刘长老传出来Celine Dion与Josh Groban 合唱的这首《The Prayer》是我第一次听到，印象深刻的是其中一句：”给我们信心，使我们能安全”（Give us faith so that we will be safe）。视频的华文字幕将safe翻译为“平安”；这也没错。我也有点怀疑英文原文的用词当是“saved”？Saved 有得救的意思。无论如何，“平安”，“安全”，“得救”都是属于同一个范畴的词汇，是好事，是凶恶事情的反面。以上《马可福音》中耶稣的话，告诉了我们的是对耶稣的信心救了哪个患疾病的女人，提醒我们在充满许多未知数的境况下，唯有对耶稣的信心能救我们。上个星期吧，读到一则新闻：一个被怀疑患上新冠肺炎的中年人，因为有一些症状，在沙登（ Serdang） 医院做了检验，留院观察；在等待检验报告出炉，一时想不开自杀了。但反讽的是，检验报告出来发现他其实并没有受感染。他的过世，实在令人扼腕叹息。
On 20 January 2020, the Court of Appeal in SkyWorld Development Sdn Bhd & Anor v Skyworld Holdings Bhd & 5 Ors (Civil Appeal No.: W-02(IPCv)(W)-383-02/2019) unanimously ruled, among others, that an action for infringement can be founded upon the unauthorised use of a registered mark as part of a trade or company name.
The Appellants, SkyWorld Development Sdn Bhd and its related company, are renowned property developers in Malaysia. The 1st Appellant is the registered proprietor of three stylised trademarks consisting of the word “SkyWorld” together with accompanying tag-lines (“SkyWorld Marks”) as shown below. The word “SkyWorld” also forms part of the Appellants’ company name and the name of their property development projects.
Sometime in 2017, the Appellants discovered that the Respondents had used the words “Sky World” or “Skyworld” as part of their company names, domain name and the name of their proposed theme park project in Karambunai, Sabah. After failed attempts to resolve the issue, a civil action was brought against the Respondents for trademark infringement, passing off and unlawful interference with trade.
At the High Court, the Appellants’ claims were dismissed on, among others, the grounds that (i) the Appellants do not have monopoly over the word “SkyWorld” as the SkyWorld Marks are not registered as word marks; (ii) the competing marks are visually different as the Respondents’ use of the word “skyworld” was either wholly in uppercase or lowercase but not in mixed uppercase as in the SkyWorld Marks; and (iii) the parties are not engaged in the same trade.
The crux of the appeal rests on the issue of whether an action for infringement could be instituted for the use of a registered mark as part of a trade or company name. While there have been previous cases in Malaysia of similar nature, such actions were premised on the tort of passing off rather than trademark infringement.
Court of Appeal’s decision
At the outset, the Court found it useful to distinguish the functions of a trademark, trade name and domain name as follows:
a trademark serves as the source identifier of a product or service in the marketplace;
a trade name is used to identify the business offering the said product or service; and
a domain name is the online identity of the business and is usually the same or similar to the trademark as part of the branding strategy.
Given the dearth of Malaysian cases on the issue, the Court turned to precedents from other common law jurisdictions and the European Court of Justice as reference in deciding that an action for infringement could indeed be founded upon the unauthorised use of a registered mark as part of a trade or company name. The Court was also persuaded by the recent amendment to Section 10(4) of the UK Trade Marks Act 1994 which expanded the scope of use of a sign to include use as a trade or company name.
The Court ventured further in clarifying the applicable tests in an infringement action. First, there should not be a microscopic comparison of the minute differences between the competing marks in deciding the likelihood of confusion. Thus, whether the infringing mark was used in uppercase or lowercase was immaterial.
Second, the trial judge had erred by enquiring whether the parties are in the same business. Instead, according to the Court of Appeal, the correct approach in deciding whether there is trademark infringement is to first enquire whether the Respondents’ use of the infringing marks came within the specification of services covered by the registration of the SkyWorld Marks. In this respect the Court opined that the words in a specification of services should be given their natural and ordinary meanings. Thus, the registered services of the SkyWorld Marks, namely “real estate development”, “property development”, and “building and construction of real property” would encompass the Respondents’ proposed theme park development. A clear case of infringement has thus been established.
