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Manage your Intellectual Property in South-East Asia

Case Study 7 – Trade mark infringement / ’passing off’ case in Malaysia

Background
A British manufacturer of biscuits has been selling cookies in Malaysia for more than 20 years, and has had a registered trade mark 'ChipsMore' for these goods during that time.

Two years ago a Malaysian company started manufacturing and selling cookies under the brand 'ChipsPlus.'

Advice
The British company was advised that they could sue the Malaysian company for trade mark infringement and also 'passing off', which can be used to enforce unregistered trade mark rights and exists in Malaysia as it is a Common Law country.

For trade mark infringement, the British company had to prove that the Malaysian company's brand so nearly resembled their own that it was likely to deceive or cause confusion in the course of trade in relation to their own products.

For 'passing off' the British company had to prove that the Malaysian company was misrepresenting their goods as being connected with the British company. They also had to prove that their own brand had acquired 'goodwill' and reputation in the marketplace, and that they would suffer damage as a result.

Outcome
The Malaysian court held that 'ChipsPlus' was an infringement of 'ChipsMore' as they were similar marks for identical goods and likely to deceive or cause confusion. In particular, the 'Chips' part was phonetically identical, the suffixes 'More' and 'Plus' have a similar meaning, and the formatting of the words was similar.

In addition, the claim for 'passing off' was successful. The British manufacturer had been selling cookies in Malaysia for over 20 years and therefore had no difficulty in demonstrating substantial goodwill and reputation in the brand. The appearance of the 'ChipsPlus' product was held to be strikingly similar to the 'ChipsMore' product, including similar colours, fonts and other aspects of the composition, which was indicative of misrepresentation. The court determined that the British manufacturer would therefore suffer damage (loss of business) if the Malaysian company was allowed to continue.

Lessons Learnt:

  • Register your brands as trade marks in Southeast Asia
  • A brand does not have to be identical to infringe a trade mark
  • Some countries provide a Common Law right of 'passing off' (but the burden of proof is higher)
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