What is in a name? SkyWorld Development Sdn Bhd succeeds in restraining a trader from using similar name



Photo taken after the handing down of the decision on 20 January 2020. To my left is Mr Wong Chee Wai, the instructing solicitor and to my right is my associate, Mr Eugene Ee.

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.

SkyWorld Property Gallery

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

14 February 2020

疑神 · 信神


文: 张文光

台湾诗人杨牧曾经写了一本书,叫做《疑神》,是台湾洪范书店出版的。封面青色为底,中间是一个垂直浅黄色的方格,里面有一只狐狸,代表狐疑吧?书中谈宗教,谈神。用他自己的说法,这本书是在谈人如何因为自己的幻想和经验的激荡,“勾画出一形而上的符号,无以命之,竟称之为神。” 杨牧自称是泛神论者,什么都可以是神,但什么也都不是神。他最终追求的是真与美。换言之,何必曰神,重要的是探讨“真与美”即可。


另外一个也是来自台湾的著名作家张晓风则说,对她来说,“神”这个“名词” 其实不重要,重要的是“形容词”。她说:  “我需要知道的不是宇宙间有没有一种叫“神”的生物,而是“他的属性如何?” “他对我如何?” 如果他自己做他的神,我也就干脆自做我的人,我俩并不相干。就算他看我不顺眼,要把我掷进地狱火湖,那我也只好认栽。不过,如果他爱我,那就一切要重新衡量。如果我对他而言有其可贵处,如果他行事公平正义,那么,我不妨和这位上帝打交道。” (参其文:<宗教 ·文学 · 宗教加文学 –《 喜欢生命 · 散文卷》代序>)


基督教相信只有一个真神 (旧约<申命记>第6章4节的宣告,犹太教称之为Shema)。但是这位神是三位一体的神:那就是圣父,圣子,圣灵,同荣同尊,三个位格 (person),但是本质一样的一个神。我不在这里讲这个深奥的神学道理。我只讲这个宣告:“从来没有人见过神,只有在父怀里的独一的儿子将他表明出来。”(参看<约翰福音>第1章18节)

是的,没有人见过神,但是《圣经》说,你看到一个人,你就看到神。这个人就是耶稣。他是三位一体神的第二个位格 。有许多非基督徒的文献都证明历史上曾有耶稣这个人。他在世上只活了33年。但是今天相信耶稣的基督徒不计其数,包括在中国。


有一位因为传扬基督教而殉道的第一世纪的使徒保罗 (Paul),这样说到:“因为只有一个神,在神与人中间,只有一位中保,乃是降世为人的基督耶稣。” (<提摩太前书>2章5节)


神差派耶稣来到人间成为人类的代罪羔羊,偿还我们的罪债:”神使那无罪的,替我们成为罪,好叫我们在他里面成为神的义。“ (<哥林多后书> 5章21节)。


杨牧说宗教不外乎意底牢结(ideology ,现在多称为“意识形态”),但他没有加以说明为什么他这样认为。他的《疑神》其实是一段段,长长短短,箴言式的文字。但是我相信<罗马书>第5章第8节的宣告,也经历了其中的真实。

上面提及的保罗,其实是初期教会一个非常重要的人物,也可以说是基督教数一数二的奠基人物。他因为传扬耶稣的言行,其中最特别的是耶稣的复活,而引起当时犹太教宗教领袖的不满。他的言论也被有心人利用,扭曲,而引起民众的骚动。保罗最后被罗马官员拘捕,下监。当时的巴勒斯坦是罗马帝国的属地,保罗辗转被提到当时来拜访犹大省总非斯都 ( Festus)的罗马分封王亚基帕王二世(King Agrippa II)哪里去,而亚基帕王二世也想听听保罗的辩护。

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)。



注:本篇文章首次发表于2019年12月1日,《南洋商报》电子版e-nanyang 的《牧羊人》版。现在这个版本有做点修饰。文章的来源是我在一个“小组”(即一班基督徒聚在一个家庭,唱诗,查考《圣经》,彼此交谈,祷告,比较轻松的聚会),为一群长者,包括非基督徒,讲解基督教信仰真髓的讲稿。文中引述了许多《圣经》的经文。据我所知,一般上报馆不太喜欢有太多《圣经》经文的文章;不过,最近似乎比较宽容,也可能是电子版,尺度比较松动吧。

Malaysia introduces totally revamped Trademarks Bill

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

A famous colour and position trade mark

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;
  • colour;
  • sound;
  • scent;
  • hologram;
  • positioning; and
  • sequence of motion.
An example of a sound trade mark registered in Russia

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

The logo of the Ministry of Domestic Trade and Consumer Affairs

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

June 2019 

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.



