ii) In comparing two trade marks, it must also be considered whether the marks suggest the
same idea or lead to the goods being referred to by the same name.
REGISTERED TRADE MARK
The test to determine whether there is likelihood of confusion
• Where the respec ve marks or products or services are not iden cal, similarity will generally
be assessed by reference to whether there is a likelihood of confusion that consumers will
believe the products or services originated from the trademark owner.
• The old test is a General Recollec on test, taking into account most consumers are not
aware of the minute details of pictorial marks: whether a person who sees the one trade
mark in the absence of the other and in view of his general recollec on of what the nature of
the other trade mark was, would be liable to be deceived into thinking that one was the
same as the other. See, MI&M Corpora on & Anor v A Mohamed Ibrahim [1964] MLJ 392
• The general recollec on test is applicable even in the context of word marks.
• It must further be borne in mind that the ordinary purchaser has only an ordinary memory
and the court must be careful to make due allowances for imperfect recollec on. See, Shaik
Aly Sahib & Ors v MI & M Corpora on & Anor [1963] 29 MLJ 232.
• The new test, taking into account a brand conscious consumers: whether a person having
reasonable me to observe the mark and while paying a modicum a en on to what they
did would be confused? See, Polo/Lauren Co LP v United States Polo Associa on & Anor
Ac on [2002] 1 SLR 326
• The court applied the ocular test that requires a comparison of the visual aspects of the
marks to see whether a decep ve similarity exists or not. See, JS Staedtler & Anor v Lee &
Sons Enterprise Sdn Bhd [1993] 1 AMR 663
• In assessing confusion, the state of mind of the main purchasers of the goods is important.
Where the main purchasers of a product are housewives, their state of confusion would be
relevant to the court. See, PP v Ang Poon Teik [1995] 4 MLJ 18
• Whether the two trade marks will be confused with each other, they must be judges by:
Their looks and sound;
- The goods to which the words are to be applied;
- The nature and kind of customer who would likely to buy those goods;
- All surrounding circumstances;
- What was likely to happen if each of those marks were used in the normal way as a
trade mark of the goods of the respec ve owners of the marks. See, Elba Group Sdn
Bhd (formerly known as Chie Seng (M) Sdn Bhd) v Penda ar Cap Dagangan dan
Paten, Malaysia & Anor [1998] 4 AMR 3366.
• The comparison test developed by Si Norma J in Tan Hap & Anor v Liang Ann Hock [1989] 2
CLJ 500:
i) The marks must be considered as a whole as the true test on the totality of impression given
both orally and visually is as to cause mistake, decep on or confusion;
iii) Where words of the trade marks are compared, they must be judges by their looks and
sound.
Courts’ decisions pertaining to likelihood of confusion
• The two words “Berlei” and “Bali” that relate to the same product, would be likely to deceive
or cause confusion as they were confusingly similar and phone cally iden cal. See, Bali TM
(1969) 86 RPC 472
• There was no similarity between ‘Anakku’ and ‘Comelku’ and cannot in any way deceive the
public. See, Anakku Baby Products SB v Comelku Baby Products SB & Anor [1993] 1 BLJ 49.
• There was no similarity between the two words “Mister” and “Sister” as to be likely to cause
decep on or confusion. Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 1 CLJ 344
• Looking at and listening to “Jordache” and “Jordane”, there are so closely resembled as to be
likely to deceive or cause confusion. Jordache Enterprises Inc v Millennium Pte Ltd [1985] 1
MLJ 281
• The two words “Minlon” and “Winlon” are so nearly resembled as to likely to deceive or
cause confusion. Chong Fok Shang & Anor v Lily Handycra & Anor [1989] 1 CLJ (Rep) 424
UNREGISTERED TRADE MARK
Passing Off Ac on Under Trade Descrip ons Act 1972
Trade mark infringement and passing off ac on
16. (1) Where any person being a proprietor or registered user of a registered trade mark within the
meaning of any wri en law rela ng to trade marks or being otherwise en tled at law to the
protec on of a trade or other mark or a get-up for any goods or services established—
(a) in the case of a registered trade mark, that his rights in respect of such trade mark are being
infringed in the course of trade within the meaning of the wri en law; or
(b) in the case of a trade or other mark or get-up for any goods or services, that his rights in respect
of such trade or other mark or get-up are being infringed in the course of trade as a result of which
he has a right of ac on for passing off, the High Court may on the applica on of such person make an
order declaring that the infringing trade or other mark or get-up, as the case may be, is for purposes
of this Act a false trade descrip on in its applica on to such goods as may be specified in the order.
(2) An order of the High Court made under this sec on may be referred to as a trade descrip on
order.
(3) A subsis ng trade descrip on order made by any High Court in Malaysia shall be admissible in
evidence in any proceedings under this Act in which it is relevant as conclusive proof of a false trade
descrip on.
(4) A trade descrip on order shall expire at the end of five years from the date on which it is made
unless it is renewed by the High Court upon such terms and for such further period of me as the
High Court may decide on the applica on of the person referred to in subsec on (1) or his successor
