LAW587 Assessment

The issue is whether Putrajaya could successfully take action against Ben, Miss Zee
and Mr. Wan for passing off.

In Star Industrial Company Limited v Yap Kwee Kor trading as New Star Industrial
Company: PC 26 Jan 1976, a passing off action is defined as a remedy of protecting the
goodwill of an unregistered trademark of one person that is being passed off by another
person. Passing off was classically concerned with situations in which a trader
misrepresented that the items or services he was selling were the goods or services of a
competitor. As time goes by, the law evolved to include more types of misrepresentation,
such as misrepresentations about the quality of a product and false claims that one trader has
some kind of business relationship with another.

Any distinguishing characteristic of a product, including its get-up (which includes

aspects like the size and shape of the packaging, the material, colour, and decoration of the
wrapper, the lettering and arrangement of the label), the slogan used in its advertisement, and
the overall branding of the product, can be the subject of misrepresentation. In J Bollinger
SA v Costa Brava Wine Co Ltd (No. 3), the law of passing off was extended to encompass
protection of the goodwill in a name or word of a particular product, instead of the goodwill
associated with the business of any particular trader as was typically the case with passing off
actions.

In the case of Erven Warnink BV v Townend & Sons (Hull) Ltd, Lord Diplock spelt
out 5 elements to be fulfilled in order for a passing off action to succeed. However, the
ingredients were reduced to three elements by Lord Oliver in Reckitt & Coleman Products
Ltd v Borden Inc (JIF Lemon case) namely;

1. The product possesses goodwill and reputation

2. There is misrepresentation which creates confusion between the plaintiff’s and
the defendant’s product
3. The misrepresentation resulted damage or economic loss to the plaintiff

For goodwill, the plaintiff in a passing off case must demonstrate that he possesses
goodwill with regard to the goods or services and goodwill shall exist at the time the act of
passing off occurred. In MIFF Sdn Bhd v Kuala Lumpur & Selangor Furniture
Entrepreneur Association & Ors, the court decided that the common words used by traders
in the market place such as ‘furniture’, ‘Malaysia’ and ‘Malaysia Furniture Fair’ were generic
and common descriptive terms which could not be monopolised by any trader. Similarly, in
Suria KLCC Sdn Bhd v Makamewah Sdn Bhd, the judge concluded that the word "suria" in
the Malay language simply meant "the sun." The plaintiff should not have a monopoly or
exclusive use of the word because it was discovered to be a frequently used business name in
Malaysia. As a result, the plaintiff's passing-off claim was denied.

However, in Yomeishu Seizo Co Ltd & Ors v Sinma Medical Products (M) Sdn Bhd,
the court took into consideration the evidence that the plaintiffs had continuously promoted
their wine to the tune of almost RM8 million in 20 years and by 1981, the plaintiffs had built
up among the local Chinese a reputation for their trade mark. Therefore, although the name
used by the defendant in trading his goods was merely a true description i.e, primary
meaning, the defendant was not entitled to such a usage where another trader had been for
years using the same descriptive term for his goods.

Hence, the goodwill must have the power of attraction sufficient to bring customers
home to the source from which it emanates. In Yong Sze Fun & Anor v Syarikat Zamani Hj
Tamin Sdn Bhd & Anor, the court of appeal stated that there are four features of goodwill, (i)
goodwill is the benefit which has been added to the business through extensive trading
operations which attract custom. (ii) the trade mark or get up used in the business is the badge
and indicia that signifies, indicates and identifies the goodwill of the business, (iii) goodwill
is created through and by means of trading activities. And (iv) the more extensive the trading
activities are, which must necessarily include sales and promotion, the more value that would
be attached to the goodwill.

When a product's appearance or packaging has been sufficiently distinctive of the

trader's goods to become exclusively identified with his wares, goodwill may be established.
In Thye Huat Chan Sdn Bhd v Thye Shen Trading Sdn Bhd, the term ‘get up’ means the
whole visible external appearance of goods in the form in which they are likely to be seen by
the public before purchase.

