MALAYSIA: THE FIGHT OVER “OVERSEAS”

July 27th, 2016

 

In the case of Restoran Oversea Holdings Sdn Bhd v Overseas Seafood Restaurant Sdn Bhd, Restoran Oversea Holdings Sdn Bhd (hereafter referred to as “the Plaintiff”) had filed for a legal action to claim damages and to injunct Overseas Seafood Restaurant Sdn Bhd (hereinafter referred to as “the Defendant”) from continuing with the passing off of the Plaintiff’s two trade marks.

The first trade mark was a set of Chinese characters which means “overseas” in English while the second trade mark was a circular image in red with the same Chinese characters on top of rolling waves, with the words “Restoran Oversea‟. The Plaintiff claimed that products bearing both trade marks have been widely advertised over the airwaves and via the social media.

The Plaintiff alleged that the Defendant had been endorsing its restaurant using their business name which is similar to the Plaintiff’s two registered trade marks in a manner which caused confusion and deception in the minds of the consumers.
The Defendant filed a defence and counterclaim. The Defence was that the Defendant’s use of the first same three Chinese characters and the word “Overseas” are different from the Plaintiff’s trade marks and that the three Chinese characters are ordinary and descriptive words which do not constitute an infringement. The direct translation of the Defendant’s business name is “Overseas Seafood Restaurant Sdn Bhd”. Furthermore, the Defendant argued that they were not selling any products and their menu in their seafood restaurant differs from that of the Plaintiff’s which was operating food and beverage outlets on top of marketing, selling and distributing products.

For the counter-claim, the Defendant applied for the Plaintiff’s two trade marks to be revoked and removed from the Register of Intellectual Property Corporation of Malaysia. The Defendant alleged that the same three Chinese characters are not distinctive of the Plaintiff’s business and/or are capable of distinguishing its business at the commencement of this proceeding.

The Plaintiff argued that the Defendant had no ground for counter-claim as there is no reasonable cause of action and the Defendant is not an aggrieved person as per Section 45 of the Trade Marks Act 1976. Both parties defined an “aggrieved person” according to the preferred definitions.

In the case of McLaren International Ltd v Lim Yat Meen (2009) 5 MLJ 741, an aggrieved person is a person who has used or intends to use his mark as a trademark in the course of a trade which is the same as or similar to the trade of the owner of the registered trademark that the person wants to have removed from the register. In (Lian Bee) Confectionary Sdn Bhd v QAF Ltd (2012) 3 CLJ 661, an aggrieved person need not be a person with any specific right. It may be someone with simply a bona fide intention to use a trademark that is registered but which had not been used by the registered proprietor or any registered user for a continuous period of not less than three years up to one month before the date of an application under Section 46(1) of the Act to expunge.

The High Court looked into the definition of “aggrieved person” in Section 3 of Act, which must be read together with Section 56 of the Act. From these Sections, the definition does not apply to a usage of name. The Defendant was held to not be “an aggrieved person” within the meaning because what they did not use a mark but simply a business name. Hence, the counter claim is unsustainable.

In the process of deciding the matter above, the High Court also held that the Plaintiff has no reasonable cause of action against the Defendant. The Defendant was not using the Plaintiff’s trade marks, but merely the business name that reflected the Defendant’s nature of business. The words “overseas”, “restaurant” and “seafood” are common, thus the Plaintiff does not have any claim. The Plaintiff’s claim was struck out under the virtue of Order 92 Rule 4 of the Rules of Court 2012.
There was no award granted to the Plaintiff on the successful striking out of the Defendant’s counterclaim.
With such decisions, both parties are now even without any clear victory to either party.