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Malaysia: A Tale of Coconut Water

25th June, 2013

In the case of WB Fresh Coconut Supplier Sdn Bhd v Gan Boon Wah & Anor, the High Court of Malaya at Johor Bahru adjudged Gan Boon Wah & Anor to have committed the tort of misrepresentation and subsequently granted interlocutory injunction as prayed by WB Fresh Coconut Supplier Sdn. Bhd.

WB Fresh Coconut Supplier Sdn. Bhd. (hereinafter referred to as “the Plaintiff”) is a private limited company, incorporated in Malaysia in 2003, operating in the business of manufacture, import, export, wholesale and retail of fresh coconut and bottled beverages under the “WB Fresh Coconut Thailand” brand. The Plaintiff is the proprietor of the registered trade mark (the Plaintiff’s Mark) which had been, at all material times, printed on the packaging on the Plaintiff’s beverages.

Gan Boon Wah (hereinafter referred to as “the First Defendant”) resigned in 2012 after being employed by the Plaintiff since 2004. Since leaving the employment of the Plaintiff, the First Defendant was employed by BW Thai Coconut Enterprise, owned by Wong Ai Peng (hereinafter referred to as “the Second Defendant”).

The Plaintiff alleged that the First and Second Defendants (collectively referred to as “the Defendants”) had unlawfully distributed coconut beverages which carried the Plaintiff’s Mark or marks that are identical or deceptively similar with the Plaintiff’s Mark.

The Defendants, relying on the failure to make full discourse, argued that the Plaintiff had failed to disclose that the Plaintiff had used a different mark prior to the registration of the Plaintiff’s Mark in 2009. The Plaintiff stated that such mark had been abandoned and was no longer used since 2007. The High Court sided with the Plaintiff and dismissed the Defendants’ claim as without merit pointing out that information on the abandonment of old trade mark was irrelevant.

The Defendants further argued that the Plaintiff’s Mark as submitted in the Court’s exhibits was different from the actual mark applied on the Plaintiff’s products, thereby alleging that the Plaintiff had bordered on dishonesty, deception and willful or deliberate suppression of facts. The High Court accepted the Plaintiff’s denial of the Defendants’ allegation stating that the two marks contained all the same basic features and the only difference was that the mark submitted in the exhibit also contained additional information about the importer and the particulars of the product.

The Defendants submitted that the registration of the Plaintiff’s Mark with the Intellectual Property Corporation of Malaysia (MyIPO) did not give the Plaintiff the right to the exclusive use of the words “Fresh Coconut Thailand”, the device of the “Coconut” and the letters “WB”. Also, the High Court acknowledged the Defendants’ claim that the fact that the Companies Commission of Malaysia (CCM) had allowed registration of the Second Defendant’s sole proprietorship BW Thai Coconut Enterprise showed that there was nothing identical, similar or likely to deceive or cause confusion as compared to the Plaintiff.

Further, the Defendants pointed out various noticeable and notable differences between the Plaintiff’s and the marks that Defendants have been using in their products. The Defendants pointed out that the Plaintiff’s Mark reads “Fresh Coconut Thailand” whereas their mark reads “BW Thai Coconut”. The Defendants also pointed out that the Plaintiff’s Mark showed a cartoonish picture of complete coconut in bright green color with the stalk and the words “WB” in bright red large font, whereas the mark that they are using showed an actual picture of a shaved or naked coconut without the stalk in natural light brown color with the words “BW” in dull red colored small cursive font with a white perimeter outline. The Defendants argued that while the bright green colored coconut in the Plaintiff’s Mark was very apparent and came out visibly, the mark that they are using did not have any such similar feature. Moreover, the Defendants stated that the mark that they are using carried a mobile telephone number at the bottom part in red colored font whereas the Plaintiff’s Mark did not contain any telephone number at all and was completely blank at the bottom part of their mark. On such grounds, the Defendants argued that their mark was not identical or similar to the Plaintiff’s Mark.

The Plaintiff countered the Defendants’ submission stating that the High Court must adopt the “Imperfect Recollection Test” in deciding whether a consumer who sees the proposed mark in the absence of the other mark would be liable to be deceived and to think that the mark before him was the same as the other of which he had a general recollection.

The High Court stated that while looking at the Plaintiff’s Mark and the mark that the Defendants are using side by side, the two marks showed various notable and noticeable differences. The High Court, however, conceded that at closer examination of the two marks, the similar shape of the two marks with the pictorial device of “coconut” and the letters “BW” and “WB” in red at the center with the same yellow backdrop and the upwardly curved blue colored text scroll, that is, “BW Thai Coconut” and “Fresh Coconut Thailand” at the top of the label would probably confuse a consumer in general. The High Court further ruled that when applying the Imperfect Recollection Test, any person who saw the mark that the Defendants are using in the absence of the Plaintiff’s Mark of which he had a general recollection, would probably be deceived and think that the mark that the Defendants are using before him was the same as the Plaintiff’s Mark.

Therefore, the High Court adjudged that the Defendants’ Mark was deceptively similar to the Plaintiff’s Mark and that the Defendants had committed the tort of passing off and caused misrepresentation to the consumers. Subsequently, the High Court granted injunction in favor of the Plaintiff.

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