in tle.
(5) The Minister shall cause a public register of trade descrip on orders to be established and
maintained.
PROTECTION UNDER THE COMMON LAW SYSTEM
11.1(a) Differences Between Protec on Under the Statutory Regime and Passing Off Under the
Common Law
Protec on of unregistered TM is by way of passing off ac on.
Passing of ac on is a tort founded in Common Law principles.
The fundamental principle of passing off is that nobody has any right to represent his goods as the
goods of somebody else. See, Asian Organisa on Ltd v White Hudson & Co [1962] MLJ 139 at 140.
In contrast, protec on under the statutory regime is by way of infringement proceedings.
Unlike passing off ac on, the statutory regime requires the TM to be registered in order to enjoy the
exclusive rights of the trade marks.
However, S 82(2) of TMA 76 expressly preserves the right of an owner of an unregistered TM to
resort to an ac on for passing off.
Passing Off: The Required Elements
According to Lord Diplock in Erven Warmink BV v J Townend & Sons (Hull) Ltd (the Advocaat case)
[1979] AC 731., here are five elements that must be present in order to create a valid cause of ac on
for passing off:
i. A misrepresenta on;
ii. Made by a trader in the course of trade;
iii. To prospec ve customers of his or ul mate consumers of goods or services supplied by him;
iv. Which is calculated to injure the business or goodwill of another trader (in the sense that
this is a reasonably foreseeable consequence); and
v. Which causes actual damage to a business or goodwill of the trader by whom the ac on is
brought or will probably do so.
The above elements of passing off was adopted in Malaysia. See, Seet Chuan Seng & Anor v Tee Yih
Jia Foods Mfc Pte Ltd [1994] 2 MLJ 770 (SC). See also, Pakai Industries Bhd v Chen Yew Industries Sdn
Bhd [1991] 3 CLJ (Rep) 383.
Besides the above element, Lord Fraser in the Advocaat case has introduced a narrower test to
determine whether there is a passing off i.e. In a passing off ac on, it is essen al for the plain ff to
show at least the following facts –
i) That his business consists of, or includes, selling in England a class of goods to which the
par cular trade name applies;
ii) That the class of goods is clearly defined, and that in the minds of the public, or sec on of
the public, in England, the trade name dis nguishes that class from other similar goods;
iii) That because of the reputa on of the goods, there is goodwill a ached to the name;
iv) That he, the plain ff, as a member of the class of those who sell the goods, is the owner of
goodwill in England which is of substan al value;
v) That he has suffered, or is really likely to suffer, substan al damage to his property in the
goodwill by reason of the defendants selling goods which are falsely described by the trade
name to which the goodwill is a ached.
The House of Lords in Recki & Colman (Products) Ltd v Borden Inc (1990) RPC 341 simplified the
elements of passing off to three:
i. He must establish a goodwill or reputa on a ached to the goods or services which he
supplies in the mind of the purchasing public by associa on with the iden fying-get up
(whether it consists simply of a brand name or a trade descrip on or the individual features
of labelling or packaging) under which his par cular goods or services are offered to the
public, such that the get-up is recognised by the public as dis n c ve specifically of the
plain ff’s goods or services;
ii. He must demonstrate a misrepresenta on by the defendant to the public (whether or not
inten onal) leading or likely to lead the public to believe that goods or services offered by
him are the goods or services of the plain ff. Whether the public is aware of the plain ff’s
iden ty as the manufacturer or supplier of the goods or services is immaterial, as long as
they as they are iden fied with a par cular source which is in fact the plain ff.
iii. He must demonstrate that he suffers or, in a quia met ac on , that he is likely to suffer
damage by reason of the erroneous belief engendered by the defendant’s misrepresenta on
that the source of the defendant’s goods or services is the same as the source of those
offered by the plain ff.
All the above elements and tests of an ac on for passing off, have the following common grounds
i.e. the plain ff must prove:
i) That he has sufficient reputa on or goodwill in the mark, trade mark, get-up or other indicia
in ques on in this country;
ii) That the ac ons of the defendants are likely to and/or have actually caused
misrepresenta on;
iii) That he has suffered or is likely to suffer damage or injury to his business or goodwill as a
result of the defendant’s misrepresenta on.
- Reputa on is factual , while goodwill is a legal concept. See, Gem Granites & Anor v Intraco
Suit No 723 of 1987 HC Singapore.
- Reputa on in a mark is built up through use of the mark either through sale or adver sing or
promo onal ac vi es. It is necessary for the plain ff to adduce evidence of sale and
turnover, adver sing and other promo onal ac vi es within the country in an ac on for
passing off.
 - Goodwill is a consequence of reputa on generated by some trade or business. Goodwill is - The cause of ac on of passing off should not be confined ‘to every detail’ of the five
the a rac ve force which brings in customers. See, Commissioners of Inland Revenue v characteris cs laid down by Lord Diplock in Erven Warnick v Townend. See, Bri sh
Muller & Co’s Margarine Ltd [1901] AC 217. Telecommunica on Plc v One in a Million Ltd [1999] 1 WLR 903. I

