An extended 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."
One of the issues raised in defence was whether it was possible for a common name such as ‘Ken’ to acquire a secondary distinctive meaning. The defendants submitted that no goodwill could arise out of a common English name. However, the High Court held that the plaintiffs had, through extensive promotion and use, established that the name ‘Ken’ is wholly associated with the plaintiffs in the property development and construction sector. The defendants also argued that purchasers of the property units are sophisticated and would have verified the identity of the developer before buying a unit and that therefore there could have been no confusion at the time of purchase.
The High Court agreed with the plaintiffs that while there may not be any product confusion (the ‘product’ being the property units), there is evidence that members of the public are likely to associate the defendants’ property developments with that of the plaintiffs by reason of the use of the name ‘Ken’ as part of the promotional name or name of development by the defendants, when such association did not exist. The defendants ought to be enjoined as a result of this wrongful association.
In the case of Trinity, the plaintiff was also involved in the business of project management, property development and property investment. The defendant was a publicly listed company, previously known as Talam Corporation Bhd, which subsequently changed its name to Trinity Corporation Bhd. The dispute arose following the change of the defendant’s name to include the word ‘Trinity’.
As in the Ken Holdings case, the plaintiff claimed that it had acquired substantial reputation in the name ‘Trinity’ in the property development sector in Malaysia, and that the defendant’s change of name in August 2011 had resulted in confusion among members of the trade and public so that the defendant was wrongly associated with the plaintiff when such an association did not exist.
Echoing Ken Holdings, 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 and was distinctive of the plaintiff. The defendant was therefore stopped from using the name ‘Trinity’ as part of its corporate name.
The extended form of passing off, such as misrepresentation due to wrongful business association as opposed to product misrepresentation, appears now to be firmly established in Malaysia. It is encouraging to note that Malaysian courts are clearly prepared to protect names used in business, even if they are common or generic, as long as they have acquired a secondary meaning through extensive promotion.
Chew Kherk Ying is a partner at Wong & Partners. She can be contacted at: kherkying.chew@wongpartners.com