大凡藏书杂乱的人都有这种经验:因为书太多而地方不够,同一个架子,往往前后摆放了两排的书籍。一旦要寻找某本书,当然是先浏览书架上放在外排的书籍。但是糟糕的是如果要的书是摆放在后排,那就得大费周章了。尤其当书籍多,塞在几个如墙壁面积大小的书柜时,艰辛度还算不小的。先得把前面一排的书搬下来,放在一边,让后查看后排有没有摆着所要的书。这样的动作,是需要一个书架子一个书架子重复进行,搞了两三个小时,弄到满手灰尘,鼻子受不了灰尘的袭击,而直打喷嚏,仍然找不到。看到桌子地上散落都是书籍心中的那种苦恼,不是过来人恐怕还不能理解。肉体累是一回事,搞到半夜, 还是找不到所要的书籍,开始有点明白什么是“上穷碧落下黄泉,两处茫茫皆不见”。


翻开《风满楼证道文集》的《前言》,得知这是许牧世在1971年,因为参与美国圣经公会进行的《现代中文圣经》的翻译工作,而移居到纽约郊外,住在宅车房的屋顶加上盖子的一间书房,进行翻译圣经与写作的工作。根据许牧世的说法,他把这个书房称为“风满楼“,第一个原因是当年来华的宣教士马礼逊(Robert Morrison)翻译《圣经》时,将”圣灵“翻译为”神风“。其二是《圣经》使徒行传第2章记载,五旬节圣灵降临时,就像一阵大风充满了整个房子。”风满楼“之命名,是渴望圣灵的充满。

我信手翻到第一篇文章,题目为“亚当,你在哪里?” 这是根据《圣经》的第一本书《创世纪》第3章第8到10节所写的一篇讲章。内容说道黄昏中,一阵凉风吹过,亚当听到神走过来的声音,心里畏惧 (因为他吃了禁果),连忙躲藏起来。而上帝发出这个亘古不变的问题:“亚当,你在哪里?” “亚当”其实就是人的意思。神在问:“人呀,你在哪里?” 来到新约,耶稣也说过:“我在门外敲门,若有人听见我的声音就开骂,我要进去。我要跟他一起坐席,他也要跟我一起坐席”,坐席者,吃饭也。能跟另外一个人吃饭,这是一种接纳,友爱的关系。清楚不过,耶稣要与人建立朋友的关系。

记得当年去曼彻斯特探望在哪儿读书的孩子时,某个下午因为有点时间,就到处看看。来到曼彻斯特的博物院。进去浏览,很欣喜地看到一幅叫做”世界之光“的画。这幅画是英国19世纪前拉斐尔的创始人之一威廉·霍尔曼·亨特(William Holman Hunt)所画的。之前在一个叫做“启发课程“的视频里,曾看到这幅图画。据说原作是放在伦敦的圣彼得大教堂。曼彻斯特的博物院的那幅较小。但是画的是一样:耶稣提着一盏灯。在一个满了青藤的门敲着。据说有人告诉画家,你漏了画门柄了。但是亨特说,门的手柄是在里面,是需要里面的人自己把门打开。

最近也在阅读一些关于神存不存在的书籍,众说纷纭,弄到心中也不太实在了。看到许牧世这篇文章,猛然间醒悟过来: 是神一直在寻找我们呀!我们只要打开心门接纳他即可。






癞蛤蟆与小女孩的图像到底是出自那部故事书,我一直想求证一下。因此特意到大众书局,第一个找的就是安徒生的童话集。见了服务员,指定要有插图的。服务眼在电脑前查了查,说没有存货,只有一本Wordsworth出版的集子,但是没有彩色插图。虽然有点失望,还是买下。翻一翻,第一个故事是The Tinder Box ;印象中没有读过这个故事。看看目录,有一个叫做Thumbelina 的故事,只记得这个故事华文翻译为“拇指姑娘”。讲的是有一个像拇指大小的女孩,从花蕊生出来。其他内容已经模糊不清了。翻开读一读,原来一开始就有癞蛤蟆绑架拇指姑娘,让后将她置放在大水中央的荷叶上的一幕。一群鱼儿不忍心拇指姑娘被困,咬断荷茎,拇指姑娘因此得以逃脱,顺着河水漂流到另外一个国度。而故事最后是说,在寒冷阴暗的冬天,拇指姑娘来到一个田鼠的家,田鼠接待她。但不久后,就要将她嫁给他的邻居 — 一年四季住在暗无天日地底下的鼹鼠。在地道里,拇指姑娘看到一只冻僵垂死的燕子。她不忍心它这样躺在地道里,悄悄地用稻草编织的被,盖在燕子身上,整个冬天照顾它,将它救活。冬去春来,燕子飞离。然而到了夏天,燕子又回来了,它叫拇指姑娘坐在它的背上,带她翱翔,飞向一个阳光普照,繁花似锦,果实累累的国度。


