MALAYSIA: CONSENT ORDER REVISITED

June 26th, 2015

 

This article is based on the decision of High Court of Malaya in Kuala Lumpur involves between X1R Global Holdings previously known as Quantum Global Far East Sdn. Bhd. with X1R Global Sdn. Bhd. and Y-TEQ Auto Parts (M) Sdn. Bhd. and Registrar of the Trade Marks, Malaysia.

X1R Global Holdings (hereinafter be referred as “the 1st Plaintiff”) and X1R Global Sdn. Bhd. (hereinafter be referred as “the 2nd Plaintiff”) are companies incorporated in Malaysia. There was an agreement between the 1st and 2nd Plaintiffs that the 1st Plaintiff authorised the 2nd Plaintiff to use “X-1R” (hereinafter referred to “the trade mark”). Both Plaintiffs have the exclusive rights on distributing X1R products which involves lubricant, greases, fuel detergent and racing additives.

The 2nd Plaintiff had subsequently filed a trade mark application to register 1st Plaintiff’s trade mark in Malaysia on 28 July 2011.

Y-TEQ Auto Parts (M) Sdn. Bhd. (hereinafter be referred as “the Defendant”) is in business of trading spare parts for motorcycles and scooters and accessories for motorcycles and scooters.

Both the Plaintiffs had earlier brought an action against the Defendant because the Defendant had advertised, distributed and sold products which carry a trade mark which is similar to the trade mark. They seek an injunction order against the Defendant for passing off or attempting to pass off by manufacturing, advertising, marketing, selling offering for sale, supplying and distributing products bearing the letters and numeral "X1R”.

The High Court had since issued a Consent Order and therefore the Defendant was injuncted from manufacturing, advertising, marketing, selling offering for sale, supplying and distributing products bearing the letters and numeral "X1R” and file any trade mark application for a mark bearing the letters and numeral "X1R”.

It came to the Plaintiffs’ knowledge that the Defendant had continued manufacturing, advertising, marketing, selling offering for sale, supplying and distributing products bearing the letters and numeral "X1R”. The Plaintiffs had then filed an action against the Defendant for a breach of the Consent Order.

The Defendant submitted that they did not breach the Consent Order and that trade mark belongs to them and it has been registered for 10 years from 18 January 13 to 18 January 2023 bearing trade mark number 2013001168 and 2013001166.

The Plaintiffs objected the Defendant’s mark due to visually and phonetically similar to the trade mark.

The High Court of Malaya in Kuala Lumpur held that the Plaintiffs had failed to proof beyond reasonable doubts that the Defendant had breached the Consent Order which involves passing off, supplying and distributing products with the letter XR1.