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Malaysia – Functional or utilitarian characteristics of an article of manufacture are not protectable under passing off law

Alfa Laval ( M) Sdn Bhd v Ng Ah Hai & Ors [2008] 5 MLJ 344

The Plaintiff, Alfa Laval (M) Sdn Bhd, a manufacturer and supplier of plate heat exchangers and plate under the brand ‘Alfa Laval’ applied for an injunction to inter alia restrain the Defendants from passing off imitation plate heat exchangers as goods of the Plaintiff.

The Plaintiff claimed inter alia that the Defendants manufactured and sold heat plate exchangers and plate with distinctive features identical those of the Plaintiff amounted to passing off.

The Plaintiff did not base their cause of action on their ‘Alfa Laval’ trade name or brand but chose to rely of the distinctiveness of the features of the plate heat exchangers as the foundation of their cause of action.

The Plaintiff claimed that the plate heat exchangers had the following distinctive features:-

i. a single step process. The Plaintiff claimed to be pioneers in the field being the first to use

the process in the manner used by the plaintiff to manufacture the plate.

ii. the two corrugated distribution areas with a ‘chocolate’ and ‘herringbone’ pattern and design.

It was the Plaintiff’s contention that these patterns are not common or standard as all

manufacturers have their own specific features of the distribution area or corrugation on their


iii. the specific dimension of the plate. The Plaintiff contends that no single manufacturer of the

plates in the industry manufacturers plates with the same or exact replication of the specific

dimension of the Plaintiff.

The Plaintiff claimed that these main features clearly distinguished the Plaintiff’s plate heat exchangers and plate from those belonging to other manufacturers in the same industry.

The Defendants did not dispute the facts and in fact admitted that they were selling the plate heat exchangers and plates, which the Plaintiff claims were imitation of its products.

The plate heat exchangers sold by the Defendants similarly used the alphabets “AL” which stand for Alfa Laval in the names given to the models of their product and also used the letter “M” followed by a number to denote size of the unit similar to that used by the Plaintiff. In addition, the colour of the exterior of the plate heat exchanger was also coloured blue, similar to that of the Plaintiff’s.

Based on the affidavit evidence, the court concluded that the plate heat exchangers were of a purely functional design.

The court held that the single step pressing process is a technical step in the manufacturing process. It has no relevance for it does not manifest itself and is not relevant in the manufactured form of the plate heat exchangers. Further the Court found that the ‘chocolate’ pattern is intended to ensure even distribution of the fluid over the plate surface while the ‘herringbone’ pattern in the main heat transfer are creates maximum turbulence. Both these features were in place to ensure high heat transfer efficiency and eliminate dead spots that can lead to scaling or corrosion and thus were functional.

In addition, the specific dimensions of the plates in terms of width, length, position of inlets and outlets parts and the pressing depth are functional areas to enable the plates to be assembled and stacked together in the plate heat exchanger and was also functional and not as a source identifier to distinguish the products from others.

The Plaintiff had failed to show any goodwill was attached to the above technique, process and measurement etc of its plate heat exchangers and also failed to show that due to a misrepresentation there was actual or potential damage to the goodwill attached to these attributes.

The plantiffs plate heat exchangers were marketed and sold under the brand ‘Alfa Laval’ and not by their functional attributes and therefore it is the brand that distinguished the Plaintiff’s products from other manufactures. The functional attributes had not enabled them to earn goodwill.

The Court held that “such purely functional designs cannot form the basis for a valid distinctive get-up for passing off. Functional or utilitarian characteristics of an article of manufacture are not protectable under passing off law for they cannot be legally distinctive in fact and in Law. Such articles are purchased because they perform a function and purpose required by the purchaser and not because these functional attributes proclaim that the plate heat exchangers and plates are manufactured by the plaintiff. That source identifying function is performed by their trade mark ‘Alfa Laval'”.

Accordingly, the Court held that the Plaintiff had not made out a case for passing off against the Defendants.