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Case Update: Oral resemblance between registered trademark insufficient alone to amount to infringement

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29 April 2022

INTELLECTUAL PROPERTY
Trademark – Passing Off – Company Name – Domain Name – Infringement – Burden of Proof – Trade Marks Act 1976, s.38

Skyworld Holdings Sdn. Bhd. & Others v. Skyworld Development Sdn. Bhd. & Anor
Civil Appeal No. 02(f)-50-09/2020(w) | Federal Court
- see the grounds of judgment here

Facts Skyworld Development Sdn. Bhd. (‘Respondents’) are in the business of property development. Skyworld Holdings Sdn. Bhd. & others (‘Appellants’) are connected and affiliated companies, involved in businesses relating to real estate activities, project development, retail sale of construction materials and tourism. The Respondents are the registered owners of the SkyWorld Registered Trade Marks in Class 37. The word “SkyWorld” according to the Respondents forms part of the Respondents’ company names and the Respondents had started using the “SkyWorld” marks in 2014. The Respondents claim against the Appellants are for trade mark infringement in respect of the use of the following names which include the company name, domain name and the name of the purported development project in Karambunai, Sabah known as ‘Sky World City Sabah’ as well as for passing off the Appellants’ business and/or activities as that of the Respondents’ business through the use of the Infringing Names. The learned High Court Judge found there was no merit in the Respondents’ claim, hence decided in favour of the Appellants. On appeal, the Court of Appeal had, after scrutinising the appeal records and submissions of the parties, confined the issue before it to a question of whether the corporate Appellants’ name which resembles the Respondents’ trademarks could be held liable for trade mark infringement in respect of the use of the SkyWorld registered trademarks as part of their company name. The Court of Appeal found the Appellants liable for trade mark infringement, reasoning that in an action for trade mark infringement, it is not necessary to establish that the infringing mark is identical with the registered mark. Hence this appeal.

Issue Whether the use of generic words which form part of a company, corporate, trade of domain name, which such words are also comprised as part of registered trade mark of another party (but which are not registered as a word mark or disclaimed), is deemed to be an infringement of such registered trade mark?

Held In unanimously allowing the appeal, YA Puan Sri Dato' Zaleha Binti Yusof in delivering the judgement of the Federal Court held that the Respondents placed great emphasis on the fact that the Court of Appeal had found there were similarities or resemblance not only aurally, but also visually on the corresponding marks. However the question left unanswered was where was the reason of the Court of Appeal to come to such conclusion that visually they resembled each other? The burden of proof was on the Respondents, but this was not discharged in the view of the Federal Court. Instead in this appeal the Federal Court found that the learned High Court judge had vividly explained the reasons why he reached the finding that there was no similarity or resemblance between the Appellants’ corporate name and domain name and the Respondents registered trademarks. There was also no likelihood of confusion or deception in the course of trade in relation to the marks. The Federal Court found the Court of Appeal erred when it reversed the findings and the decision of the learned High Court judge and substituted those findings with their own. This was not a harmless error as the findings of the Court of Appeal were not supported by any adequate reasons. In conclusion, the Federal Court held that that apart from an oral resemblance between the registered trademark and the corporate and domain name, there was no real resemblance. Subsection 38(1) of Act 175 requires that a mark must be identical with or so nearly resembling the registered mark, in order to satisfy the element of infringement.

Zul Rafique & Partners
{29 April 2022}

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