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The Test For Interlocutory Injunction In Trademark Infringement and Passing Off Tightens in Malaysia

In the recent Malaysian decision of Sanbos (M) Sdn Bhd v Tiong Mak Liquor Trading (M) Sdn Bhd [2008] 3 MLJ 100, the High Court dealt with the test of what would be sufficient to grant an interlocutory injunction in trademark and passing off matter.

The Plaintiff was the registered proprietor of the trademarks “CLUB 99” and “CLUB 999” being registration Nos. 88002152 and 97017342 respectively. In February 2005, the Plaintiff commenced this action claiming that the Defendant who was in the business of manufacturing, distributing and selling liquor and spirits using “TRIPLE 999” mark since November 1997, was guilty of infringing the Plaintiff’s trademarks and of the tort of passing off. The Defendant, who had been using their marks since 1997 without any interference, denied the allegations.

The Court held that in view of Sections 35 and 38 of the Trade Marks Act and Pianotist Co’s Application (1906) 23 RPC 774, the Plaintiff must prove that the infringing mark was so nearly resembling the Plaintiff’s mark as was likely to cause confusion, and the relevant test is to look at the marks as a whole, in particular their sound, look, distinguishing and essential features, the nature of the goods, customers as well as the surrounding circumstances.

Applying this test, the Court held that the word “TRIPLE” in the alleged mark “TRIPLE 999” was entirely different, both phonetically and visually from the word “CLUB” in the marks “CLUB 99” and “CLUB 999” following that the exclusive rights over the numeral “99” and “999” were disclaimed by the Plaintiff. The Court also observed that the Plaintiff was unable to adduce an acceptable market survey in an attempt to show possible confusion and/or deception and failed to adduce evidence that it had acquired goodwill and reputation in its “CLUB 99″ and CLUB 999” marks.

The Court further observed that the Plaintiff conducted the market survey more than 15 months after filing suit, therefore depriving the Defendant of the opportunity to file similar evidence in rebuttal. Moreover, the market survey was deemed unacceptable by the court due to elemental deficiencies since the methodology, results and totality of answers were not revealed, the questions were leading questions and the instructions given to the interviewers were not disclosed. Therefore, it was the view of the court that the purported market survey was unacceptable and lacked substantial justification to demonstrate possible confusion and/or deception created by the Defendant’s products bearing the “TRIPLE 999” mark.

The Court held that the Plaintiff failed to adduce evidence that it had been actively utilizing and/or promoting the “CLUB 99” and “CLUB 999” marks. The Defendant, however, began using its mark prior to the registration of the same and adduced evidence that it had sold a substantial amount of products bearing its “TRIPLE 999” mark since November 1997. With these facts taken into consideration, it was the view of the court it was not likely that the Plaintiff would suffer damages since it had failed to prove that it had acquired goodwill and reputation in its “CLUB 99″ and CLUB 999” marks.

The Court then applied the test in American Cyanamid Co v Ethicon [1975] AC 396 and held that there was no serious issue to be tried as there were obvious dissimilarities between the marks and the Plaintiff had no exclusive rights over the numerals. The balance of convenience also lied against granting an interlocutory injunction due to the delay of more than eight years.

The Court referred to the decision in Athletes Foot Marketing Associates Inc v Cobra Sports Ltd & Anor [1980] 97 RPC 343 and held that in dealing with cases involving trade restrictions, it would not be possible to apply the general procedure as the interlocutory decision will have a profound effect on the rights of the parties which cannot be undone, if at trial a different result is reached.

Therefore it appears that at the interlocutory injunction stage for trademark infringement passing off matters the mere fact that there is a serious issue to be tried may not in itself be sufficient, based on this decision a plaintiff would have to show an strong and clear case at the interlocutory stage.