In Consitex SA v TCL Marketing Sdn Bhd, the plaintiff was the registered proprietor
of the trade marks ‘Zegna’ and ‘Ermenegildo Zegna’, menswear in Malaysia, sold in two
high-end shopping malls. Ramli Ali J in this case discovered that the plaintiff had limited
goodwill as the majority of Malaysians are not aware of the existence of the plaintiff’s mark.
Therefore, the learned judge took a view that if a trade mark is only known to the higher

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income bracket segment of society but not to the general public, the goodwill in the business
is regarded as minimal and may not be sufficient for a passing off action.

Misrepresentation on the other hand means a false representation by the defendant

which causes damage to the goodwill of the plaintiff’s business through an unlawful
association created between the defendant and the plaintiff as per Syarikat Zamani Hj Tamin
Sdn Bhd & Anor v Yong Sze Fun & Anor. In Perusahaan Otomobil Nasional Bhd v Bidara
& Ors, where the defendant used the plaintiff’s trademark ‘Proton’ on goods that were
identical, it was held that a likelihood of confusion or deception would arise because the
purchasing public would be deceived into thinking that the goods were original ones from the
plaintiff. In Lord’s Tailor Sdn Bhd v Seow Sing For (t/a Tukang Jahit Lord’s), where the
parties are a separate tailoring business operating under the same name but different logos in
Kuala Lumpur, Abdul Malek J granted an injunction against the defendant although the
choice of identical names was merely a coincidence without any intentional endeavour on the
part of the defendant to impersonate as the plaintiff but the decision may be different if the
defendant operated in any other place outside Kuala Lumpur.

A traditional form of passing off can be seen when the defendant misrepresents that
his goods or services are from the plaintiff. In Microsoft Corporation v Tokyo Micro-Soft
(M) Sdn Bhd, the defendant was held to be liable for passing off as the defendants business
name were pronounced in the same way as the plaintiff’s and conveyed to the public an
association with the plaintiff and caused confusion. Misrepresentation may also happen when
the defendant’s goods are almost similar in appearance to the plaintiff’s goods. In A Clouet &
Co Pte Ltd & Anor v Maya Toba Sdn Bhd, the plaintiff sold fish products under the
trademark of ‘Ayam Brand’ consisting combination of yellow and red colours that were sold
since 1960 and had a significant reputation and goodwill in Malaysia concerning their
trademark and get-up. The court held that the plaintiff’s red and yellow colour arrangement
was distinctive of their products and the use by the defendant of a similar get-up was a
misrepresentation.

Regarding common fields of activity, Mahadev Shankar JCA in Lim Yew Sing v
Hummel International Sports & Leisure A/S stated that the element of confusion comes in
when goods belonging to two different proprietors with similar marks are competing in the
same market in the course of trade. For instance in Mun Loong Co Sdn Bhd v Chai Tuck
Kin, the plaintiff is the owner of two large departmental stores in Kuala Lumpur under the

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name ‘Mun Loong’ while the defendant engaged in optical goods business under the name
‘Mun Loong Optical Contact Lens Centre’. The court decided that there was no
misrepresentation as both parties were in totally different fields of business activity such that
any likelihood of deception or confusion would be unlikely to arise. In Maxis Sdn Bhd v
Suruhanjaya Syarikat Malaysia & Ors, James Foong J noted that “it is not restricted to only
cases where the parties are engaged in common field of business activity but also to any
business that may mislead persons into thinking that those products or services were the
goods and services of the plaintiff”.

Proof that the plaintiff has suffered or is likely to incur loss as a result of the
defendant's misrepresentation is the third element that must be proven in a passing off action.
In Dabur India Ltd v Nagasegi Sdn Bhd & Ors, due to the similar trademark, packaging and
get up of the toothpaste of both parties, the court accepted the fact that there was a likelihood
of damage to the plaintiff’s goodwill through the loss of sales. This is because if the
defendant's goods do not satisfy the standards associated with the plaintiff's products, the
defendant's poorer quality may be imputed to the plaintiff, causing the plaintiff's goodwill to
suffer as per Syarikat Wing Heong Meat Product Sdn Bhd v Wing Heong Food Industries
Sdn Bhd & Ors.

