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MALAYSIA: PORTCULLIS MALAYSIA ALLOWED TO CONTINUE USING NAME AND LOGO

10th January, 2019

A longstanding dispute between Portcullis (Singapore) Pte Ltd (hereinafter referred to as “the Plaintiffs”), companies bearing the Portcullis name in Malaysia and their main shareholder George Pathmanathan Michael anor (hereinafter referred to as “the Defendants”) was resolved when the Defendants were allowed to keep the name and logos of Portcullis in Malaysia ruled the Court of Appeals.

This comes after a conflict between the two parties arose after the sale of the Portcullis group of companies in Malaysia to George, after his falling out with the founder and director of one of the Plaintiffs, one Mr. David Chong. It was decided both in Court and in arbitration that the Plaintiffs were to sell the companies that make up the Defendants.

 Shortly after the decision for the Portcullis Malaysia companies to be controlled completely by George had been made, George filed for 2 trademark applications for the Portcullis name and logo, though the Plaintiffs would be granted 12 trade mark registrations in classes 35, 41 and 45 before the Defendants.

The Defendants were requested to withdraw their trade mark applications in Malaysia and cease the use of the logo and name by the Plaintiffs after their successful registration. When the Defendants refused a writ of action was filed against them for trade mark infringement leading to questions as to who owned the name and logo within Malaysia.

The original ruling by the High Court stated that the Defendants had infringed the Plaintiffs’ trademarks, had passed off their services as if they were the Plaintiffs’ and that the Defendants were compelled to withdraw their trademark applications. However, the Defendants appealed this decision.

The question the Court of Appeals now posed was “Who owns the goodwill, the Portcullis marks and the corporate names in Malaysia”

This decision comes guided from Scandecor Development AB v Scandecor Marketing AB & another (1998) EWCA Civ 1282; (1999)F.S.R. 26,CA. with the Court’s decision stating that there were “no quick, cheap or easy answers to be found in hard and fast legal rules” as well as referring to an earlier speech  by Lord Oliver in Reckitt & Colman Properties Ltd v Borden Inc [1990] that the decisions were “questions of fact” hence the reliance upon the MOA and recordings of arbitration proceedings where the Plaintiffs had to sell their stake in the Malaysian Portcullis companies to Mr. Michael.

There was a Memorandum of Agreement (drafted by Mr. Chong) between the two parties which stated that “The companies whose shares are subject to this Memorandum are and shall continue to be named “Portcullis Holdings (Malaysia) Sdn Bhd”, “Portcullis Trust (Labuan) Sdn Bhd”, “Portcullis (Malaysia) Sdn Bhd” and Portcullis Nominees (Malaysia) Sdn Bhd” as well as stating in a separate clause that “goodwill and all intellectual property and associated rights” were to belong to the respective companies.

Additionally, during these proceedings it was determined that the Malaysian Portcullis companies incorporated at the time of signing of the MOA owned the name and goodwill of their respective companies, to which Mr. Chong had agreed.

Though this exchange took place outside a judicial setting, it was however brought as evidence in a minority oppression petition brought to the High Court by the Defendants against the Plaintiffs. However, it must be stated that four of the Defendants were not incorporated at the time of the formation of the MOA.