In Shizens Cosmetic Marketing (M) Sdn Bhd v LVMH Perfumes and Cosmetics (M) Sdn Bhd (Kuala Lumpur High Court Civil Suit No WA-24IP-21-11/2017), the local company of luxury goods producer LVMH was faced with a trademark infringement suit in respect of its line of products known as “Dior Addict Lip Tattoo” in Malaysia. However, the fame and strength of its DIOR mark helped LVMH to ward off the action brought against it.
Shizens, a local cosmetics manufacturer, is the registered proprietor of the LIP TATTOO mark in Class 3 for, among others, cosmetics, make-up preparations and lipsticks. Shizens instituted proceedings against the local chapter of LVMH on the basis that LVMH’s use of the DIOR ADDICT LIP TATTOO mark infringed its LIP TATTOO mark. LVMH launched a counterclaim to remove the LIP TATTOO mark from the Register of Trademarks on the grounds that the words ‘lip tattoo’ were, among other things, not invented words, which is a ground for removal.
High Court decision
The Intellectual Property High Court of Kuala Lumpur disagreed with LMVH’s contention that the LIP TATTOO mark had been wrongly registered. It held, among other things, that the words ‘lip tattoo’ are newly coined words, which are not generic and are not commonly used words that have no obvious meaning until a meaning is assigned to them. In the circumstances, the LIP TATTOO mark could not be removed from the register as it consisted of “invented words” within the meaning of Section 10(1)(c) of the Trademarks Act.
However, Shizens’ success in resisting LVMH’s application for removal or expungement was meaningless as the court did not rule in its favour on the issue of trademark infringement. In essence, the court did not agree with Shinzens that there was a likelihood of confusion between LVMH’s mark and the LIP TATTOO mark. The court took the following stand on the issue of the likelihood of confusion between the marks:
The presence of the identical word ‘lip’ in the competing marks was inconsequential given that the registration of the LIP TATTOO mark was subject to a disclaimer whereby the registration did not give any right to the exclusive use of the word ‘lip’;
The LVMH products, including the Dior Addict Lip Tattoo products, have a relatively better reputation than the Shizens products;
The competing marks are phonetically and visually different;
The Shizens and LVMH products are sold via different trade channels, in that the latter’s products are sold in boutique outlets in leading department stores, while the former’s products are sold at ‘Shizens’ counters; and
Consumers of cosmetic products are generally better informed and more discerning.
Further, it was held that LVMH did not use the words ‘lip tattoo’ as a trademark. Instead, the word or mark DIOR was found to be the indicator of origin of LVMH’s products, including the Dior Addict Lip Tattoo products.
One of the central issues in this case was what constitutes trademark use. The court held that LVMH’s use of the words ‘lip tattoo’ does not amount to use as a trademark, as the words are prefixed by LVMH’s famous DIOR house mark. This reasoning seems wanting since ‘lip tattoo’, being a non-descriptive and non-generic word element, has no other apparent signification apart from the name of a product marketed by LVMH. This seems to contradict the court’s earlier pronouncement that the words ‘lip tattoo’ are invented words which are therefore capable of being registered as a trademark.
Further, it appears that the court placed great emphasis on the finding that the LVMH brand or products are relatively more famous than Shizens’ and that LVMH’s DIOR mark will distinguish it from Shizens’ LIP TATTOO mark. This seems to be a departure from the well-established principle laid down in Saville Perfumery Ld v June Perfect Ld ( RPC 147), where it was held that, once a mark has been shown to offend, the infringer cannot escape liability by showing that something outside the actual mark distinguishes the infringing goods from those of the registered proprietor.
