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MALAYSIA: ST JOHN AMBULANS AWARDED DAMAGES IN HIGH COURT RULING

10th January, 2019

A High Court ruling found that St. John Ambulans  Malaysia (hereinafter referred to as “the Plaintiff”)  is to be awarded MYR231,798.00 (app. USD58,000.00) for damages caused by PJ Uniform Sdn. Bhd. (hereinafter referred to as the Defendant) in its use and passing off of Plaintiff’s trademarks to sell clothing on 29 August 2018.

The Plaintiff claimed that Defendant was selling clothing bearing the Plaintiff’s trademarks and continued to do so after receiving writing from the legal representatives of the Plaintiff to cease sale of the goods. Furthermore, the Defendant responded by suggesting that the Plaintiff approve their use of the trademarks leading to the Plaintiff filing claims against the latter.

When originally found liable for the tort of passing off in the Court of Appeals, the Defendant was instructed by the Senior Assistant Registrar (hereinafter referred to as the Registrar) to pay MYR5,898.50 (app. USD1,300.00) for the loss of profits, MYR500.00 (app. USD110.00) for the costs for the assessment of damages and an additional MYR100,000.00 (app. USD25,000.00) for the loss of goodwill to the Plaintiff. Both sides appealed this.

Only the Plaintiff was allowed their appeal with the High Court Judge amending the amount to MYR220,000.00 (app. USD51,000.00) for the loss of good will and reputation, which the Defendant appealed as well.  

The Defendant attempted to assert that because the Plaintiff was a charity, the Defendant need not pay more than a nominal sum in damages, arguing that the Plaintiff did not actually lose profits as they were not making profit. The Court of Appeals however found this insufficient believing that such a decision would promote the wide-scale abuse of the trademarks of charities and that the Plaintiff did not sell goods with their trademarks to make profit but rather to fund their work for the community.

The Plaintiff stated that it was warranted to collect two heads of damages for the infringement of a registered trademark, that the Plaintiff registered 21 September 2010, as well as the passing off.

Normally in cases such as these damages are awarded based on the loss of profits, however in this instance the Plaintiff elected for the damages for the infringement of a registered trademark to be based upon loss of profits whilst the passing off be based on loss of goodwill and reputation.

The Defendant appealed this decision. The Defendant also asserted that the sum determined MYR220,000.00 (app. USD51,000.00) to be excessive. The High Court stated that the sum was calculated for MYR5,000.00 (app. USD1100.00) for every year that the Plaintiff had been incorporated from 1972-2016 (44 years).

Additionally, the Plaintiff stated during the appeal that the Defendant had not provided their accounts for 2010 and 2011 having submitted the account of their profits from the sales of the trademarked items for 2012 and 2013 totaling MYR5,898.51 (app. USD1,300.00). Therefore the Court awarded damages for the infringement of trademark to be twice the profits of 2012 and 2013, giving a total of MYR11,797.00 (app. USD2,600.00) (though the appeal did not call into question the damages with regards to the loss of profits).

The appeal for a reduction on the damages based on loss of goodwill and reputation was dismissed.