为什么大人小孩都喜欢童话故事?就像我会一直想再读读孩提时看过的童话故事,而且那么渴望再次看到那些栩栩如生美丽的图画?大概我们都希望我们的世界不是唯一的世界;除了累人的现实世界,还有一个更好的世界。我们希望这个现实世界可以再次变得神奇起来; 我们希望死亡不是结束;我们希望这个世界不是一个被围起来,封闭的大玻璃瓶,其实除了这个肉眼看得见的世界之外,还有另外一个更好的世界存在。童话故事勾勒出这些令人向往,憧憬的理想世界。它们触动人类心灵深处的对美丽,理想世界的向往。或许现实世界有太多的黑暗,缺陷,失望,悲伤,我们很自然就会渴慕一个更美,更光明,更纯净,更快乐的国度。也难怪许多童话故事的结语是:“ 从此王子与公主快快乐乐地生活在一起。”


童话还有一个特点就是“改变“。比如说丑小鸭一下子变成优雅的天鹅;鼻子长长的木偶变成一个有血有肉真正的小男孩;青蛙被公主一吻,即刻变成了英俊潇洒的王子等。我相信人心里都有一个渴望,即改变现状,改变自己,突破现实的局限,成为一个更好的人。但是往往不得其门而入,不知道如何改变。更甚的是沉溺在某个状况中,无法自拔。所以我个人非常喜欢基督教的说法:“若有人在基督里,他就是新造的人,旧事已过,都变成新的了“。 ” 新造的人“,在英文《圣经》是翻译为new creation,新的创造也。在沉溺中的人需要一个新的开始,犯了错的人需要second chance,一个新的开始。许多人包括我自己,因为这句话,人生得以改变,生命得以再次绽放光彩。

(注:首次发表于2019年6月23日《南洋商报》 eNanyang的《牧羊人》版)

A Tattoo too Easily Erased? LVMH Successfully Defends Suit against its Use of DIOR ADDICT LIP TATTOO

by Teo Bong Kwang and Eugene Ee

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’s Lip Tattoo Lipstick

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.

LVMH’s Dior Addict Lip Tattoo Lipstick

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 ([1941] 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.





已故许牧世长老(教授)是我相当喜欢的一位基督教作家,他是华人基督教文字工作者的前辈。上个世纪80年代读大学的时候,就接触他的作品。当时觉得他的文章,遣词用字较一般基督教作家来得有文学韵味,内容也清楚扎实。也记得他大力鼓励牧者将讲章写出来,当注意文字,修辞的表达等,让讲章成为美丽的篇章。他个人也奉行这个原则,把一篇篇的讲章写出来,并结集出版。上个月晨砚来了封电邮,叫我在《牧羊人》版开个专栏。我想了想,也翻看书柜内的书,想找点灵感,刚好看到许教授的书《人世与天国之间》,觉得还蛮适合的,就做了一点更动,将“天国” 放在前面,成了栏名。



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。



幸好,他的讲章流传了下来 (收录在他最后一本书《人世与天国之间》),而《圣经》也永远长存。我们只要打开许牧世的书,同时也打开《圣经》,相信就能明白为什么他一生与《圣经》,与基督教名著朝夕以对,而毫不言倦 。

注:本文首次发表于《南洋商报》eNanyang 《牧羊人》版,2019年4月28日刊。




今天在预备讲章时,看到一个旧的PowerPoint,里面记录了耶鲁大学前任校长布鲁斯特(Kingman Brewster)的墓志铭的一句话:





然而,让我觉得有趣的是,南方朔说:推动人类进步文明的,其实不是什么“公平”,“正义” 之类的抽象慨念,而是比这些慨念还要基本的感情因素。他把它称为“对别人的感觉”。 第一是体会别人对自己的感觉,他说,当人们能体会到别人对自己的感觉,他就会产生愈来愈高的羞耻感。二是面对别人,能越来越体会别人遭遇到某些事情的感觉,这样他就会越来越提高“不安”的门坎。以前对别人做了某事会无动无衷,但随着“不安” 的门坎提高,这种事情就会逐渐不再敢做。愈来愈高的不安标准,会诞生诸如不忍,勇敢,公平,正义等外向的品质。


南方朔所提倡“对别人的感觉” ,使我想起孟子所说的恻隐之心是善端。也想到耶稣曾说的:最大的诫命就是爱神,而第二大诫命是爱人如己;他也说,“人为朋友舍命,人的爱心没有比这个大的“。又说:“你们想要人怎样待你们,你们也要怎样待人,因为这就是律法和先知一切的道理”。





Rembrandts in the Attic – the Forgotten Value of Patent


By Teo Bong Kwang*

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.

A Segway Scooter with driver

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.


Photo by Lam Been Koon

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.

Patent drawings for safety pins

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.


* This article first appeared in “Focus” Magazine in 2018.

Breaking new ground: Court of Appeal rules that ‘first use’ principle is not applicable to disputes between related entities

By Teo Bong Kwang and Eugene Ee

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 ([2015] 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. )