1950年夏天，许牧世毕业于密苏里（Missouri University）大学新闻系，但毕业后前途茫茫。一年后前金陵大学英文系主任章文新博士（Dr Francis P. Jones）向金陵神学院的管理层建议拨出一部分原本计划用来发展中国神学教育的基金，从事翻译基督教历代名著的工作。这个建议蒙金陵神学院接纳，于是章文新博士在新泽西的哲吾大学（Drew University）设办事处，开始这项负有历史意义的工作。当时章博士亟需一位中国人的助手，于是找到许牧世。从此许牧世就与这个翻译的巨大工程难分难舍，将10年的青春投入之内。在他离开这个工作的时候，已经翻译出版了约二十多本的基督教名著。这一套精装本，封面有者红色，有着蓝色的中文翻译作品，收录的尽是基督教神学家的扛鼎之作，如加尔文的《基督教要义》，卫斯理的《约翰卫斯理日记》，马丁路德的《路德选集》，尼布尔的《人的本性与命运》等，到现在仍然在印刷中，影响了几代的华人基督徒。
0n 26 September 2010, Jimi Heselden, a British businessman who recently bought the Segway company was happily riding the famed “Segway” scooter in his huge Yorkshire estate. In a tragic turn, the Segway scooter ran over the cliff and into a river and Heselden was immediately killed. At that time, Segway scooter was a much touted invention of US inventor Dean Kamen.
Surely not every invention has tragic consequence. On the contrary, many inventions brought much happiness, fame and fortune to their inventors or owners. Take the example of the “One Click” patent of Amazon which was granted by the US Patent Office in 1999. It has reportedly generated billions for Amazon.
The Hidden Value of Patent
Many of us are totally oblivious to the immense commercial value of an invention or for that matter, the importance of an intellectual capital in the form of a patent in any business enterprise. The vast majority of companies are simply unaware of the often-enormous economic and competitive values that lie untapped within their patent portfolios. To borrow the euphemism popularized by Kevin Rivette and David Kline, it is like you have Rembrandt paintings lying dustily in the attic.
Balancing Market Monopoly and Public Interest
The modern history of protecting one’s invention started in Venice in 1474. In the UK, the first piece of legislation which attempted to protect invention was The Statute of Monopolies, 1623. In its own archaic language, it allowed “patent monopolies” for 14 years upon “any manner of new manufacture”. Stripped of legal niceties, it merely meant that the State would grant a monopolistic right in the form of “letters patent” to the inventors. As a trade-off, the inventors must disclose their inventions in a clear manner so that it can be used by a ‘person ordinarily skilled in the art’. The philosophy of protecting patent is pretty simple: the State will grant a limited protection for any invention for a period of between 15 to 20 years in exchange of the full technical information related to it. Once the protection period has expired, the inventions are free to be exploited by anyone. It is believed that with the required statutory protection given by the Government, inventors would be encouraged to engage in more inventive activities and come out with more novel inventions. This will ultimately benefit the society at large as the innovative ideas as disclosed in the patents will add to the pool of existing technological knowledge in a particular field. In this manner, society will progress in innovation and it will enjoy the fruits of the inventive members within it.
Flash of Genius can be Present in Mundane Objects
The image Thomas Edison or Albert Einstein or a mad scientist with fuzzy hair will immediately come to mind when we talk about invention. This is of course a myth. The reality is that not every invention needs to be Einstein-que or earth-shattering like the atomic bomb. On the contrary, a cursory search at Google Patent will show that many mundane objects have been or are still protected by patents. For instance, a gadget to boil eggs, the yellow “post-it” note and the ubiquitous paper clip are subject matters of granted patents. Indeed flash of genius can be present in many mundane objects.
The Requirements for Patenting a New Invention
In 1983, Malaysia has its own national patent legislation. It is called the Patents Act, 1983. It came into force on 1 October 1986. Before the passage of this legislation, we could only obtain patent protection by first registering a patent in the United Kingdom and then re-register it in the three component regions of Malaysia. With the passage of the 1983 Act, we could obtain a national patent by filing an application with our local patent office.
The most frequently asked question which an intellectual property law practitioner like me has encountered is: how do I get a patent?
