An extended form of passing off


Chew Kherk Ying

The tort of passing off is typically centred upon the basic principle that “a man is not to sell his own goods under the pretence that they are the goods of another man”—otherwise commonly known as the classic form of passing off.

However, in recent cases, Malaysian courts have recognised an extended form of passing off in the cases of Ken Holdings Berhad v Sri Seltra Sdn Bhd [2013] and Trinity Group Sdn Bhd v Trinity Corporation Berhad [2012]. The scope of passing off in these cases extended to ‘wrongful business association’ as opposed to misrepresentation of the source of products.

In the case of Ken Holdings, the defendants, Sri Seltra Sdn Bhd, had used the mark ‘Ken City’ in promotional materials for a property development known as D’Pines@Ampang and had also used the name ‘Ken City Square’ as the name for another property development. The plaintiffs filed an action for passing off against the defendants with respect to the use of the name ‘Ken’, which the plaintiffs claimed is wholly associated with the plaintiffs and their developments, which use the prefix ‘Ken’, including ‘Ken Bangsar’ and ‘Ken Damansara’.

"the High Court adjudged that the plaintiff had established extensive use of the name ‘Trinity’ in residential development and that therefore the word ‘Trinity’ had acquired a secondary meaning."

High Court, Ken, trademark identity, brands