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Malaysia: Stripes Striped

28th May, 2013

In the case of Majlis Sukan Negara v Mesuma Sdn Bhd, the High Court of Malaya at Kuala Lumpur adjudged Mesuma Sdn. Bhd. to have committed the tort of passing-off while simultaneously rejecting Mesuma Sdn Bhd’s counter claim for trade mark infringement.

Majlis Sukan Negara Malaysia (National Sports Council of Malaysia) (hereinafter referred to as “the Plaintiff”) is a statutory body established under the provisions of the National Sports Council Act 1971. Mesuma Sdn. Bhd. (hereinafter referred to as “the Defendant”) is a company incorporated in Malaysia involved in the business of sporting apparels and accessories and had been a supplier of sports clothing and equipment to the Plaintiff since 1990.

The Plaintiff claimed that it was the copyright owner of the Tiger Stripes Design, having been assigned the same from the Ministry of Youth and Sports of Malaysia (hereinafter referred to as “the Ministry”). The Plaintiff also claimed that the Defendant had passed-off the Tiger Stripes Design. Further, the Plaintiff also sought to revoke the trade mark registration of the Tiger Stripes Design registered by the Defendant alleging that such registration was done in bad faith. In response, the Defendant claimed that they are entitled to apply for trade mark and subsequently counterclaimed for trade mark infringement and passing-off the Defendant’s trade mark.

By way of history, the Ministry, in 2005, had organized a contest to design a new motif and color of the Malaysian national jersey for use by all Malaysian athletes representing the country in various sports events held within the country and internationally. The winning entry, the Tiger Stripes Design, was handed over to the Plaintiff for the use of athletes and for commercialization and all the rights, ownership and management of the Tiger Stripes Design were assigned to the Plaintiff. Subsequently, the Plaintiff filed the trade mark applications for the Tiger Stripes Design. The Defendant had been a contract supplier to the Plaintiff since 1990, for goods such as caps, t-shirts, tracksuits, trackbottoms, as well as sports equipment such as various types of balls and athletics equipment. Further, since 2006, the Defendant had been producing goods carrying the Tiger Stripes Design on behalf of the Plaintiff. In 2009, the Defendant had filed for trade mark registration for the Tiger Stripes Design claiming itself as the owner of the design, while still being a supplier to the Plaintiff of sporting goods carrying the Tiger Stripes Design.

The Plaintiff claimed that the Tiger Stripes Design trade mark registered by the Defendant was done so in bad faith and as such, the Defendant’s trade mark ought to be removed from the Register of Trade Marks. The Plaintiff showed evidence that before the appointment of the Defendant as the contract manufacturer of the garment to be worn by the athletes, such garment were manufactured by another supplier.

The Defendant argued that the Plaintiff was not the aggrieved person as the Plaintiff had not used the design in the course of trade and therefore, the Plaintiff had no locus standi to file this action. The Defendant submitted that the Plaintiff never had the intention to use the Tiger Stripes Design in the course of trade, but only for branding purposes and that any sports garments and attires received by the Plaintiff from the Defendant were given away to athletes, supporters and officials for free.

The High Court suggested that the purpose of a mark was to indicate that the goods are the goods of the proprietor of such mark by virtue of manufacture, selection, certification, dealing with or offering for sale. Hence the High Court adjudged that the Tiger Stripes Design was intended to be used by the Plaintiff to indicate origin of goods supplied by the Plaintiff.

The High Court further stated that the Tiger Stripes Design was manufactured by the Defendant upon the instruction of the Plaintiff and prior to the appointment of the Defendant, the Tiger Stripes Design was manufactured by another supplier. Consequently, the High Court adjudged that before the relevant trade mark application by the Defendant, there had been public use, in Malaysia, of the Tiger Stripes Design so as to confer upon the Plaintiff the statutory status of proprietor of the Tiger Stripes Design. As a result, the High Court ruled that the Defendant was not the lawful proprietor of the Tiger Stripes Design and had unlawfully secured the registrations of the design, which should be rightfully struck out from the Trade Mark Register. Accordingly, the High Court rejected the Defendant’s counterclaim of trade mark infringement and passing off as being baseless.

Next, the High Court turned its attention to the passing-off claim made by the Plaintiff. The Plaintiff submitted that the Tiger Stripes Design had been used on the National Jersey at various national and international sporting tournaments including the South East Asian Games (SEA Games) in 2005 and the Commonwealth Games in 2006. The Plaintiff further adduced evidence that extensive publicity of the Tiger Stripes Design appeared in local newspapers and other media, and the jersey design was acknowledged a national identity in sport. The High Court stated that by reason of its use by the Malaysian athletes, the Tiger Stripes Design had become distinctive of the Plaintiff.

The High Court acknowledged that the Defendant‘s mark and the Plaintiff’s mark were the same. The High Court also accepted the Plaintiff’s submission that there had been loss and damage to the Plaintiff whereby potential sponsors and co-branding partners have been put to a halt pending settlement of this case including the Plaintiff’s relationship with Telekom Malaysia Berhad, one of their sponsors, who was affected by the Defendant’s ownership claims over the Tiger Stripes Design.

Therefore, the High Court allowed the Plaintiff’s claim and held the Defendant to have committed the tort of passing-off.



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