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5th October, 2016

In the case of Al Baik Fast Food Distribution Co SAE v El Baik Food Systems Co S A, and Another Appeal, the dispute in issue was over the similar trade mark “Baik”. In the 76 pages of the judgment delivered by Hamid Sultan Bin Abu Backer JCA, there were many issues that were discussed and these issues are seen to provide a new perspective on how trade marks will be effective on consumers and traders.

Firstly, the judge has said that trade mark law is not only established on the premise to provide monopoly to traders. It is constructed, inter alia, to provide protection to the public against tortious acts of competing traders in a particular state. This is a very important point to note because this is the first time that the Malaysian courts have looked at trade mark law in the perspective of consumers. The scheme of the Malaysian Trade Marks Act 1976 is not to give monopoly to trader but in respect of competing interest not to dilute the registered trade marks of the first user and/or his goodwill (genuine trader not tortfeasor) and where permissible under the Trade Marks Act to sustain registration of competing interest by varying such entry as the Court think fit. This approach can be seen as protecting the consumers’ interest while not forgetting the fact that trademarks are generally used by traders to monopolise their trade in their own business domain.

The objective of trade mark law is to prevent unauthorised use of the mark in relation to product or services which are identical or ‘colourfully’ similar to the registered products or service. The ultimate question is whether the consumers of the goods or services will be confused as to the identity of the source or origin. This can conveniently be called as ‘customer’ or ‘consumer’ approach. The test is an objective test (jury test) and not one for reliance on case law per se. Pianotist test is jury test and is within the spirit of the Trade Marks Act. It provides a simple methodology and guidelines to achieve a just and not necessarily a right decision. It is a common sense test with much objectivity coupled with flexibility. Judgments attempting to conclude what it right rather than what is just advocate only a convoluted jurisprudence.

Secondly, in deciding the question of confusion between two similar marks, the level of literacy must be taken into consideration. As Malaysia currently has a higher level of literacy as compared to forty or fifty years ago, the question of confusion is expected to be lower. From this judgment, it can be seen that an educated consumer is expected to be able to differentiate goods provided by various traders and services provided by various service providers by looking at different factors such as manufacturing details, price and many more. This means that there is a possibility for two very similar marks to be allowed for registration.

Various Sections of the Trade Marks Act permitting registration subject to conditions are meant to allow fair competition between genuine traders and to enable them to register their trade marks by ensuring the issue of ‘confusion’ is eliminated. If there is no confusion, registration of trade mark should ordinarily follow. Proper reliance on these sections may help to arrest convoluted jurisprudence.

The other points that were discussed were mainly on a legal standpoint.

Firstly, evidence tendered by an affidavit affirmed by a trade mark agent may highly be hearsay evidence and hence inadmissible in the hearing of an originating summons as opposed to an interlocutory application.

Secondly, authority of a trade mark agent does not extend to court actions.

Thirdly, when a judge does not address his mind to a preliminary objection raised by a party, in this case, as to the hearsay nature of the evidence affirmed by the trade mark agent, the integrity of the decision making process is compromised. In such case, an appellate court may be warranted in setting aside the judgment in limine.

Fourthly, any application under the Trade Marks Act must be by way of Originating Summons and not Writ even if material facts are in dispute. Oral evidence may be given where the same is necessary to resolve facts in dispute.

Fifthly, when an affidavit states “advised and verily believe”, it must disclose the source of the information or name of the person who advised.

The sixth decision was that trade mark is a symbol or design that ‘identifies’ and ‘distinguishes’ source of goods or service from one trader to another.

The seventh issue was that policy of the Trade Marks Act is to accommodate registration albeit where necessary with modification or variation of the competing trade marks strictly within the parameters of the Trade Marks Act.

The eighth issue was that it is important to take timely action against any infringement as otherwise the mark may become common and in consequence may lose protection, i.e. unexplained delay may be a bar to relief. Old cases holding otherwise must be read with caution. Concept such as ‘guilty of estoppels', 'acquiescence', 'laches' or 'abandon of the mark’ are applicable. This is particularly important as the Section 45 of Trade Marks Act relief is a discretionary one.

In conclusion, this case has changed the approach taken by the courts for trade mark cases. Previously, trade mark laws were seen in the perspective of the traders. Currently, with the passing of this case’s judgment, the courts have approached trade mark laws with the consumers in thought. This is a big advancement to our intellectual property law, and one that will safeguard both consumers and traders’ rights.