” requirement whereas the Defendant’s product did not. In the premises, the reputation of the 3rd Plaintiff would be damaged if Malaysian customers confused the source of the Defendant’s product because of the common identical trade mark and this case, the Plaintiffs had succeeded in establishing the claim under the tort of “passing-off”.
In establishing whether there has been an infringement or not, the non-arguable facts were considered :- (1) the 1st Plaintiff was the registered owner of the “Eagle Coin” trademark in Malaysia; (2) That the 2nd Plaintiff and is authorised to market canned fried dace with the said trademark; (3) That the 3rd Plaintiff is the sole registered user of the “Eagle Coin” trademark in Malaysia and (4) That the Defendant is neither the registered owner or registered user of the “Eagle Coin” trademark in Malaysia. Based on the above facts, the Defendant did not disagree that no permission was obtained from the 3rd Plaintiff for marketing the product in Malaysia. In respect of the issue of consent from the registered proprietor of the trademark or its subsidiary, i.e. the 1st Plaintiff and 2nd Plaintiff, the only evidence tendered was that Defendant purchased the s or caused it to be purchased from one of the outlets of the 2nd Plaintiff in China. Therefore, the Judge had found that the trademark rights of all the Plaintiffs had been infringed by the Defendant.
Accordingly, the Judge had found that the Plaintiffs have succeeded in proving trademark infringement and passing-off against the Defendant and ordered the Defendant to pay costs of MYR30,000.00 to the Plaintiffs.[:]