Tan Kimhock Tong Seng Food Industry Sdn Bhd(No. Syarikat: 25611-P) … PemohonDan1. Tan Kim Hock Product Centre Sdn Bhd(No. Syarikat: 550403-W) … Pencelah Pertama2. Siah Siu Eng (No. K/P530712-04-5126) … Pencelah Kedua

  

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DI DALAM MAHKAMAH TINGGI MALAYA DI KUALA LUMPUR DALAM WILAYAH PERSEKUTUAN, MALAYSIA SAMAN PEMULA NO: 24-IP-25-05/2014

 

Dalam Perkara Seksyen 9 (1) & 9 (2) Akta Perihal Dagangan 2011

 

Dan

 

Dalam Perkara Cap Dagang Berdaftar No. M/07924 Dalam Kelas

 

30 Bagi

 

H

 

CAP POKOK KELAPA yang didaftarkan atas nama Tan Kim Hock Tong Seng Food Industry Sdn

 

Bhd

 

Dan

 

Dalam Perkara Cap Dagang No.

 

Permohonan 201400182,

 

201400184, 201400186 dan

 

2014001818 dalamKelas 29, 30, 32

 

dan 35 Bagi

 

dan

 

TAN KIM HOCK

 

yang didaftarkan atas nama

 

Tan KimHock Tong Seng Food

 

Industry di No. 153 Wisma Tong

 

Seng Kim Hock, Jalan Laksamana

 

Cheng Ho, 75000 Melaka

 

Dan

 

Dalam Perkara caragaya Pemohon bagi “Tan Kim Hock” dan

 

1

 

TAN KIMHOCK TONG SENG FOOD INDUSTRY SDN BHD

 

(NO. SYARIKAT: 25611-P) … PEMOHON

 

DAN

 

1. TAN KIM HOCK PRODUCT CENTRE SDN BHD

 

(NO. SYARIKAT: 550403-W) … PENCELAH PERTAMA

 

2. SIAH SIU ENG (NO. K/P530712-04-5126) … PENCELAH KEDUA

 

Grounds of Decision

 

Azizah Nawawi, J:

 

Application

 

[1] This is an application filed by the proposed intervener for leave to intervene and to set aside the order granted by this Court on 4.6.2014. As there was no objection to the application for leave to intervene, prayer (1) of Enclosure (11) is allowed.

 

[2] With regards to the substantive application to set aside the orders dated 4.6.2014, the same was dismissed with costs.

 

The Salient Facts

 

[3] In the Originating Summons (ex parte) dated 26.5.2014, the Applicant applied for a Trade Description Order (‘TDO’) under section 9(1) and (2) of the Trade Description Act 2011 (‘Act 175’) that the Durian Dodol, Coconut Dodol and coconut biscuits (dodol

 

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products’) bearing the trade mark with a logo T which is red

 

and white coconut tree where in the middle of the coconut tree consists of a logo ‘S’, on its packaging (as in Exhibit 18), which is confusingly similar with the Applicant’s trade mark, to be declared as a false trade mark.

 

[4] The Applicant was incorporated in Malaysia in 1975 with its business address at No. 153, Wisma Tan Kim Hock, Jalan Laksamana Cheng Ho, Malacca. It was established to manufacture, process, distribute and to sell the Applicant’s products, which includes dodol products.

 

[5] The founder of the Applicant was Mr. Tan Kim Hock (‘Mr. KH Tan’), and together with his late wife, Madam Ngow Swee Yam, they created the Durian Dodol, Coconut Dodol and coconut biscuits. Prior to the establishment of the Applicant, Mr. KH Tan and his late wife have been selling the ‘dodol’ products from house to house since the 1950’s.

 

[6] When their ‘dodol’ business expanded, the said products was sold at a shop called Syarikat Tong Seng in Bunga Raya, Malacca. Subsequently, the business expanded to Tong Seng Product Centre and to ‘Perusahaan Tan KimHock’, and later to Tan KimHock Tong Seng Sdn Bhd.

 

[7] In 1976, based on an application by Mr. KH Tan, the trade mark application No. M/72924 was registered on 21.9.1976 in Class 30

 

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for ‘dodol being a sweet confection made of glutinous rice, kaya coconut biscuit, coconut candy’:-

 

CAP POKOK KELAPA

 

[8] The same was renewed until 21.9.2021. From the exhibits before this Court, it is not in dispute that the said trademark has gained recognition, both locally and overseas. The Applicant has acquired a substantial reputation and goodwill in the said mark.

