SECTION 54 OF TRADEMARKS ACT 2019 INFRINGEMENT OF TRADEMARKS:

TRADEMARKS LIKELY TO CAUSE CONFUSION TO THE PUBLIC

KEY PROVISIONS
Act: Trademarks Act 2019 Act 815
Acts amounting to infringement of registered trademark
Section 54 (1) of Trademarks Act 2019
A person infringes a registered trademark if he uses a sign which is identical with the
trademark in relation to goods or services which are identical with those for which it is
registered, in the course of trade, without the consent of the registered proprietor.
Section 54 (2) of Trademarks Act 2019
A person infringes a registered trademark if, without the consent of the proprietor of the
trademark, he uses in the course of trade a sign –
(a) that is identical with the trademark and is used in relation to goods or services similar
to those for which the trademark is registered; or
(b) that is similar to the trademark and is used in relation to goods or services identical
with or similar to those for which the trademark is registered,
resulting in the likelihood of confusion on the part of the public.

CASES

No Infringement
BRG Brilliant Rubber Goods (M) Sdn Bhd v Santa Barbara Polo & Racquet Club
Management Inc (Pendaftar Cap Dagangan Malaysia, interested party) and another
case [2017] 7 MLJ 244

 In any event, we cannot simply select the word ‘polo’ in the Plaintiff’s mark
and compare the it with the word ‘POLO’ in the Defendant’s Mark.
 The dangers of selecting component feature of a mark and comparing it with
selective components of another mark was highlighted in the case of Eriktico v.
Erector [1935] 52 R.P.C 136 where the Court held:

“I do not think it is right to take a part of a word and compare it with a part of
the other word; one word must be considered as a whole. I think it is a dangerous
method to divide the word up and seek to distinguish a portion of it from a portion
of the other word.”

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HELD:
 Surely, the words “SANTA BARBARA” and “RACQUET CLUB” as well as a
device of polo playeron horseback makes the Defendant’s Marks totally different
from the Plaintiff’s registered marks. Therefore, I am of the considered opinion that
the use of the Defendant’s trade mark would not result in confusion and deception
in a manner which would offend section 19(1) of the TMA 1976.

 Even if we accept the Plaintiff’s contention that its family marks already have a
reputation in the market (as the “POLO” family marks registered by Polo Lauren
Company), the same is not a sufficient ground to conclude that there is a likelihood
of confusion as the customers would also notice the words Santa Barbara Polo &
Racquet Club.

 The Defendant’s Mark is actually the full name of the Club; it refers to the Club,
“Santa Barbara Polo & Racquet Club” and no one else, least of all, the Plaintiff.
The Defendant’s Mark is distinctive of the Defendant. The Defendant’s mark is
also visually and phonetically different from the Plaintiff’s marks. As such, there
can be no actual or likelihood of confusion or deception.

 As such, I find that there is no merit in the Plaintiff’s appeal and the same is
dismissed with costs.

Consitex SA v TCL Marketing Sdn Bhd [2008] 3 MLJ 574

FACTS
 The plaintiff is a member of the Ermenegildo Zegna group (the 'Zegna Group')
which is a world leader in the design, manufacture and marketing on a world-wide
basis of fine menswear and other exclusive clothing of premium quality (the 'Zegna
Menswear').
 The plaintiff is the registered proprietor of the trademarks 'Zegna' [Trade Mark
Registration No 83/01273] and 'Ermenegildo Zegna' [Trade Mark Registration No
83/01275] in Malaysia in Class 25 in respect of clothing, boots, shoes and slippers.
The plaintiff's trademark registrations are valid and subsisting.
 The plaintiff had since the early 1960s designed, manufactured, promoted and sold
the Zegna Menswear all over the world under and by reference to the plaintiff's
trademarks. Since 1989, the plaintiff extensively used the trademarks in Malaysia in
respect of menswear.
 On the other hand, the defendant used the trademark of 'Emmer Zecna' in respect of
its menswear. The defendant also had shops carrying the Emmer Zecna trade name
on the shop front.
 The plaintiff initiated the present suit against the defendant based on three causes of
action namely trademark infringement, passing off in respect of goods and passing

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 off in respect of business.
 The defendant contended that its mark 'Emmer Zecna' and the plaintiff's mark
'Ermenegildo Zegna' were not identical and not so resembling to each other as was
likely to deceive or cause confusion in the course of trade.

