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LotteNidoo and Nido: A Case of David vs Goliath

28th June, 2012

In the case of Hiu Kuan Hoe v Societe Des Produits Nestle S.A., the Malaysia Court of Appeal held that the High Court Judge was clearly wrong in upholding the decision of the Registrar in refusing to register Hiu Kuan Hoe’s trade mark on basis of misapplication of the facts.

Hiu Kuan Hoe (hereinafter referred to as “the Appellant”) had applied to the Registrar of Trade Marks, Malaysia to register “LotteNidoo” as a trade mark. Societe Des Produits Nestle S.A (hereinafter referred to as “the Respondent”) had used its “Nido” trademark in Malaysia since 2002, which was much earlier than the Appellant’s use of “LotteNidoo”. Thus, as proprietor of the trade mark “Nido”, the Respondent had opposed the Appellant’s application. The Registrar refused the Appellant’s application.

The High Court agreed with the Registrar’s refusal to register the Appellant’s trade mark as its use was likely to deceive or cause confusion to the public or would be contrary to law as per Trade Marks Act 1976. The doctrine of imperfect recollection also operated against the Appellant because consumers could possibly fail to differentiate between “LotteNidoo” and “Nido”, as both the goods were of the same description viz the milk based products for human consumption and targeting same class of consumers.

The Appellant had appealed against the High Court’s decision and the Court of Appeal held that the similarities between the Appellant’s trade mark and the Respondent’s pre-existing trade mark do not necessarily mean that it is likely to deceive or cause confusion. The Court of Appeal held it inconceivable, that simply because “Nido” has been transposed to form “LotteNidoo” it is likely to deceive or cause confusion. It held it is wrong to magnify the prominence of “Nido” in isolation while at the same time totally disregarding the other alphabets which make up “LotteNidoo”. It found misapplication of the facts on the part of the learned High Court Judge. The Court of Appeal therefore, allowed the appeal with costs.

The Court of Appeal therefore, sets the precedent in instant case that the doctrine of imperfect recollection was misapplied when “LotteNido” was equated with “Nido” simply on the possibility that some consumers who have a recollection of “Nido” may be so deceived or confused to accept “LotteNidoo” as one and the same. This will constitute the stretching of the doctrine to its illogical limits.