 

[9] In 2001, the Tan Kim Hock Product Centre Sdn Bhd (‘TKH Product Centre’) was established by Mr. KH Tan. It shares the same address with Tan Kim Hock Product Centre established in 1995, at No. 85, 87 and 89 Jalan Bendahara, Malacca. The directors of the TKH Product Centre were Mr. KH Tan and Madam Siah Siu Eng, the Second Intervener (‘Madam Siah’). Both Mr. KH Tan and Madam Siah were the shareholders of TKH Product Centre.

 

[10] The TKH Product Centre was established to sell and market the ‘dodol’ products, which were manufactured in the Applicant’s factories.

 

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[11] In 2012, Mr. KH Tan sold his interest in the TKH Product Centre to Madam Siah and her family. After this transfer, the Applicant’s ‘dodol’ products continued to be sold at the TKH Product Centre.

 

[12] In November 2013, the Applicant stopped distributing its dodol products to the TKH Product Centre. Subsequently, the Applicant found that the ‘dodol’ products, which are not the Applicant’s dodol products, but bearing confusingly similar trade marks were still being sold at the TKH Product Centre.

 

[13] The Applicant also raised its concerns that its ‘dodol’ products are ‘halal’ certified and there is an issue of whether the ‘dodol’ products bearing confusingly similar trademarks being sold at the TKH Product Centre (which also uses ‘halal’) are actually ‘halal’ certified. The Applicant’s concern is that if the same is not actually ‘halal certified’, it will jeopardize the Applicant’s reputation.

 

[14] Premised on the ex-parte application filed by the applicant, the TDO was granted on 4.6.2014. Pursuant to the TDO, a raid on the TKH Product Centre was carried out by Kementerian Perdagangan Dalam Negeri, Koperasi dan Kepenggunaan (‘KPDNKK’) on 15.10.2014.

 

[15] On 11.11.2014, the Interveners filed this application to set aside the TDO.

 

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The Findings of the Court

 

[16] The First Intervener is the TKH Product Centre and the Second Intervener is Madam Siah. It is the Intervener’s case that Madam Siah had begun working for Mr. KH Tan in 1970’s. The Intervener alleged that both Mr. KH Tan and Madam Siah created the trademark. It is also the Intervener’s case that Mr. KH Tan had promised to give some shares to Madam Siah for her works. It is the Intervener’s case that when Mr. KH Tan sold his interest in TKH Product Centre to Madam Siah, it includes the goodwill and the trademarks concerned.

 

[17] The Interveners’ application to set aside the TDO is premised on the following grounds:

 

(i) that the registered trademark was abandoned through non-use;

 

(ii) that there was common use of the unregistered trademarks;

 

(iii) that there was co-ownership of the unregistered trademark; and

 

(iv) that there was failure to make full and frank disclosure during the ex-parte application.

 

[18] The TDO was issued pursuant to section 9 of Act 175, which reads as follows:

 

“(1) Where any person being a registered owner of a registered trade mark under the Trade Marks Act 1976 claim that his rights in respect of such trade mark are

 

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being infringed in the course of trade, by any marks or get-up used by any other person, which is not identical with his registered trade mark but can be passed off as his registered trade mark, he may apply to the High Court to declare that the infringed mark is a false trade description for the purpose of section 8.”

 

[19] Under section 9(1) of Act 175, in order to obtain a TDO, the Applicant must establish the following:

 

(i) that the Applicant is the registered owner of a registered trade mark under the Trade Marks Act 1976; and

 

(ii) that the Applicant’s rights in respect of its registered trademarks are being infringed in the course of trade by another mark or get-up used by another person which mark or get-up is not identical but can be passed off as the registered trade mark.

 

[20] Additionally, under section 9(2) of Act 175, the Applicant must specifically identify the infringing trade mark or other mark or get-up.

 

[21] The House of Lords in R. v Johnstone [2003] 3 All ER 884 makes reference to the purpose of a trade marks under English law, which is:

 

“… the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to

 

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the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods and services from others which have another origin…”

 

[22] Therefore, a registered trade mark in use in the course of trade by the trade mark owner on or in relation to its goods is an indication that is exclusively distinctive of and referable to the trade mark owner. It is the link that connects the trade mark owner with the goods of the registered mark it manufactures and sells. Thus, the use of the same or confusingly similar mark on or in relation to the same goods without the registered trade mark owner’s authorization misrepresents to the public, the source and identity of these counterfeits as having originated from the trade mark owner, and are commercially linked to, associated with or are manufactured by the trade owner. To this extent, the rights of the trade mark owner are affected by use of the same trade mark on or in relation to the same goods by third parties.

