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[2017] 10 CLJ 337

Facts of the Case:

 10 containers of MALIMBO cigarettes was seized by customs for false customs declaration.
Discovered by Pf and had filed a suit against 1st Df.

Pf’s case

 2 Witnesses – Mr Foot & Ms Virawaty

 Mr Foot
o MARLBORO used in Malaysia since 1956 – long and extensive use – acquired
valuable goodwill and reputaition
o Discovered MALIMBO cigarettes in 10 containers
o Spanish TM Office rejected application for MALIMBO. Appeal also dismissed – likely
to cause confusion with MARLBORO
o Egypt TMO issued exam report – there was conflict between MALIMBO and
o Pf successfully opposed MALIMBO in Angola and Paraguay based on MARLBORO
o Df’s mark damaged Pf’s business, reputation and goodwill – diluted and diminish
brand equity
 Ms. Virawaty
o MARLBORO marks include “roof device” and “roof line device”
o First used in cigarettes in 1885
o Cause confusion because
 Incorporated roof device and roof line device
 Same colour scheme
 Words confusingly similar – visual similarities, same syllables, similar central
letters, same word structure
o Pf adopted variations of devices
o MALIMBO similar in terms of get up, positioning of word and overall impressions
o Cross exam:
 Not aware if Malimbo sold in Malaysia. Agreed that public had not seen
Malimbo as could not trace whether it was sold in rural areas in Malaysia.

Df’s case

 MALIMBO registered in UAE and Lebanon. A pending registration in Egypt.

 Freely sold in Middle East and North Africa.
 Containers transshipped from Malaysia to Egypt. 5th Df made erroneous customs declaration.
Compound paid to Cusoms.
 MALIMBO not sold in Malaysia or SEA. Mark never used in Malaysia – no confusion or
 Mark is distinctive – does not infringe MARLBORO
 Has not passed off MALIMBO as MARLBORO
 Not deemed as credible witness – has not adduced documents for claims – Maks in UAE,
Egypt, Lebanon is applied under different names and not the 1st Df’s name.

Did 1st Df infringed MARLBORO?

 1st Df argued no because:

o Not made in the course of trade as
 It is not imported
 Not sold in Malaysia
o Referred to Montex Holdings v Diesel
 A registered proprietor in an EU member state can only prohibit transit of
goods in that EU member state if those goods are subject to an act of a third
pary which necessarily entails those goods being put on the market of
Transit EU member state
o Referred to Nokia Corporation V HM Commissioner of Revenue & Customs, Eli Lilly v
8PM chemist ltd, L’Oreal SA v eBay International AG
 Infringement only applied for goods placed on market and not in transit
 Position is different if an act of a third party puts it on the market
 Mere risk of diversion is not sufficient to justify that goods will be put on the
o Action should have been made in Egypt, not Malaysia
 Elements of Infringement
o Relevant provisions: S3(1), 3(2), 35,38(1)
 Tohtonku sdn bhd v Superace (M) Sdn Bhd
o Leo Pharmaceutical Products Ltd AS v Kotra Pharma (M) Sdn Bhd
 5 Elements
 Df is not a registered proprietor/user √
 Df used a mark identical or confusingly similar
 Used in course of trade
 Used in relation of goods or service
 Used mark in manner to be taken as being a trade mark or
importing a reference
 “USE” of mark in Malaysia
o Doretti Resources v Fitters Marketing
 Represented in print or visual form
 Mark used upon goods
 Mark used in physical relation to goods
 Mark used in other relation to goods
o USE is to be interpreted as to 3(2)(a) and (b) – can’t be used on the meaning of
“goods in transit” and “import” – can’t derive definitions from other acts as it only
applies to written law in question.
o MALIMBO presented in visual form, used upon the cigarettes, used in Malaysian
 “FREE ZONE” is still in Malaysian Territory – Free from customs duty, excise
duty, SST
 Philip Moris SA v Ong Kien Hoe
 Is MALIMBO confusingly similar to MARLBORO?
o Sinma Medical Products v Yomeishu Seizo Co Ltd
 Ocular examination
 Evidence of what happens in practice in the particular trade
o Leo Pharmaceutical
 Idea of the mark
 Elements of the mark
 Imperfect recollection
 Aural and visual aspect of a customer towards the mark
 Circumstances of trade
o Sandow’s Ltd Application
 Extends to a situation where a customere merely identifies or confuses
product of producer A with that of producer B
o MARLBORO’s distinguishing features are roof and roof line device and its variations
– CT agreed with Ms. Virawaty – has same nature of consumers, retailers, ideas or
concept – a trader islikely to be deceived/confused
o *Decisions of foreign authority
 GS Yuasa Corporation v GBI Marketing Malaysia
 Decisions could be considered if an identical or similar issue arises
regarding the same product but is not bound to the decision.
 Affirmed by COA
 Is MALIMBO used “in the course of trade”?
o S3(1), Mesuma Sports v Majlis Sukan Negara, Pendaftar Cap Dagangan
 Does not need to be a commercial entity – goodwill owned by use in
relation to the mark – for branding can be considered in course of trade –
Affirmed by FC
 Aristoc Ltd v Rysta Ltd – “Trade” must be controlled by its context –
association with goods in the course of production and preparation for the
market - for ultimate delivery to customer
 Tay Pek San – Infringement of Trade Marks under the Trade Marks Act 1976
– used not in a domestic, social or other non-trading manner – phrase is
wide enough to cover steps necessary for the production of goods up to the
time of their ultimate sale or delivery to the customers. No requirement
that there be an actual sale.
o Not confined to manufacture, import, offer to sell, sale, marketing, promotion or
advertisement of goods in Malaysia.
o Transhipment = use in course of trade
 Business conducted for profit, of a specified natire, and/or transaction with
a person for a thing
 For ultimate delivery for sale in Egypt
 Quantity shows intent to use for trade
o Goods are not bona fide in transit – deemed as uncustomed goods under Customs
Act – breached customs act – false customs declaration
 MALIMBO used in relation to goods – cigarettes
 MALIMBO used in a manner most likely to be used as a trademark – Yes

Rejection of DF’s Arguments

 Did not rely on S70B

 Nokia and Montex only applicable to EU states
 Payment of coumpound is not a defence to infringement and passing off

Is MALIMBO passed off as MARLBORO?

 Elements:
o Erven Warnink v Townsend & Sons (Diplock)
 Misrep by Df
 Misrep made in course of trade
 Misrep made to ultimate consumers
 Calculated to injure business or goodwill
 Causes actual damage
o Fraser
 Selling of a class of goods which the TM applies
 Class of goods is clearly defined and distinguishes itself from other similar
 Because of the reputation, there is goodwill attached
 Pf is owner of goodwill
 Pf is to suffer and likely to suffer substantial damage
o Reckitt & Colman Products v Borden Inc (Oliver)
 Pf has goodwill attached to goods
 Df has misrep to the public to lead to believe the Df’s goods are of the Pf’s
 Pf to preve he suffers or is likely to suffer damage
o Damage:
 Yong Sze Fun v Syarikat Zamani Hj Tamin
 Only to show probability of damage to goodwill
 Seet Chuan Seng v Tee Yih Jia Food Manufacturing Pte Ltd
 If in direct competition, will redily infer likelyhood of damage to
goodwill through loss of sales and loss of exclusive use of Pf trade
 CT found that Df had passed off MALIMBO as MARLBORO.

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