The High Court of Malaya had approved a trade description order filed by Pt. Garuda Food Putri Jaya TBK (hereinafter referred as “Applicant”) under the Trade Descriptions Act 2011 as there is a trade mark infringement occurred for the genuine products that were brought in through an unauthorized parallel importation. It was found that the registered trade mark proprietor has legal rights to take legal action against the parallel importers and those connected with them for trade mark infringement.
In this case, the Applicant is the registered proprietor for the mark (TM No. 2018000229) in class 30 in Malaysia. The Applicant produces, manufactures and sells its “Gery” products in Indonesia since 2012 and they then expanded their products to Malaysia with crackers with cheese and chocolate flavors.
Through a thorough market research, the Applicant’s products meant for export and sale in the Malaysian market have different packaging than the ones sold under the Indonesian market. This is to ensure that the quality and the taste profile of the crackers are not affected. At the same time, the Applicant ensured that they do not authorize, give consent or license to any party including its exclusive Malaysian distributor to distribute or sell the Applicant’s products made for the Indonesian market in Malaysia. Until recently, the Applicant discovered that their “Gery” products meant for the Indonesian market were sold in Malaysia through unauthorized importation.
By virtue of Section 8(3) of the Trade Descriptions Act 2011, it is presumed that the infringer indulges in false trade description considering that the infringing trade mark is identical to the above-mentioned registered mark unless the contrary is proved by the infringer and Section 9(1) of the Trade Descriptions Act 2011, allows an aggrieved party to file a declaration at the Court if the infringer indulges in false trade description if the infringing mark is not identical but can be passed off at the registered trade mark.
In this case, the Court had granted a declaratory order under both of the above-mentioned sections for the aggrieved party based on the affidavit evidence provided by the Applicant as there has been infringement of the registered mark by importers of the products that carry the “Gery” mark manufactured specifically for the Indonesian market. These infringing products are not counterfeit products but the products of the Applicant brough into Malsyia through unauthorized parallel importation.
It is particularly important to note that these are food products and unauthorized importation of infringed goods may pose health and safety risk to the Malaysian consumers as the standards and requirements required by the Ministry of Health are not the same as in Indonesia. Moreover, these infringed imported products may have been expired and therefore the freshness of the products might have been jeopardized and it might damage the Applicant’s reputation and goodwill. On the same note, the parallel importation of these products is also an unfair business competition to the Applicant and its authorized exclusive Malaysian distributor.