 

[23] In the present case, it is not in dispute that the Applicant is the registered proprietor of the trade mark, the trade mark with a logo ‘T’ which is red and white coconut tree where in the middle of the coconut tree consists of a logo ‘S’, with the word ‘CAP POKOK KELAPA’.

 

CAP POKOK KELAPA

 

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[24] The registration is accorded serial number M/72924 and is renewed until 21.9.2021.

 

[25] In granting the TDO, this Court have also considered that the ‘dodol’ products purchased from the Intervener’s premise (which are not the Applicant’s dodol products), at TKH Product Centre, which are not identical but can be passed off as the registered trade mark of the Applicant. Applying the test applied by Justice Azhar Mohamad in Danone Biscuits Manufacturing (M) Sdn Bhd v Hwa Tai Industries Bhd [2010] 4 CLJ 711, where His Lordship in dealing with passing off under section 38 of the TMA 1976 refers to “so nearly resembling it as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the trade mark is registered..”. At page 718, his Lordship added:

 

“[16] It is important to take note that the operative word pertaining to the infringement in s. 38 of the Act, is ‘likely to deceive or cause confusion. ’ Likely denotes that what is required to be established is only probability or possibility of confusion…

 

[17] In deciding the similarity between the two words, the words have to be considered as a whole. When comparing the two words to see whether one would be confused with or mistaken for the other, the words would be compared as a whole and merely comparing the syllable..”

 

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[26]

 

In this regard, as can be seen from Exhibits “TBS-18A”, “TBS-18E” and “TBS-18I”, the infringing products are using the marks

 

which are confusingly similar to the Applicant’s registered

 

marks. The only missing part is the words ‘CAP POKOK KELAPA’. As such, this Court finds that the infringing products have passed off the Applicant’s registered mark.

 

[27] It is the submission of the Interveners that there is an undisputed fact that the registered mark has been abandoned. The Interveners submit that the Applicants has failed to show any proof that the registered trade mark

 

CAP POKOK KELAPA

 

has ever been used in any of the Applicant’s products at all material times.

 

[28] It is not in dispute that the Applicant has used the mark

 

CAP POKOK

 

KELAPA

 

but without the words ‘CAP POKOK KELAPA’, that is only the

 

The issue then is whether the lack of use of the registered

 

‘-4^

 

mark of

 

CAP POKOK KELAPA

 

means that the registered trade mark abandoned.

 

is deemed to have been

 

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[29] The Interveners relied on section 46(1)(b) of the TMA 1976 to support its contention that the law of abandonment of registered mark through non-use. However, section 46(1)(b) is with regards to an application made by an aggrieved party to expunge a trade mark from the Register of Trade Mark for non use. Reference to section 46(1)(a) is not relevant as the Interveners are not applying to expunge the registered trade mark on the basis of non-use.

 

[30] With regards use of üiL mark by the Applicant, without the words ‘cap pokok kelapa’ , the provision of section 23(1) of the TMA 1976 is relevant:

 

“Where under this Act use of a registered trade mark is required to be proved for any purpose, the Court or the Registry may, if and so far as it or he shall think right, accept use of … the trade mark with additions or alterations not substantially affecting its identity as an equivalent of such use.”

 

[31] In the case of In the Matter of Morny Ltd’s Trade Marks [1951] 68 RPC 55, the Court held as follows:

 

“I understand the trade mark law, the Statute recognized the undesirability of requiring proprietors of registered trade marks to maintain the precise form of embellishments or representations which at the time of application were included in the form of the mark submitted for registration … use of the trade mark with

 

ii

 

alterations not substantially affecting its identity can be treated by the Court as equivalent to the use required to be proved.” (emphasis added)

 

[32]

 

In the present case, I find the dominant feature of the Applicant’s registered mark to be the logo ‘T’ which is red and white coconut tree where in the middle of the coconut tree consists of a logo ‘S’,

 

. With or without the words ‘cap pokok kelapa’, the dominant

 

feature remains the

mark, which is used on the Applicant’s dodol products. The non-use of the words ‘cap pokok kelapa’ does not affect the identity of the Applicant’s registered mark. There is therefore no issue on non-use of the Applicant’s registered trade mark.

 

[33]

 

On the issue of abandonment, in view of my finding that pursuant to section 23(1) of the TMA 1976, it is permissible to use the

 

registered mark as

without the words ‘cap pokok kelapa’,

 

then there is no issue of abandonment. It is not in dispute that the

 

Applicant has been using the

 

on its products since 1970.