HELD:
EVIDENCE OF MARKET SURVEY*
 In an attempt to strengthen its case, the plaintiff produces the results of a market
survey conducted by the plaintiff in May 2005, (some three years after the present
suit was filed and five months before the trial begun).
 According to the plaintiff the results of the said market survey revealed, inter alia,
that: a total of 195 of 276 interviewees were of the view that the products bearing
the trademark 'Emmar Zecna' are associated with or related to 'Ermenegildo Zegna'.

In the present case, the court finds it difficult to rely on the results of the market survey, on
the following grounds:
(a) the questions posed to interviewees were mostly leading questions which were
one-sided and biased, leaving not much room for the interviewees to think and
produce their own answers.
(b) there was no true recording of the interview and thus the answers of the
interviewees were not recorded in verbatim.
(c) none of the interviewees were called to this court to give evidence. Only the
interviewers were called.
(d) the questions were asked in English. As the majority of Malaysians do not use
English as their first language, it is highly likely that the interviewees may not have
understood the questions clearly or at all. It is possible that the interviewees may
have just agreed or disagreed with the interviewers' leading questions and the
interviewer's opinions so that the interview will complete quickly and the
interviewees can proceed with their intended routine. Without a verbatim recording
of the interview, the survey evidence cannot be relied on as the reluctant or
ambiguous answers given by the interviewees may have been phrased in a manner
that is favorable to the plaintiff's case.

TRADEMARK INFRINGEMENT

 The only issue in the present case is whether the defendant's 'Emmer Zecna' mark
so nearly resembles the plaintiff's trademarks 'Ermendegildo Zegna' as is likely to
deceive or cause confusion.
 Parker J in the well-known case of Pianotist Co's Application (1906) 23 RPC 774
had laid down the test in determining whether a mark is 'likely to deceive or cause
confusion' as follows:

“You must take the two words. You must judge them, both by their look and by their

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 sound. You must consider the goods to which they are to be applied … In fact, you
must consider all the surrounding circumstances; and you must further consider
what is likely to happen if each of the trademarks is used in the normal way as a
trademark for the goods of the respective owners of the mark.”

 The test as laid down by Parker J in Pianotist Co Application has been adopted by
our Supreme Court in Tohtonku Sdn Bhd v Supreme (M) Sdn Bhd [1992] 2 MLJ 63.
 Subsequent case law has developed further tests and principles which are widely
accepted and applied and which may be summarised as follows:

(a) the idea conveyed by both trademarks must be compared;

(b) the marks as a whole must be compared;
(c) the first syllable of the trademarks is of importance;
(d) the ear as well as the eye must be considered;
(e) the imperfect recollection of customers/potential customers must be considered;
(f) the essential features of the trademarks must also be compared.

CONCLUSION
 The court finds that the plaintiff has failed to discharge their burden of proof on a
balance of probabilities to satisfy this court that the defendant had infringed the
plaintiff's registered mark and further that the defendant had passed off their
products to the public as that of the plaintiff's products. On that grounds, the
plaintiff's claim against the defendant is dismissed with costs.

Nokia Corporation v Truong and others [2005] 66 IPR 511,

 “…it is a composite mark, consisting of two elements - the word “Nokia” and the
trident device. When identifying trade mark infringement, the issue is whether one
or more of the “essential elements” of the mark have been infringed and this cannot
be done by focussing on one element of the mark while completely ignoring other
elements …” (emphasis added)

The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd [2005] 4 SLR 816

 The High Court held as follows:

“the word ‘POLO’ is commonly used in everyday language either as reference to

the sports or to a particular T - shirts. It is settled that the courts are weary of
allowing companies to monopolise words that are purely descriptive or used in
everyday parlance: The European v The Economist Newspaper Limited (1998) FSR
283 at 289 and Mothercare UK Ltd v Penguin Books Ltd (1988) RPC 113 at 123
(emphasis added)”

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 Lifestyle Equities CV v The Copyrights Group Ltd and others [2021] EWHC 1212
(Ch)
(Beverly Hills Polo Club v Greenwich Polo Club)

