2 January, 2020
UBM Trade Link Sdn Bhd v MTE Exhibition Sdn Bhd1
In this article, Paw Ying Hui examines the factors considered by the Court in deciding whether or not to grant an interlocutory injunction in a suit for trade mark infringement and passing off.
Introduction
In the case of UBM Trade Link Sdn Bhd v MTE Exhibition Sdn Bhd, the plaintiff (“UBM Trade Link”) had filed an application for interlocutory injunction in respect of a trade mark infringement and passing off dispute (hereinafter referred to as “the Application”). Both UBM Trade Link and the defendant (“MTE Exhibition”) were in the business of organising exhibitions. The following are the representations of their trademarks:
| UBM Trade Link trademarks (hereinafter referred to as “UBM’s Marks”) | MTE Exhibition’s trademarks (hereinafter referred to as “Offending Mark”) |
|---|---|
|
Registered in CLASS 35
Registered in Class 41
unregistered |
 |
UBM Trade Link had allegedly commenced its business in 1994 and annually organised the METALTECH exhibitions in Kuala Lumpur for 23 years. UBM Trade Link contended that it has thus established reputation and goodwill over these years of its Marks.
UBM Trade Link discovered that MTE Exhibition had organised an exhibition using the Offending Mark in April 2019 which closely resembled UBM’s Marks, and was promoting another exhibition in 2020 using the Offending Mark.
On 15 May 2019, UBM Trade Link filed a suit against MTE Exhibition. In the meantime, UBM Trade Link filed an interlocutory application for an injunction (the “Application”) to restrain MTE Exhibition from doing the following acts:
- Advertising, promoting, distributing, ordering, offering for sale, supplying, disposing of or parting with the possession otherwise than to UBM Trade Link or their solicitors, or their authorised agents or otherwise howsoever dealing in or with any exhibition with a label or brand or trading style or marketing and advertising collateral bearing the letters or words “MTE”, “METAL TECHNOLOGY” or any other word, slogan, branding, logo whether in local language and/or Chinese or any other language which assimilates to and is synonymous with UBM Trade Link’s “METALTECH”, MTM, slogan and logo;
- Infringing UBM Trade Link’s registered “METALTECH” trade marks and/or any other marks and indicia used in relation to the goods, services, events, businesses and merchandise and other offerings organised under the trade name owned by UBM Trade Link, whether or not they are registered in Malaysia, including the international trade exhibition organised by UBM Trade Link under the name “METALTECH”/MTM, trading style and get-up;
- Passing off of UBM Trade Link’s “METALTECH”/MTM trade marks and logos and/or other marks, get-up, trading style and indicia used in relation to the international trade exhibition organised under the trade name “METALTECH” including without limitation to all official marks, emblems, logos, get-up and trading style owned by UBM Trade Link, whether or not they are registered in Malaysia, as its own or cause itself to be associated with UBM Trade Link, including but without limitation to UBM Trade Link’s international trade exhibition.
Preliminary objections
MTE Exhibition had raised two preliminary objections. Firstly, UBM Trade Link was not the registered proprietor of UBM’s trademarks. However, the Court held that although the marks were registered in the name of Trade Link ITE Sdn Bhd, there was no irregularity because UBM Trade Link is the same legal entity. There was merely a change of name.
Secondly, UBM Trade Link had delayed in commencing the suit and making the Application. The Court held that UBM Trade Link had initiated the suit within a reasonable time as UBM Trade Link had only discovered MTE Exhibition’s usage of the Offending Mark about a month prior to the filing of the suit and the Application.
Whether the injunction should be granted
Although the Court found that there were serious bona fide issues of trademark infringement and passing off, the Court disallowed the Application with costs for the following reasons:
(1) UBM Trade Link did not lead sufficient cogent documentary evidence of goodwill of substantial value by way of its annual turnover particularly through its audited accounts.
The Court had held the above notwithstanding the fact that UBM Trade Link had established usage of the marks in its annual exhibitions since its inception; and the sums of money spent by UBM Trade Link in advertisements of its exhibitions. The Court had viewed such expenditure to be ordinarily required by the nature of UBM Trade Link’s business in holding exhibitions, and contrasted the same to advertisements taken out by traders of other goods or services specifically to promote their goods/services.
(2) Damages is an adequate remedy.
The nature of UBM Trade Link’s exhibition business is a commercial venture to make business profits. The Court was of the view that damages by way of financial compensation would be an adequate remedy. The Court took into consideration that MTE Exhibition’s business is in direct competition with UBM Trade Link and the further consequences of granting the injunction pending trial. If the injunction was granted, MTE Exhibition would have to cancel its proposed exhibition event as well as its entire business operations which would ruin its “subsistence” and MTE Exhibition’s reputation and goodwill. These losses may be difficult to assess if not unquantifiable.
(3) UBM Trade Link has not shown that it is able to compensate MTE Exhibition if the interlocutory injunction was granted and subsequently discharged.
Therefore, the balance of justice or balance of convenience does not favour UBM Trade Link.
For further information, please contact:
Paw Ying Hui, Shearn Delamore & Co
pawyinghui@shearndelamore.com
[1] [2019] MLJU 1047.
