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Tuesday, December 7, 2010

(22) Protecting your Trademarks

This seems like an interesting information which I received from a Trademark Agent. I thought it will be interesting enough to share with you all.
The purpose of this email is to create IP awareness among the public of the following High Court reported case pertaining to trademark laws. 

Ayamas Convenience Stores Sdn. Bhd. (the Plaintiff) v.
Ayamas Sdn. Bhd. (the Defendant)
[1995] 1 CLJ 137


In this case, the Plaintiff was the registered proprietor in Brunei of the trade mark "AYAMAS" in respect of meat, fish, poultry and games. The Defendant registered a company name known as Ayamas Sdn. Bhd. in the operation of the "Grandy's" fast food outlets.

The Plaintiff sued the Defendant for infringement of its registered trade mark and passing off.

The Plaintiff alleged that the Defendant infringed the Plaintiff's registered trade mark by using the word "Ayamas" in the operation of the "Grandy's" fast food outlets in such a way as to pass off the Plaintiff's trade mark and which was calculated to deceive customers into thinking that the goods sold by the Defendants are made by the Plaintiff.

The Defendant argued that the Plaintiffs reputation was in West Malaysia, not in Brunei. Hence, no customers were deceived and that Plaintiff had not proven existence of goodwill in Brunei.

Furthermore, the defendant argued that besides fried chicken, they had not sold other goods which were similar to the plaintiff's goods.

Outcome of the Case:
The court held that the claim for trade mark infringement failed.

The mere use of the business name of the Defendant similar to the Plaintiff's trade mark is not sufficient to constitute infringement.

Based on the evidence adduced, there was no attempt to persuade or mislead the Defendant's customers to believe that the products sold were the Plaintiff's products.

The Plaintiff's excellent reputation and goodwill in Malaysia must be shown to have suffered or to be likely to suffer from the Defendant's activities in confusing or misleading the public.

On the facts, no reasonable customer would be misled into thinking that the Defendant was serving the Plaintiff's products.

A trade mark protects only those goods for which the trade mark is registered. It gives no protection to anything which is not included in the specifications of goods.

The proprietor thus has the exclusive rights to use the trade mark in relation to the registered goods only.

Commentaries by TRADEMARK Agent

In this case, it is clear that registration of a business/company name is not itself a sufficient proof of a trademark infringement. On the other hand, if the Defendant were to use the said name in the course of his business as their "trademark", the infringement will likely to occur.


-12th January 2009


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