We believe this is the first appellate decision which lays down the proposition that a registered mark could be infringed through the use of a registered mark or an essential part of it as a trade or corporate name. The grounds of judgment contain clear exposition on the tests to be applied when dealing with the issue of trademark infringement, passing off and unlawful interference with trade. It is novel and noteworthy that among the relief granted by the Court is an order directing the Respondents, including the directors, to publish apology notices in three national dailies to express their regret over the infringing acts.
In light of this decision, it is advisable for prospective business owners to conduct proper due diligence before deciding on their business name. Simple and cost-effective measures such as conducting a name search at the business or company registry, a domain name search or at the very least a search on Google may avert any unnecessary legal proceedings that may result in the cancellation of the business name, the publication of apology notices to the public, the changing of marketing materials and the loss of any goodwill built under the infringing name.
Mr Wong Chee Wai, Mr Eugene Ee and I acted as counsel for SkyWorld at the High Court and the Court of Appeal.
Write-up contributed by Teo Bong Kwang and Eugene Ee
保罗在亚基帕王等人面前，滔滔雄辩，包括阐述了他归信耶稣的经历，以及它所信的福音。当时在场还有总督非斯都。他听了保罗的辩护，非常生气，大声的说：“保罗，你疯了！你的学问太大，反使你疯了！” 保罗很平静的回答：“非斯都大人，我不是疯了，我说的乃是真实和清醒的话。” （参<使徒行传>第26章）参看英文《圣经》就更加清楚：“I am not mad, most noble Festus，but speak the words of truth and reason” (NKJV)。
On 9 April 2019 the Malaysian Parliament tabled a new, totally revamped Trademarks Bill 2019 for its first reading. The proposed bill could bring about significant changes to the existing regime for trademark protection and enforcement in Malaysia. It will replace the Trade Marks Act 1976 and, among other things, seeks to put in place the necessary and long-overdue legislative framework for Malaysia’s accession to the Madrid Protocol. On top of this, the bill will introduce new provisions with regard to:
the protection of non-traditional marks;
an express provision for the securitisation of registered mark;
enhanced statutory protection for registered marks; and
improved enforcement mechanisms against counterfeit goods.
1. Accession to the Madrid Protocol
The bill contains express provisions to pave the way for Malaysia’s imminent accession to the Madrid Protocol. In this regard, it seeks to empower the Minister of Domestic Trade and Consumer Affairs to prescribe the relevant regulations that will enable Malaysia to full its international obligations under the protocol. The regulations would govern matters relating to the applications for the international registration of marks and the protection accorded to such registrations, among other things.
2. New definition of ‘trademark’ and recognition of non-traditional marks
One of the significant changes proposed by the bill is the new definition of ‘trademark’, removing the definition promulgated by the UK Trademarks Act 1938. The term ‘trade mark’ is now spelled as ‘trademark’ and its definition has been updated to be in line with the modern definition of the word as found in the UK Trademarks Act 1994. A ‘trademark’ is defined as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings (Section 3(1)). And ‘sign’ is widely defined to include the following new items:
shape of goods or their packaging;
sequence of motion.
This brings about a significant yet welcome change in trademark practice, as the bill expressly recognises and accordingly grants protection to non-traditional trademarks in keeping with new developments. Owners of such non-traditional marks will soon be able to register them under the new legislation.
3. Trademarks as personal or moveable property and the securitisation thereof
With the objective of further developing a knowledge-based economy and to facilitate the creation of a viable ecosystem for IP trading, the Malaysian Parliament will introduce a new Part IX, which recognises trademark rights as a subject for securitisation. Pursuant to the provisions in this new part, a registered mark will be treated as personal or moveable property and “may be subject of a security interest in the same way as other personal and movable property” (Section 62). Charges may be placed on registered marks, in the same manner as personal or moveable property (Section 64(5)). As a result, the owner of a registered mark will be able to tap into its value and pledge it as a form of security or collateral in any financing arrangement. This would create an added incentive for owners to register their marks, aside from the usual rights accrued from the trademark’s registration.