Similarly, there are few cases showing that the defendant's misrepresentation may
have the effect of diluting the association of the plaintiff's trade mark, trade name, or other
identifying indicators with the plaintiff's service, so weakening the indicia's appealing force
to draw in clients. In Leo Pharmaceutical Products Ltd A/S v Kotra Pharma (M) Sdn Bhd
where there was evidence showing that the plaintiff’s sales were diverted because the
defendant's goods were marketed as the less expensive alternative to the plaintiff's product.
The court held that the prestige and exclusivity of the plaintiff’s trade marks would be
diminished as a result and the loss of exclusivity of the plaintiff’s trade marks was recognised
as a type of damage under the law of passing off.

APPLICATION

Applying to the situation, since Putrajaya did not register the trademark of Putra,
Putrajaya and Putri, they cannot take action under the Trade Mark Act 2019 for infringement
but are entitled to sue for passing off against Ben, Miss Zee and Mr. Wan as a remedy to
protect the goodwill of the unregistered trademark as per Star Industrial Company Limited v
Yap Kwee Kor trading as New Star Industrial Company.

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 As provided in the case of Reckitt & Coleman Products Ltd v Borden Inc (JIF
Lemon case), to succeed a passing off action, three ingredients shall be fulfilled. Firstly, the
product possesses goodwill and reputation. Here, it can be seen that the trademark Putra,
Putrajaya and Putri can be considered as a generic and common terms in Malaysia due to the
fact that Putrajaya is a federal territory in Malaysia and both Putra and Putri simply means a
prince or son and a princess or daughter in malay monarchy terms. By applying the case of
MIFF Sdn Bhd v Kuala Lumpur & Selangor Furniture Entrepreneur Association & Ors
and Suria KLCC Sdn Bhd v Makamewah Sdn Bhd, Putrajaya is not entitled to monopoly or
have an exclusive use of the said trademark name. However, as Putrajaya is a popular
departmental store trading in Kuala Lumpur, Bangkok, Jakarta and Singapore and have three
different branches in Kuala Lumpur which they started trading since 1958, the court should
take into consideration their effort in building their reputation and goodwill since 1958 where
they may use a lot of money in advertising their goods under the trademark of Putra,
Putrajaya and Putri and had built a reputation among Malaysians as their customers are
mainly from the upper middle class society and had always maintained high quality in its
products causing Ben, Miss Zee and Mr. Wan to not be entitled to use such trademarks since
Putrajaya had been years using the same descriptive terms for their stores by applying the
case of Yomeishu Seizo Co Ltd & Ors v Sinma Medical Products (M) Sdn Bhd.

Although Miss Zee can argued that she used the name of ‘Putri’ as her boutique name
since it is her nickname, by applying the case of Yong Sze Fun & Anor v Syarikat Zamani
Hj Tamin Sdn Bhd & Anor, it can be considered that the trademark of Putri is somehow is
used by Putrajaya is the badge and indicia that shows Putrajaya’s goodwill for their cosmetics
and women’s accessories which may indicates that their trading business had includes sales
and promotion and is more well-known as compared to Miss Zee’s boutique. Next, although
it can be argued that Putrajaya’s store goodwill has a limited goodwill as per Consitex SA v
TCL Marketing Sdn Bhd, since their customers are mainly from the upper middle class
society, it may not be relevant in Putrajaya’s situation as they had store in Kuala Lumpur,
Bangkok, Jakarta and Singapore and in Kuala Lumpur itself, they had three different
branches. As an analogy, just because a designer’s brand like Chanel and Louis Vuitton only
had customers from upper class society, it does not mean that only rich people know their
products. Therefore, the argument of limited goodwill may not be relevant in Putrajaya's
situation.

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 For the second ingredient, there is misrepresentation which creates confusion between
the plaintiff’s and the defendant’s product. For Ben, although it can be argued that his pawn
shop operates under the name of “Putrajaya Pawn Shop and Fast Loan services” is in a
different field with Putrajaya’s department store, by applying the case of Microsoft
Corporation v Tokyo Micro-Soft (M) Sdn Bhd, there is possibility that Ben may
misrepresents that his shop and services are from plaintiff. This is because the pawn shop
name is the same with the department store and it may have conveyed the public into thinking
that Ben’s shop is associated with Putrajaya and caused confusion. Moreover, there is an
ingredient of fraud and misrepresentation where Ben had placed a big banner in front of the
shop with the following words “ in business since 1958” when the truth is he only operated
his shop in January 2021.

