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6th September, 2016

This is a case concerning the use of the mark “FUSSIE CAT” and the law of passing off as decided by a High Court of Malaya at Kuala Lumpur.

The First Plaintiff is a company incorporated in Singapore and is in the business of manufacturing and distributing products relating to pets/animals, which includes animal food, litter, accessories, hygiene products etc. The Second Plaintiff is a company incorporated in Malaysia and is the distributor of the First Plaintiff’s products in Malaysia.
The Defendant is a company incorporated in Malaysia and the nature of its business is trading in all kinds of tropical fishes, aquarium products and related services.

The Defendant applied for trademark registration for the combination mark of “BETTAS FUSSIE CAT” with a picture of a feline silhouette on 25 June 2013. The Plaintiff however, applied for trademark registration for the word mark “FUSSIE CAT” and combination mark “PREMIUM FUSSIE CAT” with a picture of a feline silhouette on 30 August 2013.
The First Plaintiff has been using the mark “FUSSIE CAT” FOR manufacturing, distributing, supplying, selling and offering for sale cat litter products in Malaysia and other countries from 2006. The Second Plaintiff has been the sole distributor of the First Plaintiff’s products since 2006. The Defendant started using the mark “Fussie Cat” for cat litter products in 2012, 6 years after the First Plaintiff.

The first issue that was discussed by the Judge in this case was admissibility of evidence. There were three compilations of statements that were submitted by the Plaintiffs with regards to proving the usage of the mark. Even though the Defendant has submitted that the evidence were inadmissible, the Court held otherwise.

In the present case, there was a more salient matter that was discussed, which was the law of passing off. Generally, the law passing off can be used in respect of a registered or an unregistered trade mark. There must be goodwill or reputation such that the mark, name or get-up is distinctive to the plaintiff and recognised as being so by the public or members of the trade. Besides that, it must be shown that the defendant misrepresented to deceive or confuse a substantial number of persons and prove that he will or is likely to suffer damage as a result of the defendant’s acts.

In this situation, following the case of Ho Tack Sien & Ors v Rotta Research Laboratorium [2012] 8 CLJ 645 which applied the House of Lord decision in Reckitt & Colman Products v. Borden Inc [1990] 1 All ER 873, there are three elements that the plaintiff did fulfil.

The first element is that he has sufficient reputation or goodwill in the mark, trademark, or get-up under which his particular goods or services are offered to the public.

The definition of ‘goodwill’ was referred from the case of The Commissioner of Inland Revenue v Muller & Co’s Margarine Ltd [1901] AC 217, where ‘goodwill’ may be defined as the “benefit and advantage of the good name, reputation and connection with a business, whether it is a business that provides services or manufactures and/or distributes certain products”. The Plaintiffs have been selling the cat litter under the “FUSSIE CAT” trade mark since 2006. The Plaintiff has used their mark “FUSSIE CAT‟ more than 6 years before the Defendant applied to use the same name in their mark “Betta Premium Fussie Cat” in 2013.
The Defendant argued that the goodwill was not present between the retailers and the Plaintiffs because the witnesses presented had no knowledge of the Plaintiffs as the manufacturer and the supplier of the FUSSIE CAT litter. However, the Judge referred to the case of Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 where it said that in passing-off, it is not essential to show that the Plaintiffs are known to the consumer or to the members of the public. In conclusion, the Plaintiffs have fulfilled the first element.

The second element is that the Plaintiffs must demonstrate a misrepresentation by the Defendant to the public (whether or not intentional) leading or likely to lead the public to belief that goods or services offered by him are the goods services of the Plaintiff.

Here, there are striking similarities between the Plaintiffs “FUSSIE CAT” mark and the Defendant’s “BETTAS FUSSIE CAT”. There are also similarities in the pictorial description of the feline silhouette, and descriptions of the products. Defendant has failed to show that the making of the mark was done independently, as they failed to call the graphic designer who designed the mark. The plaintiff must further prove that because of this misrepresentation, there is confusion by the public. Referring to the case of Leo Pharmaceutical Products Ltd A/S v Kontra Pharma (M) Sdn Bhd [2009] 5 MLJ 703, it was held that “Where the parties’ goods or service are in direct competition with each other, only a small degree of similarity is required to establish the likelihood of confusion”.

There was a test to determine the likelihood of confusion, which was the doctrine of imperfect recollection established in Sandown Ltd’s Application [1914] 31 RPC 196. In the case, the Judge held that “the question is whether the person who see the proposed trade mark in the absence of the other trade mark, and in view only of this general recollection of what the nature of the other trade mark was, would be liable to be deceived and to think that the trade mark before him is the same as the other, of which he has a general recollection”.

In this situation, the average purchaser could have simply mistaken one product for the other, and viewed the Defendant’s product in place of the Plaintiff’s trademarks. In the end, it was held that the Defendant’s use of words “FUSSIE CAT” is not simply coincidental, it is also not made innocently and in good faith. Hence, the plaintiff has satisfied the second element.
The third element is that he must demonstrate that he suffers or had suffered or is likely to suffer damage or injury to his business or goodwill by reason of the erroneous belief and engendered by the Defendant’s misrepresentation that the source of the Defendant’s good or services is the same of the source offered by the Plaintiff.

Referring to the case of Seet Chuan Seng & anor v Tee Yih Jia Manufacturing Pte Ltd (1994) 3 CLJ 7, the Supreme Court held that “In an action for passing-off, damage is also an essential element of the tort and it is necessary for the plaintiff to establish that he has suffered damage. However, if the goods in question, as in this case, are in direct competition with one another, the Court will readily infer the likelihood of damage to the plaintiff’s goodwill through loss of sales and loss of exclusive use of the name”.

In this situation, the goods in question are undeniably similar and in direct competition with each other, which is cat litter. Hence, damages are readily inferred. The Plaintiffs had suffered damages from the loss of the sales of the “FUSSIE CAT” products since the Defendant‟s confusingly similar products are cheaper. Hence, the third element is fulfilled.
Since all three elements required to establish the Plaintiff’s claim on passing off are fulfilled, the Court has allowed the Plaintiffs’ case with costs.