 

[34] In any event, the Interveners have failed to show that the Applicant has the intention to abandon the registered trade mark. in P. Narayanan “Law of Trade Marks and Passing Off”, in paragraph 24.74, the author opines that:

 

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“To ‘abandon’ means to give up absolutely and irrevocably. Although a long period of no-use might indicate an intention to abandon, non-use alone is not enough. There must be other factors involved before such conclusion can be arrived at as for example the liquidation of the company which owns the mark or a declared intention not to resume user … The question of abandonment is one of intention to be inferred from the facts of the particular case. No particular length of time is necessary for abandonment.”

 

[35] In the present case, bearing in mind that the Applicant has been using the registered trade mark with slight and acceptable modification, there can be no intention to abandon the registered trade mark.

 

[36] The next two (2) issues are on the common use of the ‘unregistered trade marks’ and the common ownership of the ‘unregistered trade marks’. The Interveners submit that unregistered trademarks are the following marks:

 

TAN KIM HOCK

 

TAN KIM HOCK

 

[37] It is the submission of the Interveners that all the unregistered trademarks are jointly owned by Mr. KH Tan and Madam Siah

 

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and that the First Intervener have been using the unregistered trademarks.

 

[38] With regards to the ownership of the unregistered trademarks, the same is the subject matter of the suit 22IP-59-10/2014 and is not relevant to the issue of the TDO, as we are only dealing with a registered trade mark under Section 9 of Act 175. So long as there is a registered trade mark and the same has been infringed, this forms the basis of the TDO.

 

[39] The next issue raised by the Interveners is that the Applicant has failed to make full and frank disclosure during the ex parte application for the TDO. It is the submission of the Interveners that the Applicant failed to disclose or have deliberately concealed the following facts:

 

(1) abandonment of the Registered Trade Mark through NonUse;

 

(2) the founding efforts of the Madam Siah with Mr. KH Tan;

 

(3) the co-ownership if not exclusive ownership of the 5 Trade Marks through the sale and transfer of all proprietary rights and ownership of the 5 Trade Marks by Mr. KH Tan to Madam Siah and to the son of Madam Siah;

 

(4) Mr. KH Tan Statutory Declaration affirmed on 4-7-2013;

 

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(5) the establishment of the First Intervener as the main sale outlet of Tan Kim Hock products through which the good will and reputation were built; and

 

(6) the honest concurrent use of the Unregistered Trade Marks over a long period of time;

 

(7) the consent of the Applicant in supplying the Tan Kim Hock products to the First Intervener with the express permission to the First Intervener to sell the same which said state of affairs had persisted over a long period of time;

 

(8) the Applicant further deliberately failed or refused to disclose and/or concealed the Proposed 1st Intervener’s Solicitors’ (Bell & Lee) Letter dated 16-4-2014 to this Honourable Court when applying for the TDO at the Ex Parte stage :-

 

(a) the said letter From Bell & Lee Dated 16-4-2014 is exhibited in Eksibit AGG-3(b) of Ang Gee Guan’s Affidavit Support dated 10-11-2014;

 

(b) the said letter From Bell & Lee Dated 16-4-2014 contained the following absolutely crucial facts:-

 

(i) it was in response to the letter from the Applicant’s Solicitors dated 26-2-2014 – See Eksibit AGG-3(a); and

 

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(ii) the Interveners vehemently and strongly disputed the Applicant’s claim of exclusive right over the Unregistered Trade Marks; and

 

(iii) the Interveners vehemently and strongly maintained their proprietary rights and right of use of the Unregistered Trade Marks in that the Applicant’s Solicitors in their letter dated 26-2-2014 never mentioned anything about the Registered Trade Mark because, we humbly submit that, it had been abandoned through Non-Use.

 

(9) when challenged by the Interveners’ Application now to set aside the TDO, the Applicant through Tan Bee Sen now clearly and unequivocally admitted and acknowledged that in Paragraph 22 of Tan Bee Sen’s Afidavit Jawapan affirmed on 10-12-2014 that :-

 

7a adalah satu fakta yang tidak dinafikan bahawa Pencelah Pertama telah lama menggunakan Cap-Cap Dagang tersebut”.

 

(10) the above said admission and acknowledgement is a glaring non-disclosure of material fact that the First Intervener is at least a concurrent user or joint owner of the said unregistered Trade Marks pursuant to sections 20 and 21 of Act 175. Further, defenses under section 40 (1) (a)

 

(c) & (f) of Act 175 are available to the First Intervener.

