MALAYSIA: MONIER or LA MONIEER?

April 3rd, 2015

 

A recent dispute involving trade marks of “MONIER” and “LA MONIEER” sparked a myriad of issues including trade mark infringement, passing off and copyright infringement heard at the High Court of Kuala Lumpur.

Monier Malaysia Sdn. Bhd., Monier Sdn. Bhd. and Redland Engineering Limited (hereinafter referred to as the Plaintiffs) belong to Monier Group of Companies with Redland Engineering Limited being the registered proprietors of several “MONIER” trade marks in relation to goods and services in Classes 6, 17, 19 and 37 in Malaysia. The Plaintiffs also own “MONIER COOLROOF” trade marks in relation to goods and services in Classes 6, 17, 19 and 37 in Malaysia. These trade marks have been used extensively in Malaysia by the Plaintiffs since 1979 and they have gained goodwill reputation in the roofing industry as a result thereof. The Plaintiffs also produced several leaflets bearing the MONIER trade marks in their marketing and advertising promotions.

The Plaintiffs brought an action against Mr. Pua Tai Yong and Mr. Sia Khim Choon (hereinafter referred to as the Defendants) for trade mark infringement, passing off and copyright infringement when it was discovered that the Defendants have manufactured and sold roof tiles bearing the name “LA MONIEER,” and that the Defendants had produced very similar leaflets as the Plaintiffs in their efforts to boost their sales of the products.

In their efforts to respond to the action brought by the Plaintiffs, the Defendants filed an application to amend the Statement of Defence and added a Counterclaim against the Plaintiffs and included a company called Global Possible Sdn. Bhd. as a party and as a co-defendant in this suit.

In their defence, the Defendants argued that Global Possible indeed admitted that they are the proprietor for the mark “LA MONIEER” in which they have filed a trade mark application at the Intellectual Property Corporation of Malaysia (MyIPO) after receiving a cease and desist letter from the Defendants. Global Possible also submitted that the leaflets were indeed produced by them. In view of this, the Defendants further argued that the issue in contention is to determine whether or not “LA MONIEER” was indeed infringing the trade mark “MONIER”, and if so, the Plaintiffs should be suing Global Possible instead of the Defendants.

The High Court found in favour of the Plaintiffs and rejected the Defendants’ application to include Global Possible as a co-defendant. In her reasoning, the judge said that Global Possible is merely an RM2 company with business dealings of ‘general trading, investment holding company, property and construction,’ as confirmed by the Plaintiffs when conducting a company background check. Hence, it is not worth of the Plaintiffs’ efforts in taking up the case against Global Possible.

Moreover, the Plaintiffs’ suit against the Defendants does not rely on the trade mark application of “LA MONIEER,” which has since been objected by MyIPO, and deemed irrelevant to this suit, as the matter is between the Defendants and Global Possible