YLC Trademark Agent Malaysia

.

Questions:

 

Whether the meaning and pronunciation of words in a word mark will be taken into account when considering whether there is an infringement of a registered trademark?

 

It was decided in the case of SUN JIANG TRADING SDN BHD v. GUANGZHOU LIBY ENTERPRISE CO LTD [2022] 1 LNS 1771

 

Facts:

 

  • The Plaintiff is the registered proprietor of the trademarks – DEPLEX &立白 (in Chinese Character)
  • The Plaintiff pleaded that it is a very well-known brand that manufactured and trades household cleaning & self-care products, and has been in the industry since 1974.
  • On 5/1/2015, the Defendant filed an application to register the “LIBY” mark. The mark is intended to be registered in Class 3 in respect of, among others, soap, detergents for household use, fabric softener, and stain removal agent.

     

  • Pursuant to the application filed by the Defendant, the Plaintiff initiated opposition proceedings against the Defendant’s application.

  • The Plaintiff submitted that the “LIBY” mark that the Defendant applied for sounds and is read as “LI BAP”, which is the Mandarin dialect for the Chinese character that appears in the Plaintiffs registered trademark. The Plaintiff contended that this will lead to a likelihood of confusion among members of the trade and public in Malaysia, and hence, contrary to s. 14(1) and s. 19 of the Trade Marks Act 1976.

  • The Defendant contended that all of the Plaintiff’s marks are dissimilar to the Defendant’s “LIBY” mark. The “LIBY” mark is also phonetically, visually, and conceptually dissimilar to the Plaintiffs registered trademark “DEPEX” since the Defendant’s “LIBY” mark did not contain any of those Chinese characters nor the word “DEPEX”.

 

FINDINGS OF THE HIGH COURT:


1.     The learned High Court Judge had referred to Parker J’s Judgment in the English case of Pianotist Co’s Application (1906) 23 RPC 774: 

“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. 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 marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods – then you may refuse the registration, or rather you must refuse the registration in that case. “

 

2.     The learned High Court Judge also took note that the Pianotist test has been applied & affirmed in the following Malaysian cases: 

  • Elba Group Sdn Bhd v. Pendaftar Cap Dagangan dan Paten Malaysia & Anor [1998] 4 MLJ 105; [1998] 4 CLJ Supp 24 (HC)
  • Consitex SA v. TCL Marketing Sdn Bhd [2008] 3 MLJ 574; [2008] 8 CLJ 44 (HC)
  • Keep Good Feel Corp Sdn Bhd (previously known as Fasa Bebas Sdn Bhd) & Anor v. Pharma World (M) Sdn Bhd & Ors [2010] 1 MLJ 242; [2010] 2 AMR 1 (HC)
  • Ai Baik Fast Food Distribution Co SAE v. El Baik Food Systems Co SA & Another Appeal [2016] 5 MLJ 768 (CoA)

3.     The High Court Judge held that the Registrar had applied the correct test in Pianotist test in rejecting the opposition raised by the Plaintiff based on 3 aspects, which are –

 

(i)      comparison on the marks itself (where comparison was made based on the phonetic and visual representation of the marks, the totality test, and the essential features of the marks under comparison);

(ii)     the goods to which the marks are applied; and

(iii)    the distinguishing features or essential features found in the marks under comparison.

 

4.     The High Court Judge further agreed with the finding of the Registrar that both marks are distinctive in total. It does not share the same name, font, or sound. The Registrar also had correctly concluded that even if the goods of the Defendant are the same with those of the Plaintiffs, it is irrelevant as the competing marks in issue are distinctive and will not lead to any likelihood of confusion. 

 

5.    The High Court dismissed the Plaintiff’s appeal with costs.

 

Answer:

 

Based on the aforesaid decision, the answer is affirmative. It is clear that when considering whether there is an infringement of a registered trademark, the Court/ Registrar will apply the Pianotist test. The phonetic similarity of the wordmark is a relevant consideration. Ultimately, the Court/ Registrar will make the comparison and see the similarity will lead to a likelihood of confusion in the mind of the public.

.

#trademark #registered trademarkagent #intellectualproperty #phoneticsimilarity #lawofmalaysia