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Malaysia – The Bitter Battle For Better Chocolate

In the global endeavour to afford protection to GIs, Malaysia has been an active crusader. There are a large number of GIs particular to Malaysia such as Sarawak Pepper, Sabah Tea, Borneo Virgin Coconut Oil and Kelantan Budu (anchovy sauce), to name a few. In 2000, the Malaysian Government enacted the Geographical Indications Act, under which registered GIs were given territorial protection for ten years from the date of filing (renewable every ten years as long as they are in use). Although registration is not compulsory, it is actively encouraged to protect the interest of producers and consumers. Non-registration does not put the GI in public domain (available for use by all and sundry) though, of course, in case of a dispute the court would be inclined to adjudicate on the tort of passing–off in the extended form rather than in the classic form.

Recently the High Court (Intellectual Property), Malaysia adjudicated in such a dispute (Suit No: D2-22-1475-2005) between an association – Des Fabricants Suisses De Chocolat (the plaintiff), representing chocolate producers of Switzerland and a local Malaysian company, Maestro Swiss Chocolate Sdn Bhd (the defendant). The Plaintiff’s contention was that the word Swiss in Maestro Swiss, used by the Defendant on their chocolate products, would in all likelihood mislead the Malaysian populace into believing that the locally produced chocolates were actually real “Swiss” chocolates from Switzerland, thereby causing dilution and usurpation of goodwill of all chocolate manufacturers from Switzerland  (the Chocosuisse Union had fought a similar case in 1999 against Cadbury in UK). The Plaintiff further argued that use of the word Swiss in relation to chocolates not only denoted the place of origin (Switzerland) but also conveyed certain significance and meaning in terms of quality and reputation of the chocolates. As evidence, a number of people, including consumers and industry specialists, testified. They attested that Swiss chocolates had acquired a distinct and discrete reputation in Malaysia and around the globe as premium high quality chocolates.

In their defence, the Defendant argued that the words ‘Maestro Swiss’ comprised only its corporate name and the actual brand name for its chocolates was Vochelle. Furthermore, the use of words Maestro Swiss on the chocolate packaging and the entirety of the packaging get up and trade dress, are distinctive of the Defendant’s and cannot be misrepresentative. Concluding, the Defendant reiterated that the Maestro Swiss logo is not used to denote GI and is only a trade source. It urged the court to evaluate the mark on the basis of the fundamental tenet of trademark law – a mark should be considered in its entirety and not upon its individual components.

The Court carefully considered all the evidence as well as the case law submitted by both sides and concluded that the word Swiss meets all the distinguishing factors required for GI with respect to chocolates and hence should only be used for chocolates manufactured in Switzerland. This would ensure that the premium-quality tag attached to these chocolates is preserved. Consequently, the words Swiss Chocolates could be protected by means of a passing-off action in the extended form.

On the issue of whether the use of the words Maestro Swiss by the Defendant, along with the brand name VOCHELLE on its chocolate products would tantamount to passing off in the classic form, the Court analyzed the chocolate packaging in great detail, considering a number of factors to ascertain the significance and purpose of the disputed words. The fact that Maestro Swiss was part of the corporate name of the Defendant (and in practice had been for about a decade) and that the use of the words on the trade dress was not confined to Swiss alone but to the entire arrangement of elements on the packaging weighed heavily on the court’s mind.  It noted that the presentation of the defendant’s products was characteristically different from that of the plaintiff’s and had distinct and individualistic elements. Consequently, the court ruled that no reasonable person would be confused and misled by the words Maestro Swiss into believing that VOCHELLE was a Swiss chocolate. It negated possibility of a damaging association or deception capable of giving rise to a cause for complaint and dismissed the plaint.