- It is impossible to have goodwill without reputa on. But, it is possible to have a reputa on
without goodwill. See, Anheuser-Busch Inc v Budejovicky Budvar NP [1984] FSR 413 (CA):
There is no goodwill for ‘Budweiser’ in England since it was only adver sed, but not sold or
available in England.
- In Bri sh Telecommunica on case, the Court granted an injunc on restraining a
cybersqua er from using the domain names it had registered even though it had not
threatened to use or to permit others to use the domain names in a way which was
misleading. The defendant instead offered to sell the domain names to the legi mate
owners.

Passing Off: The Various Ac vi es Covered

1. Defendant engages in different field of ac vity from Plain ff

- The plain ff and defendant must not necessarily engage in the same field of ac vity. See,
Lego System AS v Lego M Lemelstrich Ltd [1983] FSR 155

- The court granted the injunc on against the defendant who engaged in different field of
ac vity on the ground that the confusion will inevitably ensue with two companies having
the same names though their businesses may be different. See, Dun & Bradstreet
(Singapore) Pte Ltd & Anor v Dun & Bradstreet (Malaysia) Sdn Bhd [1994] 1 MLJ 32

- The Court allows the injunc on by Dunhill against the defendant who used the mark ‘CD
Christopher Dunhill-London’ for their sunglasses and spectacle frames in the USA. See, Alfred
Dunhill Ltd & Anor Sunop cs SA [1979] FSR 337

2. Defendant imports goods marketed abroad from Plain ff

- Parallel/gray imports i.e. impor ng goods marketed abroad and sell them under the same
mark is not a passing of because there is no misrepresenta on as to the origin of the goods.

- It was neither infringement nor passing off for the defendant to import into Malaysia a
product (panadol) meant for the UK domes c market. See, Winthrop Products Inc & Anor v
Sun Ocean (M) Sdn Bhd & Anor [1988] 2 MLJ 317. See also, Revlon Inc & Ors v Cripps & Lee
Ltd [1980] FSR 85

- Ac on for passing off is allowed if the gray importer represent the imported goods of
inferior quality and represent it to be of the same quality to those meant for the domes c
market. See, Colgate-Palmolive Ltd v Markwell Finance Ltd & Anor [1988] RPC 283; Wilkinson
Sword Ltd v Cripps & Lee Ltd [1982] FSR 16,

3. Defendant obtains registra on of a company resembling the trading name of the Plain ff

- ‘Company piracy’ i.e. unauthorised person obtains registra on of a company name

resembling the trading name of an en ty and then offers it for sale to that en y is subject
to the ac on of passing off. See, Panhard et Levassor v Panhard Levassor Motor Company
[1901] 2 Ch 513; Sunher & Co AG v Sunher Ltd [1967] RPC 336

- The court will not endorse registra on of companies with names where others have
goodwill in those names and the registering party then demanding a price for changing the
names. See, Glaxo Plc v Glaxowellcome Ltd [1996] FSR 388