‘Dodol’ is a thick, sticky, sweet toffee-like confection made from coconut milk, jaggery and rice flour. It is popular in many parts of South and Southeast Asia, including Malaysia.
When it comes to such local delicacies in Malaysia, Tan Kim Hock is the undisputed go-to brand for locals and tourists looking to try these sweets. Its namesake Mr Tan Kim Hock (together with his late wife) created the durian dodol, coconut dodol and coconut biscuits before the company, Tan Kim Hock, was incorporated in 1975.
In 1976, Tan Kim Hock filed a trademark application covering dodol, coconut biscuits and coconut candy in class 30 (Trademark 1, pictured). The registration has been renewed until 2021. Tan Kim Hock found itself defending its trademark rights in the High Court case of Tan Kim Hock Tong Seng Food Industry v Tan Kim Hock Product Centre & Siah Siu Eng.
The second defendant, Siah Siu Eng, became a director and shareholder of Tan Kim Hock Product Centre with Tan in 2001. Tan Kim Hock Product Centre was set up to market and sell dodol after it was manufactured in the plaintiff’s factories.
In 2012, Tan sold his interest in the Tan Kim Hock Product Centre to Siah. Until November 2013, the plaintiff’s products continued to be sold at the Tan Kim Hock Product Centre, before Tan Kim Hock stopped supplying goods to the centre. Subsequently, the plaintiff found dodol products not originating from Tan Kim Hock (but bearing a mark, Trademark 2—pictured—which was confusingly similar to its trademark) were still being sold at the Tan Kim Hock Product Centre.
"Since the plaintiff has been using the registered trademark with a slight and acceptable modification, there can be no intention to abandon the mark, the court said."
The plaintiff also raised concerns about whether the similarly branded dodol products were actually halal-certified, since its dodol products are and its reputation could be jeopardised if there was no certification.
Raided premises
Based on the above, in 2014 the court granted a Trade Description Order (TDO) to Tan Kim Hock and a raid on Tan Kim Hock Product Centre was carried out that same year. This case was an application by the defendants for leave to intervene and set aside the TDO. They claimed that Siah, who started working for Tan in the 1970s, co-created the trademark.
They further alleged that, among other things, (i) the Tan Kim Hock mark as registered in 1976 had been abandoned through non-use; and (ii) when Tan sold his interest in Tan Kim Hock Product Centre to Siah, it included the goodwill and the mark concerned.
The High Court found that the Tan Kim Hock trademark is indisputably valid and that the plaintiff has acquired a substantial reputation and goodwill in the mark. The infringing products bear a confusingly similar trademark and the only missing part is the words ‘cap pokok kelapa’ or ‘coconut tree brand’.
As for the defendants’ claim that Tan Kim Hock had failed to prove that the registered trademark in its entirety (including ‘cap pokok kelapa’) has ever been used in any of their products at all material times, the court held that section 23(2) of the Trade Marks Act 1976 is relevant. It states:
“Where under this act use of a registered trademark is required to be proved for any purpose, the court or the registrar may, if and so far as it or he shall think right, accept use of an associated trademark or of the trademark with additions and alterations not substantially affecting its identity as an equivalent for such use.”
With or without the words ‘cap pokok kelapa’, the dominant feature remains the ‘T’ device of a coconut tree, which is used on the Tan Kim Hock dodol mark. Since the plaintiff has been using the registered trademark with a slight and acceptable modification, there can be no intention to abandon the mark, the court said. As long as there is a registered trademark and it has been infringed, this forms the basis of the TDO.
In addition, the halal certification granted to the plaintiff that is affixed on its products was found (during the raid) to have been used by the defendants for a few hundred seasoning packs of bak kut teh (a typically non-halal meat dish) bearing the Tan Kim Hock trademark as well. So, not only was there an abuse of trademark rights, but also of the halal certification.
Lim Eng Leong is a trademark manager and legal counsel at Henry Goh. He can be contacted at: engleong@henrygoh.com
Lim Eng Leong, Henry Goh, trademark, Trade Description Order, Tan Kim Hock,
