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Malaysia – Acushnet Obtains Summary Judgment

US golf equipment manufacturer Acushnet, which owns the Titleist trade mark in Malaysia, has managed to obtain summary judgment against a local company in the case Acushnet Company v Metro Golf Manufacturing Sdn Bhd [2006] 7 CLJ 557.

The proceedings began in 2004 when, following the discovery of documents incriminating the defendant, the enforcement division of the Ministry of Domestic Trade and Consumer Affairs raided the defendant’s premises. As a result of the raid, several items bearing the Titleist trade mark were seized, including 8,000 zipper heads, 23 bases, 150 metal plates, 25 rubber labels, and invoices and delivery orders.

The plaintiff then sued the defendant for trade mark infringement and requested various reliefs including a permanent injunction, an order for delivery up of the infringing goods, the records and the names and addresses of all parties who had supplied the defendant with the infringing goods, and damages. Shortly after the suit was served on the defendant, the plaintiff applied for summary judgment.

The defendant, however, claimed that they had purchased the goods from a company known as Zonson Sports (Malaysia), which had represented to them that it was appointed by the plaintiff to manufacture and deal with the plaintiff’s goods in Malaysia.

The defendants also claimed that no charges had been brought against them by the enforcement division and that summary judgment is not appropriate in this case as there are several triable issues.

The Court, however, found that there was clear infringement of the plaintiff’s trade mark by the defendant as they had used a mark that was identical to the plaintiff’s. As to the purchase of goods from Zonson, the plaintiff denied that Zonson was its agent. The Court found that there was no evidence that Zonson was a servant or agent of the plaintiff and that in any event the defendant had failed to conduct any due diligence as regards the representations made by Zonson and cannot shift the burden onto the plaintiff.

The Court went on to hold that by disposing of the goods Zonson was itself infringing the plaintiff’s trade mark, and that the defendant had also infringed the plaintiff’s trade mark by purchasing the goods and selling them to third parties at a profit. It is not open to the defendant to claim innocence, since there is no such defence in trade mark law.

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