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Malaysia: It’s A SWISS success

1st March, 2013

In the case of Chocosuisse Union Des Fabricants Suisses De Chocolat & Ors v. Maestro Swiss Chocolate Sdn Bhd & Ors, the Court of Appeal reversed the High Court’s decision of dismissing Chocosuisse Union Des Fabricants Suisses De Chocolat & Ors claim against Maestro Swiss Chocolate Sdn Bhd & Ors for the tort of extended passing off and their claim under the Geographical Indications Act 2000; thereby, allowing the appeal with costs.


Chocosuisse Union Des Fabricants Suisses De Chocolat & Ors (hereinafter referred to as ‘the Appellants’) had filed a suit in the High Court against Maestro Swiss Chocolate Sdn Bhd & Ors (hereinafter referred to as ‘the Defendants’) in relation to chocolate and chocolate-based products under the brand name ‘Vochelle’. The Appellants had objected that the use of the word ‘Maestro SWISS’ by the Respondents would be taken by a significant section of the Malaysian public as being indicative of the chocolates or chocolate-related products bearing such words having been manufactured in Switzerland or by a Swiss manufacturer. The Appellants had, further, claimed that such use may misappropriate the substantive goodwill and reputation and/or commercial advantage enjoyed by the Appellants and/or other Swiss chocolate manufacturers in relation to Swiss chocolates; thereby, the Respondents had committed the tort of extended passing off. Under the Geographical Indications Act 2000 (‘the GIA’), the Appellants contested that Respondents’ use of the color Red and White, which are the colors of the Swiss National Flag, would deceive and/or confuse the public into thinking that chocolates bearing the words ‘Maestro SWISS’ were produced in or originated from Switzerland or had association or connection with Switzerland or Swiss Chocolates.


The Respondents had objected claiming they had legitimate right to such use since they had extensively promoted and advertised the marks in relation to their products, and this had acquired its own distinctiveness in relation to the Respondents’ chocolates.


The High Court had rejected the Appellants’ claims stating that the use of the words ‘Maestro SWISS’ on the Respondents’ chocolate products had not led or nor was it likely to lead ordinary members of the chocolate buying public in Malaysia to believe that such chocolate products were made in or imported from Switzerland. The High Court had accepted that the chocolates made in Switzerland belonged to a group of products of distinctive and high reputation and quality. The High Court had further stated that 1st Appellant had no locus standi to commence this suit.


The Appellants challenged the High Court’s findings in the Court of Appeal. The Court of Appeal sided with Appellants, stating that the Appellants had the requisite locus standi to initiate this action as the Appellants belonged to the group which share a common interest in protecting the designation ‘Swiss Chocolates’ or words which indicated that the chocolates had Swiss origin or connection with Switzerland. The Court of Appeal further agreed with the Appellants that in an action for extended passing off, the grievance was not that the use by the alleged infringer of such mark on his goods might induce members of the buying public to believe that the goods were manufactured by the complainant, but that such use had the likelihood of inducing the members of the buying public to believe that the goods bearing the challenged mark belonged to a distinctive group of goods with recognizable and distinctive qualities that had acquired a certain goodwill and reputation.


The Court of Appeal also affirmed the High Court’s finding that the class of goods with the description ‘Swiss chocolate’ was a class of chocolates that are manufactured entirely in Switzerland and recognized as high quality and premium chocolate.


Further, the Court of Appeal considered the Plaintiff witnesses’ statements that the use of the words ‘Maestro SWISS’ and red and white colors in which the words were presented would make them believe that the Respondents’ products were from Switzerland or had links with Switzerland. The Respondents had argued that they had clearly mentioned on the packaging of their products that their products were manufactured by a Malaysian company in Malaysia. However, considering the witnesses’ statements, the Court of Appeal inferred that the average customer would not normally examine the details of the manufacturer but would only look at the brand. Subsequently, the Court of Appeal concluded that there was a likelihood of confusion in the minds of some member of the public that the Respondents’ products came from a distinctive group of ‘Swiss chocolates’.


The Court of Appeal further stated that use of the words ‘Maestro SWISS’ on the packaging was not indicative of the corporate name of the Respondents, but appeared to be a conscious strategy to give the impression of a link to Switzerland or a Swiss company.


Lastly, the Court of Appeal upheld the High Court’s decision that as the use of the geographical indication being challenged in this case pre-dated the date of commencement of the GIA, the Appellants’ claim under the GIA must fail.


Accordingly, the Court of Appeal allowed the Appellants’ appeal in relation to the tort of extended passing off with costs.


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