As for Miss Zee's situation, it can be seen that she started to operate a boutique in the
name of “Putri Woman Fashion House” in Jalan Gombak Kuala Lumpur. By applying the
case of Syarikat Zamani Hj Tamin Sdn Bhd & Anor v Yong Sze Fun & Anor, Miss Zee
actions amounted to a false representation that may caused damage to Putrajaya’s goodwill as
the public may think that Miss Zee’s boutique is associated with Putrajaya especially when all
the decorations and set-up of the boutique closely follows that of the departmental store and
even the carrier bags given to the customers are designed similarly and there was even a
slogan in front of the shop that was printed with the following words “ as seen in television”.
As per Perusahaan Otomobil Nasional Bhd v Bidara & Ors, the goods, trademark and the
decorations are identical and may cause confusion as the public may think that Miss Zee’s
boutique is a new branch of Putrajaya especially when both parties operate in Kuala Lumpur.

As for Mr. Wan’s situation, the issue of common fields of activity may be relevant.
This is because Putrajaya is a departmental store while Mr. Wan is a manufacturer of “Putra”
bicycles. Applying the case of Mun Loong Co Sdn Bhd v Chai Tuck Kin, it can be said that
no misrepresentation may occur as both parties were in totally different fields of business
activity as such that any likelihood of deception or confusion may not arise. In addition to
this, the target market of customers are also distinct where Putrajaya’s customers are mainly
from the upper middle class society while Putra bicycles are meant for young boys. However,
by applying the case of Maxis Sdn Bhd v Suruhanjaya Syarikat Malaysia & Ors, if only
Putrajaya can prove that Mr.Wan’s business may mislead persons into thinking that those
bicycles were the goods and services of them, only then Mr.Wan’s ‘Putra’ bicycles is said to
be a misrepresentation.

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 Thirdly, Putrajaya must prove that the misrepresentation made by Ben, Miss Zee and
Mr. Wan had resulted in damage or economic loss to them. Applying the situation above,
although it can be argued that there is no evidence in showing that Putrajaya had suffered any
economic loss, by applying the case of Syarikat Wing Heong Meat Product Sdn Bhd v Wing
Heong Food Industries Sdn Bhd & Ors, as for Ben and Miss Zee, due to the similar shop
name, trademark, goods and services provided, it may cause a likelihood for Putrajaya to
suffer economic loss if when Ben and Miss Zee’s goods does not satisfy the standards
associated with Putrajaya's products, where the poorer quality may be imputed to Putrajaya
causing their goodwill to suffer. Hence, the court shall take into consideration Putrajaya's
reputation and goodwill may continue to be tarnished if both Ben and Miss Zee are still
allowed to operate under the same name of ‘Putrajaya’ and ‘Putri’. This is due to the fact that
Putrajaya has always maintained high quality in its products since 1958 and are well-known
between the famous and rich customers. As for Miss Zee, since the shop name, products sold,
decorations used, slogan and trademark are similar to Putrajaya, by applying the case of Leo
Pharmaceutical Products Ltd A/S v Kotra Pharma (M) Sdn Bhd, Putrajaya’s sales have the
likelihood to be diverted as Miss Zee’s boutique may be marketed as a less expensive
alternative. Therefore, the prestige and exclusivity of Putrajaya’s trademark shall be
recognized by the court as damaging as a result of Ben and Miss Zee’s misrepresentation.

As for Mr. Wan’s situation, it is not disputed that Putrajaya has a reputation and good
name. Nevertheless, since there is no misrepresentation made by Mr. Wan since both parties
are not in the same common field of activity and there is no likelihood to cause confusion
between the public, hence it cannot be said that Mr.Wan’s ‘putra’ bicycles had caused damage
to Putrajaya. Putrajaya may only have said that Mr. Wan’s product had caused them damage
if let say the advertising campaign in the local newspaper of the bicycle was similar and had
caused the public to think that the bicycle is associated with Putrajaya.

In conclusion, Putrajaya could successfully take action for passing off against Ben
and Miss Zee as all elements of passing off are fulfilled but not against Mr. Wan as there is no
misrepresentation since both parties are of different fields and there is no likelihood to cause
any damage towards Putrajaya.