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Malaysia: Trinity v Trinity

1st March, 2013

In the case of Trinity Group Sdn Bhd v Trinity Corporation Berhad, the High Court in Malaysia adjudged Trinity Corporation Berhad to have committed the tort of passing off and allowed the claims made by Trinity Group Sdn Bhd with costs.

Trinity Group Sdn Bhd (hereinafter referred to as ‘the Plaintiff’) is a private limited company incorporated in 2004 and involved in the business of project management, property development and investment holding. Trinity Corporation Berhad (hereinafter referred to as ‘the Defendant’) is a public listed company involved in the business of provision of management services, investment holding and property development. The Defendant changed its name to the current name from Talam Corporation Bhd in 2011. In the present suit, the Plaintiff complained that the Defendant’s change of name had resulted in confusion which resulted amongst members of the trade and public whereby the Plaintiff had been wrongly associated with the Defendant.

The High Court noted that the Plaintiff had spent substantial effort and significant time and expenses on the sales, promotion and advertisement activities of its property development business. The Defendant contented that Plaintiff had advertised under the name ‘Darul Dinasti Sdn Bhd’ (a subsidiary of the Plaintiff) and not under the name ‘Trinity’; therefore, the Plaintiff had failed to adduce any evidence showing that the Plaintiff had promoted the mark ‘Trinity’ on its own and that the mark ‘Trinity’ was associated with the Plaintiff as a developer. The High Court rejected this argument stating that it was common in the property development industry that the projects were promoted under the name of the parent company but carried out by a subsidiary or associated company. The High Court further noted that the Plaintiff’s name and logo were referred to in every promotional material of its subsidiary development project. Hence, the High Court concluded that the Plaintiff had acquired substantial goodwill and reputation in the name ‘Trinity’ in the property development business before the incorporation of the Defendant in 2011.

On the issue as to whether the Defendant’s name was likely to cause confusion amongst the member of public and trade, the Plaintiff witnesses stated that they received many phone calls from customers asking them if they were related to the Defendant. The High Court also noted that, in 2012, a local newspaper released an article which wrongly reported the Defendant working in collaboration with the Plaintiff on one of the Plaintiff’s projects. The High Court further found out that the Defendant’s stock traded as ‘Trinity’ and that the Defendant had undertaken projects in or around the same localities in which the Plaintiff was operating. Although the Defendant argued that they had published notices in various newspapers that they were not associated with the Plaintiff, the High Court held that there was sufficient likelihood of confusion amongst the members of public and trade.

Further, the Defendant contented that the word ‘Trinity’ was a descriptive word and there were numerous other companies or businesses trading with the word ‘Trinity’ besides the Plaintiff and, as such, the Plaintiff should not have the exclusive right to use this word. The High Court rejected this argument noting that there was no evidence to show that any of such companies with the name ‘Trinity’ were actively involved in the business of property development in the same scale as that of the Plaintiff. The High Court further pointed out that the name ‘Trinity’ had acquired a secondary meaning in the property development industry and had become distinctive of the Plaintiff by virtue of extensive use. Also, the High Court rebuffed the Defendant’s claim that the Defendant’s name had been approved by the Companies Commission of Malaysia and the Stock Exchange stating that the Company’s Act did not envisage that the Registrar would consider whether the applicant truly had a right to a name or whether its use would lead to confusion.

The High Court further stated that as both the Plaintiff and the Defendant were involved in the same business line and in the same locations, the issue of damage to the Plaintiff’s goodwill can be readily inferred. Subsequently, the High Court concluded that the Plaintiff had established a case of passing off against the Defendant and thus allowed the Plaintiff’s claims with costs.

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