Malaysia: “Onus Of Proof For Good Faith Is On The Defendant”

June 28th, 2012

 

In the case of DJ Auto Components Manufacturing Sdn. Bhd. v FBK Systems Sdn. Bhd., the Malaysian High Court at Kuala Lumpur held that FBK Systems Sdn. Bhd. has failed to discharge the onus of proof that it has used the mark in good faith and allowed DJ Auto Components Manufacturing Sdn. Bhd.'s application for a Trade Description Order.

DJ Auto Components Manufacturing Sdn. Bhd. ("hereinafter referred to as "the Plaintiff") is the owner of Malaysian Trade Marks No. 95004203 and 00013891 for "FBK" marks. The Plaintiff had alleged that FBK Systems Sdn. Bhd. ("herein after referred to the Defendant") was distributing and selling brake parts bearing a trademark which was identical with or confusingly similar to the Plaintiff's "FBK" marks. The Defendant had pointed out that it is the owner of Malaysian Trade Mark No. 07021061, 07021062 and 07021064 for "FBK Brake Shoe", "FBK Brake Pad", and "FBK Brake Shoe", respectively.

The Plaintiff argued that the Defendant had used identical with or confusingly similar marks in Malaysia without its consent or authority.

The Defendant explained the position that the word 'FBK' was part of the Defendant's company's name namely FBK Systems Sdn. Bhd. since its incorporation and therefore using it was not an infringement. The Defendant argued for no likelihood of confusion and stated that they are in market since 1996 and their packaging was different than the Plaintiff's. The Defendant had also pointed that the words "Made by FBK Systems Sdn. Bhd." are printed on the packaging of the Defendant's goods.

The Court stated that to establish trade mark infringement the Plaintiff had to satisfy that the Defendant used the mark identical to the Plaintiff's mark; the offending mark was used by persons not authorized nor licensed by the Plaintiff; the Defendant were using the mark in the course of trade; the Defendant used the mark in relation to goods of which the trade mark is registered; and the Defendant used the mark in such a manner as to render the use of the mark likely to be taken as being used as a trade mark.

The Court found that the Plaintiff is the registered proprietor of the said marks and the onus is on the Defendant to show why an order should not be made against them.

The Court found that the use of 'FBK' by the Defendant in a prominent manner is calculated to deceive and cause confusion and intended to ride upon the reputation and goodwill in the said 'FBK' marks. The words "Made by" and "Systems Sdn. Bhd." were deliberately printed in much smaller fonts.

The Court held that the Defendant didn't adduce any evidence to show that it has been using any of the packaging since 1996, as alleged, or that it had affixed the letters 'FBK' on its goods since 1996. The Court held that the Defendant's allegation lacks credibility, and is not supported by contemporaneous documents.

The Court explained that bona fide means the honest use by the person of his own name, without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader. Accordingly, the Court concluded that the Defendant had failed to discharge the onus of proof that it has used 'FBK' mark in good faith.

It was clearly stated in the instant case by the Court that if the allegation lacks credibility, and are not supported by contemporaneous documents they cannot be considered by the Court.