Claimants’ Mark Defendants’ Mark

 The claimants are the owners or exclusive licensee of the Beverly Hills Polo Club
mark (above left) worldwide except in the USA and China. The mark is registered
in the UK and the EU in classes including classes 3, 18, 24 and 25.
 The claimants have brought a number of actions in the UK and at the EUIPO in
relation to third parties' POLO CLUB signs.
 The claimants' submission that infringement should be considered based only
on the logo elements of the marks and not take account of the words was
dismissed by the judge. He concluded that the figurative elements of the marks
were the "least significant element" of the marks and in any event were different.
He stated they did nothing more than "evoke the sport of polo" noting that the mark
above left consisted of a single mounted rider and the mark on the right consisted of
2 riders.
 He said the wording actively sought to differentiate between two originators, on
the one hand the Greenwich Polo Club and on the other a lifestyle brand
represented by the claimants detached from any real polo club. The word elements
were orally, visually and conceptually very different.
 Having found there was no likelihood of confusion, Smith J also rejected the claim
that the claimants' mark had a reputation or there had been passing-off, stating that
the evidence of reputation provided by the claimants was "trifling".
 All the claims were dismissed. The judge stated that if there had been
infringement, he would have had to consider whether he could grant an EU wide
injunction in relation to EU trade marks for a period after Brexit (ie from 1 January
2021) but this was unnecessary in this case.

Market Survey for Trademark Infringement Cases

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Source: https://www.rdslawpartners.com/post/trademark-cases-the-future-of-whitford-
guidelines-in-malaysia
In both trademark infringement/passing off cases and trademark revocation cases, it is
common for the plaintiff/the applicant to use market survey evidence to demonstrate:
(a) The element of “confusion” in a trademark infringement/passing off case.
(b) The element of “non-use” in a trademark revocation case.
The Whitford Guidelines
In Malaysia, market survey evidence is subject to compliance with the guidelines laid down
by Whitford J in Imperial Group Plc v Philips Mores Ltd & Anor [1984] RPC 293, also
commonly known as the “Whitford Guidelines”. The Whitford Guidelines have been
endorsed by the Federal Court in Liwayway Marketing Corporation v Oishi Group Public Co
Ltd [2017] 5 CLJ 133.
The Whitford Guidelines as laid out in Imperial Group Plc v Philips Mores Ltd & Anor
[1984] RPC 293 are as follows:
(a) If a survey is to have any validity at all, the way in which the interviewees are
selected must be established as being done by a method such that a relevant cross-
section of the public is interviewed.
(b) Any survey must be of a size which is sufficient to produce some relevant result
viewed on a statistical basis.
(c) The party relying on the survey must give the fullest possible disclosure of exactly
how many surveys they have carried out, exactly how those surveys were conducted
and the totality of the number of persons involved, because otherwise it is impossible
to draw any reliable inference from answers given by a few respondents.
(d) The questions must not be leading; and must now direct the person answering the
question into a field of speculation upon which that person would never have
embarked had the question not been put.
(e) Exact answers and not some sort of abbreviation or digest of the exact answer
must be recorded.
(f) The totality of all answers given to all surveys should be disclosed.
(g) The instruction given to interviewers must also be disclosed.
It is important for an applicant in a trademark revocation case to disclose some direct
evidence on top of market survey evidence in support of its application. In other words, a
plaintiff in a trademark infringement/passing off case or an applicant in a trademark
revocation case should not rely solely on market survey evidence which is susceptible to be
expunged if it does not comply with Whitford Guidelines. The focus must also be placed on
real and direct evidence such as evidence obtained from investigations.

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Usage of Whitford Guidelines for Market Surveys in Malaysia

Liwayway Marketing FACTS:

Corporation v Oishi  The Appellant Liwayway Marketing Corporation
Group Public Company (Liwayway) is a company incorporated in the
Limited [2017] MLJU Philippines and is the registered owner of the trade
464 mark ‘Oishi’ in class 30 and class 43 on the Register
of Trade Marks.
 The Respondent Oishi Group Public Limited
Company (Oishi Group) is a public company
incorporated in Thailand and is in the business of
manufacturing and producing non-alcoholic beverage,
aerated water, fruit juices, ready to drink green tea and
carbonated drinks under its trade mark ‘OISHI’.
 On 24.10.2011, Oishi Group applied to the Registrar
of Trade Marks for the registration of its trade mark
‘OISHI’ in class 32 but was rejected because
Liwayway’s trade mark had already been registered in
the Register of Trade Marks. The Registrar’s refusal
to the application was premised on the ground that
Oishi Group’s trade mark was similar to Liwayway’s
trade mark and this would lead to public deception
and cause confusion.
HELD:
 The evidence tendered by Oishi Group before the
learned JC in the High Court and her finding may be
gleaned from the following passages of the learned
JC’s grounds of judgment:
“[18] The plaintiff had commissioned Dna Risk Sdn
Bhd to perform an independent inquiry and market
surveys on any “Oishi” goods of the defendant in the
market. The report, the Inquiry and Market Report
(see exh. P-3) seeks to establish prima facie evidence
of nonuse of the defendant’s trademarks.
 However, during the said market survey, there were
no “Oishi” products found in the retail outlets. Upon
interviewed, the outlets owners, outlet managers and
outlet assistants confirm that they have never heard of
and are not aware of “Oishi” products in the
Malaysian markets.