The answer is to first get your invention written down clearly in a document which is commonly called “patent specification”. However, before this is done, it is imperative that the invention must possess the following requirements:
the invention must be “new” in the sense that it has not been disclosed to the public anywhere in the world. The disclosure can be in the form of written publication, actual usage, actual article or even oral presentation or even sample shown in an exhibition;
the invention must involve “an inventive step”. The question whether an invention involves an “inventive step” can be asked in another manner: whether the so-called “inventive step” (i.e. the “inventive feature or element”) of the invention is obvious to a person who has ordinary skill or experience in the subject matter; and
the invention must be “industrially applicable”. This last requirement is normally easily satisfied as long as the invention can be commercially or industrially exploited. The rationale of this requirement clear, that is it is to prevent granting of patent for some theoretical invention which cannot be put into practical use.
In order for a patent to be valid, all the above three requirements must be present. Anyone who has some experiences in patent litigation will inform you that most patent litigation are fought on the above three issues. If a patent is proved to have been lacking in any of the above requirements, it can be cancelled or invalidated. Thus as a prudent measure, before an eager inventor spend enormous money in getting its patent specification drafted, it is advisable to ask the patent drafter to conduct the necessary “searches” to ensure that there are no other prior publications or disclosure which will nullify the invention.
Once the patent specification is properly drafted, the other steps of getting a patent granted are relatively straight-forward. The first step is to fill up the prescribed forms and then file them with the patent office. You should of course consult a patent lawyer or agent for this important step.
The obtaining of a patent for any innovative breakthrough is an indispensable step to secure a cutting edge for achieving continuous growth of a business in this competitive environment.
The Malaysian Court of Appeal has recently decided that the courts are not bound by “hard and fast” legal principles when it comes to deciding on the proprietorship of a trademark among related entities.
In Pathmanathan v Portcullis (Singapore) Pte Ltd (Civil Appeal No W-02(IPCV)(W)-1798-09/2016), which concerned a dispute between different entities that were previously part of the Portcullis group of companies, the Court of Appeal was faced with the thorny issue of the proprietorship of a trade mark used within the group.
The corporate structure of the Portcullis group is rather elaborate:
the Portcullis companies in Malaysia – the third to twelfth appellants/defendants in this appeal were owned by Portcullis Holdings (Malaysia) Sdn Bhd (‘PH’), the second appellant/defendant; and
the respondent, Portcullis (Singapore) Pte Ltd, and PH were both owned by Portcullis Holdings International Limited (‘PHIL’), which in turn was wholly owned by First Finance Holdings Ltd.
On 2 April 1998 a memorandum of agreement was signed by the first appellant/defendant, George Pathmanathan, and PHIL, whereby George was given 25% of the shares in PH. Sometime in 2006, George filed a minority oppression petition against PHIL, among others. The High Court ruled in George’s favour and ordered PHIL to transfer 75% of its shares remaining in PH to George. As a result, PH and the Portcullis Malaysian entities became wholly owned by George.
Subsequently, George filed two applications to register the PORTCULLIS marks in Malaysia. However, he was outdone by the respondent, Portcullis (Singapore), which managed to register twelve PORTCULLIS word and device or pictorial marks in various classes in Malaysia. Armed with the registrations, the respondent proceeded to sue the appellants for passing off, trade mark infringement and copyright infringement. The respondent contended that, when PH ceased to be part of the Portcullis group, its right to use the PORTCULLIS marks and logo also ceased.
In response, the appellants argued that the acquisition of PH by George was together with the goodwill and the other IP rights of the respective companies by virtue of the memorandum of agreement. Accordingly, the appellants led a counterclaim to expunge the twelve registered trade marks registered in the name of the Singaporean entity from the register.
In an extensive decision, the High Court ruled in favour of the Singaporean entity, based predominantly on the factual finding that it was the first user of the PORTCULLIS marks and logo in Malaysia.
Court of Appeal decision
At the appellate level, the Court of Appeal summarised the issue at hand in the following manner:
In the context of a corporate group, how is the issue of ownership of trade marks, corporate names and goodwill determined, including whether the principle of ‘first user’ is applicable when determining such ownership within a corporate group?
