Is It Well Known?
08 November 2012
The increase in cross-border trade and the explosion of internet usage has resulted in companies being able to build strong global brands in the international market place. A well-known trademark brings with it fame and reputation, the down side of this being such fame and reputation being a constant target of unfair misappropriation by others. It is a common occurrence that a global brand may not be registered or used in every country, thus making enforcement of such well-known marks a challenge.
Although it is approaching a decade since the inclusion of the well-known mark provisions in the Malaysian legislative landscape, there have only been a few cases involving this provision, such as the case of Aspect Synergy Sdn Bhd v. Banyan Tree Holdings Ltd.
Aspect Synergy launched its high end residential development project and created a mark composing of the representation of a “Banyan tree in colour,” with the words “Taman Sri Banyan” to denote the name of the project and the words “Country Heights” to denote the location of the project. Banyan Tree Holdings Ltd (BTHL) is the operator of a chain of excusive resorts around the world known as the Banyan Tree Resorts and has been using its mark “Banyan Tree” in relation to its luxury hotels, real-estate and property design and development.
This is a case of where BTHL, without the benefit of a registered trademark under Class 37 for housing developments and which did not operate any of its resorts in Malaysia, relied on passing off and sought injunctive relief under the well known mark provisions to restrain Aspect’s use of its mark consisting of the word Banyan. BTHL claimed that the banyan tree mark had become well-known to the Malaysian public and worldwide. Unique in this case was the application for a declaration of non-infringement that Aspect’s mark did not infringe BTHL’s trademark. The High Court in granting the declaration of non-infringement held that the word banyan is a generic term and that both marks were distinguishable.
Under the counterclaim for passing off raised by BTHL, the Court held that BTHL failed to establish goodwill and reputation in relation to the word banyan in Malaysia, as none of the evidence exhibited by BTHL showed that BTHL has used its mark pertaining to the housing development industry in Malaysia. Aspect and BTHL were engaged in different industries with different target markets. The surrounding circumstances showed that no likelihood of confusion would arise such that the public will be confused or deceived into thinking that there is a business and trade connection between Aspect and BTHL.
On consideration of the well-known mark status of BTHL’s trademark, the Court did not recognize the banyan tree mark as a well-known mark as there was no evidence or survey to show the extent of recognition of the mark in Malaysia, nor did BTHL provide information on the value associated with the mark.
The facts of this case can be compared with the landmark Singapore case of Novelty Pte Ltd v Amanresorts Ltd.
Amanresorts is the proprietor of trademarks consisting of the word Aman, including “Amanusa.”
Novelty is a real estate developer which had named one of its condominium projects Amanusa.
Amanresorts was successful in the action of passing off, and the courts agreed that the Amanusa trademark was well-known in Singapore even in the absence of an Aman resort in Singapore. In assessing whether the trademark is to be regarded as well known, the Amanusa mark needed only to be recognized by ‘any relevant sector of the public,’ which could be actual or potential consumers of the Aman resorts. Similarly, this is one of the criteria which is also applicable in Malaysia in determining whether a mark is well known. In contrast, the Court held that BTHL’s banyan tree mark failed to fulfill the criteria of a well-known mark in Malaysia based on the evidence submitted.
In conclusion, this decision is indicative of the Malaysian Courts’ attentiveness to the principal of territoriality of trademarks and to the due consideration given to the extent of local use of a foreign mark. Being armed with a well-known mark may not be sufficient for a successful passing off action, as the courts will take into account whether there is a likelihood of confusion by assessing the surrounding circumstances.
With the evolving role of trademarks and the trans border nature of trade, it has become necessary to move outside the realm of traditional passing off and consider the concept of the extended form of passing off. Introducing dilution provisions in the Malaysian legislation would at the same time help in extending the protection accorded to well known marks. Until then, taking precautionary measures such as filing defensive trademark registrations could prove useful to a proprietor of a wellknown mark in Malaysia.
Shearn Delamore & Co
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