MALAYSIA: BROTHERS FIGHT OVER TRADE MARK “BAN LEE SIANG”

September 26th, 2014

 

In the case of Chua Cheng Kuat v Chua Cheng Ho, the High Court of Melaka, held that the Chua Cheng Kuat had failed to prove the claims made against Chua Cheng Ho.

Chua Cheng Kuat (hereinafter referred to as “the Plaintiff”) is the sole owner of a restaurant in the name of “Ban Lee Siang Restaurant” since 1997.

The Plaintiff’s brother, Chua Cheng Ho (hereinafter referred as “the Defendant”) claimed that he had bought over the business of Ban Lee Siang Restaurant together with the Plaintiff and their mother from another person and the Plaintiff, the Defendant and their mother are the joint owners of the trade mark “Ban Lee Siang”.

The Plaintiff had filed a trade mark for the mark aaaaa under his name in 2011 and the trade mark was registered on 1 May 2012.

The Defendant had a conversation with the Plaintiff and the Defendant had informed the Plaintiff that the Defendant wished to open a new branch next to the Plaintiff’s business with the name of “Restaurant Ban Lee Siang” and provide similar food and drinks.

The Plaintiff had then instructed his lawyers to send a notice to the Defendant and had demanded him to stop using any trade mark which is identical or similar to his registered trade mark.

The Defendant continued using the trade mark “Restaurant Ban Lee Siang” even after receiving the notice from the Plaintiff.

The Plaintiff filed for an injunction to restrain the Defendant for using the Plaintiff’s registered trade mark.

The High Court considered few questions to this matter, whether the Plaintiff is the Registered Trade Mark owner of “Ban Lee Siang” under the Trade Mark Act 1976 or whether the Defendant has a right over “Ban Lee Siang”.

The Plaintiff argued that the Plaintiff is the sole owner of the “Restaurant Ban Lee Siang” to sell food and drinks.

The Defendant that this business is a joint ownership between the Plaintiff, the Defendant and their mother. The Defendant had provided evidence that the Defendant and Plaintiff each contributed RM30000.00 (approximately USD9400.00) for this business and their mother had contributed RM20000.00 (approximately USD6300.00). The Defendant had argued that even though Plaintiff was running the business, the Defendant and their mother deserve a share in the business.

However, the mother had informed the Court that the Plaintiff is the sole owner of the business.

The Court held that the Defendant did not infringe the registered trade mark as he is a “co-owner” of the registered mark. The Court ordered a cost of RM10000.00 (approximately USD3200.00) to the paid to the Defendant.