4. Strengthened statutory relief and remedies for trademark infringement
The bill has also codified the remedies that are ordinarily awarded to successful claimants in an infringement action. These include damages, account of profits, injunctions (including interim injunctions) and mandatory orders. The bill empowers the courts to grant damages to the claimant, as well as to compel the defendant to provide an account of the profits made in cases of flagrant counterfeiting. This is not currently the case, as successful claimants are still required to elect which of the two heads of damages they wish to claim based on common law principles. The courts will also be empowered to grant mandatory orders against defendants, including handing down an order to erase the defendant’s offending sign and the delivery or disposal of the infringing goods, material or articles. With regard to civil actions against counterfeiters, the courts will be given the discretion to grant additional damages to the claimant depending on the flagrancy of the infringement, the benefit gained by the counterfeiter, the need to punish such counterfeiters and other relevant considerations. The bill will also provide relief to any person who is subjected to groundless threats of infringement proceedings. In the circumstances, a claimant may claim for a declaration that the threats are unjustified, an injunction to prevent the threat from continuing and damages for the loss suffered.
5. Enhanced legal enforcement of trademark rights
Under the existing enforcement regime, criminal charges in respect of the false application of trademarks to goods and services is governed by the Trade Descriptions Act 2011, in particular Section 8. However, it appears that the legislature intends to include and consolidate all the relevant provisions for criminal sanctions against counterfeiting activities involving registered trademarks within the ambit of the bill. A new Part XV titled “Offence” will be introduced, which will consist of extensive provisions relating to trademark counterfeiting offences and the false application of a registered mark to goods or services. With the concurrent introduction of the proposed bill and the Trade Descriptions (Amendment) Bill 2019, it appears that the Malaysian legislature intends to transfer the provisions relating to enforcement of a registered trademark found in the Trade Descriptions Act to the bill. This is evident by the removal of Section 8 (offence relating to application of false trade description involving a registered mark) and placing it under the purview of the bill. This appears to be a logical move given that the subject of protection of Section 8 concerns a registered mark. For the first time, the bill will criminalise the act of counterfeiting a registered mark and falsely applying a registered mark to goods or services. It also criminalises acts of making an article specifically designed or adapted for making copies of a registered mark or a sign likely to be mistaken for it. Any person who imports, sells or exposes for sale or has in their possession, custody or control for the purpose of trade or manufacture any goods to which a registered trademark is falsely applied is guilty of an offence. Hefty penalties for the offences under Part XV are prescribed. Following the above proposed changes, Part XVI, titled “Investigation and Enforcement”, has adopted a substantial part of the provisions in the Trade Descriptions Act with regard to the powers of the enforcement authority. Similar to the powers under the act, enforcement officers will be armed with the powers to investigate, arrest suspects and search and seize goods suspected of being the subject of an offence.
6. Attempts to modernise and streamline registration procedures
As a measure to modernise trademark registration procedures, the bill will introduce the publication of the Intellectual Property Journal (presumably in lieu of the possibly more time-consuming Government Gazette ), electronic ling and issuance of documents via electronic means and issuance of guidance and practice directions. It also seeks to clarify some of the administrative powers of the registrar of trademarks. Besides that, as a bulk of the work of the registrar or assistant registrar is to determine whether the use of a trademark is likely to cause confusion, the bill introduces a new Section 9, which provides that in determining whether the use of a trademark is likely to cause confusion, the registrar may take into account all relevant factors,
including whether the use is likely to be associated with a registered or earlier mark. It is believed that the original intention of this section is to codify guidelines for determining the issue of confusion between two marks. However, as the current wording stands, it appears too brief and general and risks imposing upon the registrar an additional requirement of expanding the scope of such inquiry to include the issue of confusion by association. It is highly doubtful whether the proposed and rather briefly worded Section 9 will provide much assistance to the registrar. The statutory mandate to take into account confusion by association may instead prove to be an additional burden on it.
The bill contains substantial changes to the existing law and practice relating to trademarks in Malaysia. It is a welcomed development as it will bring Malaysian trademark law in line with international standards
Teo Bong Kwang, Wong Jin Nee & Teo Eugene Ee, Wong Jin Nee & Teo
Postscript: The Trademark Bill 2019 went through its second reading at the lower house of the Malaysian Parliament with some minor changes on 2 July 2019. The upper house (Senate) approved it on 23 July 2019. It is expected that the new bill may come into force in early part of 2020.
This article first appeared on WTR Daily, part of World Trademark Review on 18 June 2019. For further information, please go to www.worldtrademarkreview.com. The images found in this post were inserted by the authors.