In this case, the plaintiff (“Masitu”) filed a claim against the defendants (“Masfoam”) for trademark infringement of the “MASFOAM” trademark and for passing off Masfoam’s products as those of Masitu’s.
Masitu had been manufacturing, distributing, selling and/or offering for sale foam products under the “MASFOAM” trademark since 2001. The term “MASFOAM” was invented by Masitu, coined by combining the prefix “Mas” in their trade name “Masitu” to the word “foam”.
Sometime in 2019, Masfoam was found to be selling similar products bearing an identical and/or confusingly similar trademark to Masitu’s “MASFOAM” trademark, thereby leading to the instant action by Masitu.
Masfoam relied on several defences under section 40(1)(a) of the Trade Marks Act 1976, including the use in good faith and the doctrine of own name.
The Court, having heard and seen the evidence from both parties, decided that there was infringement and passing off. The Court held that the term “MASFOAM” was not the name of a person, despite the first defendant’s name being “Masfoam Engineering Sdn Bhd”, and consequently, the use of “MASFOAM” by Masfoam does not qualify them to the defence of “use by a person of his own name”.
Further, the second and third defendants had admitted having knowledge of “MASFOAM” before incorporating the first defendant, thus negating the averment that “MASFOAM” was a word invented by them. Consequently, the defence of use in good faith by Masfoam had also failed.
