3 March, 2020
Telekom Malaysia Berhad v CA Multimedia Sdn Bhd1
The first plaintiff, Telekom Malaysia Berhad (“Telekom”) is the registered proprietor of the TMPOINT trade mark, as well as the beneficial owner of the goodwill identified therein. On the other hand, the second plaintiff is a subsidiary of Telekom (collectively, “the Plaintiffs).
In 2014, the second plaintiff entered into separate dealership agreements with the first and second defendants (collectively, “the Defendants”). Among the material terms of the agreements were that the Defendants can only use the TMPOINT trade mark in a limited manner with prior consent from the Plaintiffs.
Subsequently in 2015, the Plaintiffs discovered that the Defendants had used the TMPOINT trade on the website of the first defendant and/or second Defendant (“the offending website”) which employed the domain name www.tmpoint.com, (“the offending domain name”).
Following this, the parties had exchanges which resulted in additional conditions being imposed on the Defendants’ use of the TMPOINT trade mark (“Additional Terms”).
However, around July 2018, the plaintiffs discovered that the Defendants had not used the offending website according to the Additional Terms. As a result, the Plaintiffs terminated the dealership agreements with the Defendants. Despite the termination, the second defendant continued to operate its e-commerce business via the offending website, thus leading to the present suit.
Trade Mark Infringement
The plaintiffs asserted trade mark infringement by relying on Telekom’s registration in class 35 for TMPOINT in Malaysia.
The main point of contention was whether the second defendant had used the TMPOINT trade mark via the offending website in relation to the services covered under the registration. The TMPOINT trade mark was registered in respect of
“advertising; business management; business administration; office functions; all included in class 35”.
The parties submitted different approaches in interpreting “advertising”, which is one of the services covered under the registration of the TMPOINT trade mark. The Defendants relied on a combined reading of the Cambridge English Dictionary and an article published by the World Intellectual Property Organisation to contend that “advertising” means the activity and business of persuading people to buy products or services and is a direct part of the creative industries.
Since the TMPOINT website merely served as a platform for the second defendant’s e-commerce business, the Defendants claimed that the elements of persuading customers and creative input were absent and thus the second defendant’s use of the TMPOINT trade mark via the offending website would not constitute as “advertising”.
However, the Judge preferred the Plaintiffs’ approach in interpreting “advertising” with the aid of the Explanatory Note of the Nice Classification. The Explanatory Note explains “advertising” in relation to services which enables customers to conveniently view and purchase those goods, through various means for example: web sites, online advertising or an online marketplace.
In rejecting the Defendants’ interpretation, the Judge observed that
“the law on intellectual property rights protection must necessarily grow and rise to meet dynamic challenges including in innovative arguments made in defence against trade mark infringement and passing off.”
The Defendants also claimed that they had created and used the offending website before Telekom registered the TMPOINT trade mark. However, the Judge held it to be immaterial because the Defendants had neither invalidated the registration of the TMPOINT trade mark nor applied to have the TMPOINT trade mark registered as a trade mark in their name based on concurrent use.
Consequently, the Judge found that the second defendant had infringed the Plaintiffs’ trademark.
Passing-Off of Mark
In its suit, the Plaintiffs also relied upon the common law action of passing off in respect of the TMPOINT trade mark. The Judge found that the Plaintiffs had enjoyed goodwill and reputation in respect of the TMPOINT trade mark in Malaysia.
In determining the issue of misrepresentation, the Judge held that there was a real likelihood that the Malaysian public would be deceived into thinking that the offending website was associated or connected with the plaintiffs. Further, the Judge cited the Australian case of The Architects (Australia) Pty Ltd t/as Architects Australia v Witty Consultants Pty Ltd2 to hold that there is no requirement for similarity in business for there to be misrepresentation.
On the issue of damages, the Judge reaffirmed that actual damages need not be proven.
The Judge went on to find that the second defendant had committed passing off by operating its e-commerce business via the offending website.
Passing-Off of Domain Name
Another cause of action relied upon by the Plaintiffs was passing off of domain name. The offending domain name was registered by the fourth defendant, who was the director of the Defendants.
The fourth defendant claimed that the offending domain name had been registered in its name. Notwithstanding this, the Judge found that the Plaintiffs had been using the TMPOINT trade mark since 2005 and had since acquired goodwill and reputation in the TMPOINT trade mark. Citing the decision in Education Testing Service v TOEFL3, the Judge agreed that mere registration of the domain name would not be sufficient to establish rights or legitimate interests. In addition, the Judge held that while the fourth defendant had limited rights to use the offending domain name during the currency of the dealership agreement as varied by the
Additional Terms, such rights and interest ceased upon termination of the agreement.
Further, the Judge found that the second and fourth defendants had used the offending domain name after the termination of the Agreement in bad faith. Among the facts supporting this finding was that the fourth defendant had offered to sell the offending website to the plaintiffs at a price of RM5,000,000 prior to the commencement of this suit.
Thus, the Judge held that passing off in respect of the domain name had been committed. The Judge then ordered for the transfer of the domain name to the Plaintiffs.
For further information, please contact:
Ameet Kaur Purba, Partner, Shearn Delamore & Co
ameet@shearndelamore.com
1 [2019] MLJU 1664
3(WIPO Arbitration and Mediation Centre Case no. D2000-0044)
