MALAYSIA: JLLP APPEAL’S ALLOWED

[:en]On March 2019, the Court of Appeal delivered a judgment in a case of Appraisal Property Management Sdn. Bhd.; JLL Property Services (Malaysia) Sdn. Bhd; & Jones Lang Wootton Ltd (hereinafter referred to as “JLLP”) v Singham Sulaiman Sdn. Bhd (hereinafter referred to as “SSSB”) in which the JLLP appealed against the decision of the High Court in the 1^st suit, whereby the High Court ruled against JLLP on the SSSB’s claim for the tort of passing off of their real estate services and dismissed the JLLP’s counterclaim and expunged the suit to remove Jones Land Wootton Registered Trademarks from the Register. This appeal arises from two consolidated suits premised on the tort of passing off and counter passing off in regarding to the aforementioned matters. For clarity, in the 1^st Suit, SSSB, Singham Sulaiman Sdn. Bhd, claims that JLLP have committed tort of passing off their real estate services of those of the SSSB’s under the names of “Jones Lang LaSalle” and/or “JLL” while the JLLP counterclaims against the SSSB based on the tort of passing off, claiming that SSSB has passed off his services to be associated with services offered by the Defendant. Evidence brought forward by the SSSB shows that SSSB uses several trademarks in its real estate business, i.e. (1) “Jones Lang Wootton”; (2) Jones Lang Wootton composite mark for services under Class 36; (3) “Jones Lang”; and (4) “JLW” mark.   In the 2^nd Suit, JLLP applies to the Court to remove the aforementioned trademark (2) as they claimed that the mark was wrongfully registered by SSSB contrary to the terms of a Deed of Sub-Licence dated 6 July 1993 and Deed of Covenant dated 1 September 1992 signed by the SSSB.  After these suits and a full trial, the High Court allowed SSSB’s claim in part and dismissed JLLP’s counterclaim as well as the 2^nd suit. JLLP, aggrieved with these decisions, proceeded to appeal against the High Court’s decision at the Court of Appeal.  

In the Deed of Sub-Licence agreed between JLW Pacific Ltd. and SSSB, the former is enabled to continue using Jones Lang Wootton name and JLW mark. Following a series of assignments, the London proprietors have assigned all IP rights, including trademarks and goodwill, to JLWL. In 2002, SSSB entered into a “Global Operating Framework” or GOF and in 2006, SSSB applied to register Jones Lang Wootton Registered Trademark (2) and was allowed by the Register. GOF was then terminated in 2012. The High Court decided on the bases of if SSSB committed the tort of passing by associating itself with Jones Lang after the termination of the GOF and whether SSSB’s registered trademarks ought to be expunged in view of the above. However, as mentioned earlier, the High Court ruled in favour of SSSB as the Defendants were unable to adduce evidence in the 1^st suit. The High Court as also of the view that SSSB has not misrepresented its real estate business as being associated with the services offered by the JLL Group and their counterclaims is an afterthought which was filed to stifle SSSB’s claim. The 2^nd Suit was dismissed because JLLP was not aggrieved by the Registered Trademarks and the trademarks were not registered by way of fraud on the Registrar.

In this Appeal, the Court of Appeal has found that the Counsel for the Defendants pointed to the Court only the issue of alleged illegality and the collateral matters arising from the alleged illegality, namely on lifting the corporate veil, loan documents, etc. These has resulted in the High Court losing its focus on the relevant issues arising under the two suits which are on passing off, counter-passing off, the expungement of the Plaintiff’s registration of the JLW Marks in its own name. In view of the error made by the High Court, the Court of Appeal made the decision to allow the appeal and remit the case for retrial. The Court also unanimously decided that the appeal must be allowed with cost and the High Court’s decision to be set aside followed by a retrial before another judge on the alleged trademark infringement and expungement of the SSSB’s registered trademarks.[:]