In answering this question, the court referred to the English Court of Appeal’s decision in Scandecor Development AB v Scandecor Marketing AB((1998) EWCA Civ 1282). It held that, while the ‘first user’ principle is useful when determining any issue relating to the use of trade marks between unrelated competitors, such approach would not apply to cases involving related entities. If the court were to adopt the conventional approach, then the Singaporean entity would obviously prevail as it was the first user of the PORTCULLIS marks.
Instead, the court examined the facts of the dispute and highlighted one of the clauses in the memorandum of agreement, which provided that the goodwill and other IP rights shall vest in the respective Malaysian companies. Given that the ownership of PH was transferred to George, the goodwill in the PORTCULLIS marks and logo remained with the Malaysian entities. The High court’s decision was therefore overturned.
Interestingly, the Court of Appeal chose to deviate from a long line of cases – including the apex court’s decision in Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia ( 6 MLJ 465), which held that proprietorship of a trade mark is established by first use of the mark within the country. In arriving at its conclusion that the Malaysian entities retained goodwill in the PORTCULLIS mark, the Court of Appeal placed great emphasis on a contractual provision in the memorandum of agreement. This raises the important question of whether contractual provisions on the alleged ownership of a trade mark should take precedence over the exclusive rights of a registered trade mark owner.
(This article first appeared on WTR Daily, part of World Trademark Review on 26 November 2018. For further information, please go to www.worldtrademarkreview.com. )
和合本修订版之《以弗所书》第4章第15节说，我们要用爱心“说诚实话”（照上面的讨论，可以理解为“讲论真理“），“各方面向着基督长进”。这句很好：因为我们各方面的长进，是朝向基督。基督是我们的榜样，我们向他学习，以他马首是瞻。最终是连结与他这位“元首” （或“头“ – head）。英文NRSV版《圣经》是说we must grow up in every way into him who is the head, into Christ。这个into有百川汇海的意味，最终我们都归于基督这个“大海”，融合了。
我们都知道，保罗用“身体“（body）这个意象（imagery ）来代表教会。用身体这个意象，主要是要带出一个非常重要得信息：身体有不同的器官 （organs），各个器官必须是连结得甚为结实，牢靠，不会断落的。和合本修订版用了一个相当好的形容词：“接连得紧凑”。英文NRSV版《圣经》则 说每个器官是借着筋（ligament）连结，缝纫起来的（knit together by every ligament ）。大家都吃过猪肉，牛肉，也吃过牛筋，知道牛筋是非常坚韧的。骨容易折断，但筋却不容易扯断。
保罗也说每个器官要“各按各职，照着各体的功能彼此相助“，英文说：each part is working properly ，那么身体（教会）就会增长，而且保罗也指出一个至关重要的真理： 这种的生长是在爱中进行的。或者更准确的说是：不是教会数量增长而已，更重要的是爱心日渐生长。 英文NRSV版《圣经》的表达方式较为清楚：We must grow up in every way into Him who is the head, into Christ, from whom the whole body, joined and knit together by every ligament with which it is equipped, as each part is working properly, promotes the body’s growth in building itself up in love.
一般上我们都认为这十条诫命是写在两个石版（stone tablet）上的。有人认为一个石版分别刻5条诫命；有的则认为一个石板刻4条，另外一个是6条（就如我Powerpoint里的图片所示）。英国All Nations Christian College的圣经研究讲师David L. Baker认为十诫分成爱神与爱人两大部分（参他的著作The Decalogue: Living as the People of God, Apollos, 2017）。这跟旧约《利未记》19章18节及《申命记》6章5节，以及新约耶稣所说的两大诫命（参《马太福音》22章34-40节，《马可福音》12章28-34节）是相符的。而十诫中第一到第五诫命是属于一组，这组是关系到“爱神“（Love God），其他的诫命则是关系到“爱人“。Baker把第五个诫命放在第一块石版，即“爱神”这边，意思是说，孝敬父母就是爱神的表现；如果你爱神，必定要孝敬父母。