Recent Malaysian case laws have determined on what is confusing similarity, as a test to determine whether a trademark conflicts with another registered mark hence resulting in trademark infringement.
In Y-Teq Auto Parts (M) Sdn Bhd v X1R Global Holding Sdn Bhd & Anor [2017] 2 MLJ 609, the Court granted full protection to a mark that has been determined to be well-known mark, which was X-1R for lubricant oil for goods in Class 4. The defendant, filed an application of XOne1R for motorcycle spare parts, and the Court of Appeal upheld the High Court’s decision to expunge the defendant’s trademark. The reason presented was that the appearance of the mark was too similar to the complainant and there was a trade connection even though the defendant’s application was filed in a different class.
On the other hand, in the case of Merck Kgaa v. Leno Marketing (M) Sdn Bhd; Registrar of Trade Marks (Interested Party) [2017] 1 LNS 1006, the Pianotist Principle was applied and the Court held that the “Bion” mark and “Bionel” mark are not confusingly similar.
The Pianotist Principle was held from the case of Re Pianotist Co’s Application (1906) 23 RPC 774 at 777 and the Judge stated that:
“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade mark is used in a normal way as a trade mark for the goods of the respective owners of the marks.”
In a nut shell, it is the court’s discretion in deciding whether or not a trademark is similar to another registered trademark. If the answer is affirmative, the subsequent trademark may be expunged, as to protect the rights of the registered trademark.
Hence, it can be seen that the registration of a trademark is important to avoid another party from abusing your right. Protection will only be given if it is registered with the IP offices in that particular jurisdiction.
