1 November 2013Jurisdiction reportsChew Kherk Ying and Chen Hong Sze

Maestro Swiss: a geographical indication

The appellants’ suit was initiated in 2005 against Maestro Swiss Chocolate Sdn Bhd, Maestro Swiss Products Sdn Bhd, Maestro Swiss Corporation (M) Sdn Bhd and Maestro Swiss Holdings (M) Sdn Bhd (the respondents) for, among others, the respondents’ use of the words ‘Maestro Swiss’ in relation to chocolate and chocolate-related products, particularly in relation to chocolates with the brand name ‘Vochelle’.

The respondents’ products were manufactured in Malaysia. The appellants’ objection to the use by the respondent of the words ‘Maestro Swiss’ was on the premise that the use of the words would be taken by a significant section of the Malaysian public as being indicative of the products bearing such words having been manufactured in Switzerland or by a Swiss manufacturer, given the reputation and goodwill for fine quality chocolates manufactured in and exported from Switzerland.

The appellants claimed that the continued use by the respondents of the words ‘Maestro Swiss’ in relation to the products was calculated to misappropriate the goodwill and reputation and/or commercial advantage enjoyed by the appellants and/or other Swiss chocolate manufacturers in relation to Swiss chocolates.

The appellants also contended that the respondents’ use of the words ‘Maestro Swiss’ was use as a geographical indication, in contravention of the Geographical Indication Act 2001. The appellants claimed that the manner in which those words were presented to the public, in particular, the use of the colours of the Swiss flag in association with those words, was calculated to deceive and/or confuse the public into thinking that chocolates bearing the words ‘Maestro Swiss’ are produced in or originated from Switzerland or have association or connection with Switzerland or Swiss chocolates.

The use of the words would be taken by a significant section of the Malaysian public as being indicative of the products bearing such words having been manufactured in Switzerland.

The High Court had earlier found that the ‘Maestro Swiss’ device was not used on the respondents’ packaging to indicate that the products originated from Switzerland. The High Court considered the purposes performed by geographical indications, namely as (i) an indication which identifies goods as originating in a particular country or locality, (ii) a suggestion to the public that the goods come from an area where a given quality of the goods is attributable to their origin, and (iii) an indication that promotes the goods of the geographic origin, and concluded that ‘Maestro Swiss’ did not perform any of these purposes.

The High Court compared ‘Maestro Swiss’ with accepted geographical indicators such as ‘Sarawak pepper’ and ‘Sabah tea’, and disagreed with the appellants that the word ‘Swiss’ in ‘Maestro Swiss’ was sufficient to indicate that the products to which the word was applied come from Switzerland.

The Court of Appeal however held that ‘Maestro Swiss’ qualifies as a geographical indication and that there was a conscious use of ‘Maestro Swiss’ on the front of the packaging so as to give the impression of a link with Switzerland or a Swiss company. The Court of Appeal further held that the use of ‘Maestro Swiss’ was also not a bona fide use of the respondents’ corporate name and logo as in reality there was no substantive Swiss origin or connection. The Court of Appeal allowed the appeal in relation to the tort of extended passing off.

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