 

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[40] It is common ground that whenever a party makes an Ex-Parte application to Courts for an Order, be it an Interlocutory injunction, Mareva Injunction or a Trade Description Order as in this present Originating Summons, the Applicant is mandated by law to make full and frank disclosure including those facts which may be unfavourable to the applicant. In Kosma Palm Oil Mill Sdn Bhd & Ors v Koperasi Serbausaha Makmur Bhd [2004] 1MLJ 316, the Court of Appeal held inter alia that:-

 

“It is trite law that in any ex parte application it is essential that there must be frank and fair disclosure of all relevant materials including points that may be unfavorable to an applicant.”

 

[41] In Ooi Bee Tat Development Sdn. Bhd. v Ooi Bee Tat [1985] 1 CLJ 449 at 458, Justice Edgar Joseph Jr J held that:

 

“It is settled law that when a party applies ex parte, full disclosure of all material facts must be made and that the doctrine of uberrima fides applies by analogy: per Davies LJ in Beese & Ors. v. Woodhouse & Ors. [1970] 1 WLR 586. For this reason, where material facts have been withheld, the ex parte Order may be set aside irrespective of the merits: Castelli v. Cook [1849] 7 Hare 89 Eng. Rpts. Vol. 68 p.36 and Dalglish v. Jarvie [1850] 2 Mac. & G 231 (Macnaghten & Gordon’s Reports Vol. 2). The fact that the party in whose favour the ex parte order was made may think the facts misstated or concealed not material or may have forgotten them

 

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[42]

 

affords no excuse: The King v. The General Commissioners for the Purposes of the Income Tax Act for the District of Kensington [1917] 1 KB 486.”(emphasis added)

 

Therefore, the next issue is whether the Applicant has failed to disclose the material facts as set out by the Interveners above. Bearing in mind that this application is for a TDO, the material facts must be relevant for the purpose of the TDO itself. In Hu Kim Ai (trading as Geneve Timepiece) & Anor v Liew Yew Thoong (trading as Crystal Hour) [2004] 7 MLJ 590, the Court refer to an English case when considering what constitutes material facts. At page 594, the court held that:

 

“[5] On ground (c) the Intervener alleged that the applicant have failed to disclose material facts that they were once business partners. In considering what constitutes material facts, it is helpful to recall the English Court of Appeal’s decision in Brink’s mat Ltd v Elcombe [1988] 1 WLR 1350, where Ralph Gibson LJ held, at p 1356 paras G-H, as follows:

 

The material facts are those which it is material for the judge to know in dealing with the application as made: materiality is to be decided by the Court and not by assessment of the applicant or his legal adviser…” (emphasis added)

 

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[43] Having considered the affidavit evidence, I find that the Applicant has disclosed the material facts to support the application for a TDO. The Applicant is the registered owner of the registered mark. The Applicant has disclosed in the affidavit supporting the application for the TDO that the Applicant and the Interveners were in a business relationship (see paragraphs 16 – 20 of supporting affidavit), and that the Applicant had supplied the dodol products bearing the registered mark, to the Interveners. In paragraph 18, the Applicant states that the Applicant’s products were marketed and sold at the premise of the First Intervener. But the supplies have stopped since November 2013.

 

[44] The dodol products under the TDO are goods seized from the Interveners, which are not supplied by the Applicant but found to bear marks which are confusingly similar to the products bearing Applicant’s trademark. Pertinent as well is the abuse of the ‘halal certification’ which was granted to the Applicant to be affixed of its products, by the Interveners’ on their products, including 848 units of Bak Kut Teh bearing the Applicant’s trademarks. The Interveners have not only abused the Applicant’s registered mark, but also the halal certification.

 

[45] With regards to the non-disclosure of the letter dated 16.4.2014, I am of the considered opinion that the same is not a material fact for the purpose of the TDO as it pertains to the fight over the unregistered trade mark which is now pending in the Courts. It is not relevant to the TDO application, which is premised on the registered trade mark, currently under the name of the Applicant.

 

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[46] On the issue of whether the application should be heard inter parte, the decision in Hu Kim Ai (trading as Geneve Timepiece) & Anor v Liew Yew Thoong (trading as Crystal Hour) [2004] 7 MLJ 590 held that there is no requirement under section 16 of the Act to dictate that the proceedings to be made inter parte.

 

[47] In the premise, I find no merit in this application and prayers 3 to 5 of encl (11) is dismissed with costs of RM5,000.00.

 

(AZIZAH HAJI NAWAWI) JUDGE

 

HIGH COURT MALAYA (Commercial Division) KUALA LUMPUR

 

Dated: 13 July 2015

 

For the Applicant : Damien Yeo/Lim Ker Wei

 

Messrs Damian S.L Yeo & L.C. Goh Melaka.

 

For the Interveners: WS Goh/Joshua Dharmaraj

 

Messrs Bell & Lee Melaka.

 

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