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Case updates - Intellectual Property

 
High Court allows parallel-import
In Kenwood Electronics (M) Sdn Bhd & Anor v Profile Spec (M) Sdn Bhd & Ors [2007]2CLJ732, the first plaintiff was a company incorporated in Malaysia and carrying on business as the exclusive distributors of Kenwood car and home audio-video equipment in Malaysia for the second plaintiff, Kenwood Corporation, a company incorporated in Japan. The second plaintiff was the registered proprietor of the Kenwood trademark. The plaintiffs alleged that the defendants in their normal course of trading had deceived members of the public by passing off their products as if they were the same Kenwood products with the same benefits as sold by the plaintiffs in Malaysia. The first plaintiff contended that it had widely advertised and promoted its Kenwood audio-video products in Malaysia, and therefore had acquired valuable goodwill in the name "Kenwood" in Malaysia when used in connection with audio-video equipment. The first plaintiff also contended that the defendants by sourcing, selling and importing audio-video equipment from the second plaintiffs distributor or distributors elsewhere had affected or would probably affect the first plaintiffs goodwill. The second plaintiff contended that the defendants had infringed its rights as the registered proprietor of the trademark in Malaysia, by selling equipment bearing the trade name "Kenwood" contrary to the wishes of the second plaintiff. Therefore, the plaintiffs sought an order to stop the defendants from importing and selling in Malaysia without the consent of the plaintiffs Kenwood audio-video equipment bearing the Kenwood brand name, and for monetary compensation. In dismissing the plaintiffs claims, the High Court held that the Kenwood audio-video equipment sold by the defendants was genuine Kenwood products, and therefore the complaint of breach of trademark was unfounded. The High Court further held that the mere fact the activities of the defendants caused the plaintiffs to lose potential profits did not make a cause of action.
 

In Walton International Ltd v Yong Teng Hing t/a Hong Kong Trading Co ([2007] 4 MLJ 133) Walton International Limited was an associated company of Giordano Limited, both were part of the group of companies owned by Giordano International Limited of Bermuda, a public-listed company on the Hong Kong Stock Exchange. The appellant was the registered proprietor of the GIORDANO trade mark for various goods in Malaysia and many countries throughout the world. The first respondent was the sole proprietor of Hong Kong Trading Co and had also applied to register the GIORDANO mark in respect of glasses and sunglasses in Class 9. The Registrar of Trade Marks accepted the application. The appellant filed opposition against the registration of the mark. The Registrar dismissed the opposition. The appellant appealed to the High Court contending that it was the originator of the GIORDANO trade mark and that the first respondent had copied that mark, thereby misappropriating the reputation, goodwill and commercial advantage in the appellant’s mark. The first respondent argued that it was the first user of the mark in respect of Class 9 goods in Malaysia as it had been selling glasses and sunglasses under the GIORDANO mark since 1992. In dismissing the appeal, the High Court held that the first respondent was the first person to use the GIORDANO mark in respect of goods in Class 9 in Malaysia and that there was no evidence of use by the appellant of the mark on Class 9 goods, either prior to or after the first respondent’s trade mark application. Therefore, the appellant had no reputation or goodwill in the GIORDANO mark in connection with goods in Class 9. Consequently, the court held that there was no risk of confusion as alleged by the appellant. The Court also made reference to the fact that the appellant, having failed in its opposition of the Class 14 application for GIORDANO opted not to appeal the decision, and allowed the mark to proceed to registration. This to the Court was a clear indication that the appellant had accepted the fact that it cannot claim monopoly over the GIORDANO mark. The appellant had filed an application for leave to appeal to the Court of Appeal.