[20] Premised on the said survey report in exh. P3, I

am of the considered opinion that the plaintiff has
established a prima facie case of non-use. With

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 regards to the survey report itself, I agree with the
plaintiff’s submission that the said independent survey
report has complied with the minimum requirements
set out in Imperial Group Pic v. Philip Morris Ltd &
Anor [1984] RPC 293 as applied by Justice Azahar
Mohamed in Lam Soon Edible Sdn Bhd v. Hup Seng
Perusahaan Makanan (M) Sdn Bhd [2010] 5 CLJ 975.

 The Court of Appeal agreed wholly with the findings

of the learned JC on non-use by Liwayway and
considered the market survey report conducted by
Dna Risk Sdn Bhd tendered by Oishi Group in exhibit
P3.

Lam Soon Edible Sdn FACTS:

Bhd v Hup Seng  The applicant was the owner of the trademark
Perusahaan Makanan 'NATUREL' and had been using the said trademark on
(M) Sdn Bhd [2010] 4 its products since the late 1980s.
MLJ 702  Meanwhile, the respondent was the registered
proprietor of the trademark 'NATURELL'.
 The applicant applied to expunge and remove from
the Register of Trade Marks the Malaysian Trade
Mark Registration No 97012526 for 'NATURELL' in
class 30, pursuant to ss 45 and/or 46 of the Trade
Marks Act 1976 ('the Act').
 The applicant, in its attempt to extend and market the
use of its trademark to include class 30 products was
unsuccessful when its application to register the
'Naturel & Device' trademark was objected, inter alia,
on the basis that the mark was identical or confusingly
similar to the respondent's trademark.
 The applicant contended that there had in fact been
non-use by the respondent of the 'NATURELL' mark
in good faith in relation to the goods for a continuous
period of not less than three years up to 16 March
2009, ie, one month before the institution of this
proceeding.
HELD:
 To establish non-use, the applicant relies on the
reports by AC Nielsen Malaysia and the Nielsen
Company Malaysia.
 In my view, the reports are not reliable on the ground
that the applicant has failed to show that the reports

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 have complied with the 'minimum criteria' governing
admissibility of such evidence.
 The Court of Appeal in Lim Yew Sing v Hummel
International Sports & Leisure A/S [1996] 3 MLJ 7
held that survey evidence must meet certain minimum
requirements. Mahadev Shankar JCA said at p 26:

To the various reasons given earlier as to why the

survey was of no assistance in this case them must
now be added another. Even if authorship had been
properly proved, survey evidence — to have validity
— must meet certain minimum criteria which have
been spelt out in Imperial Group plc & Another v
Philip Morris Limited & Another [1984] RPC 293. In
the instant case, the required criteria had not been
met.

 The 'minimum criteria' referred to by the Court of

Appeal in Lim Yew Sing are laid down in Imperial
Group plc & Another v Philip Morris Limited &
Another [1984] RPC 293.
 In this regard, I agree with the submission of learned
counsel for the respondent that although the survey
evidence in Lim Yew Sing was in relation to
establishing confusion in the market, the minimum
criteria should be applicable to survey evidence to
purportedly showing non-use of a mark under s 46(1)
(b) of the Act.
 I am of the view that the applicant has failed to
establish a prima facie case of non-use in good faith
of the 'NATURELL' mark in Malaysia.
 The application to expunge and to remove the
Malaysian Trade Mark Registration No 97012526 for
'NATURELL' in class 30 from the Register of Trade
Marks is dismissed with costs.

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