Court spins out yarn passing off decision for 16 years

Malaysia

The High Court has finally issued a decision in the case of Dollfus-Mieg & Cie v Macy Sdn Bhd, 16 years after the close of the trial.

The plaintiffs were a group of manufacturers and distributors of yarns for needlework, crafts and embroidery that used, in the course of trade, numerical codes consisting of either three or four numbers to denote the colours of their yarns. The defendants, local company Macy Sdn Bhd and another party, were also in the business of manufacturing and selling yarns for needlework and embroidery. In this case, it was alleged that the defendants had used the same numerical codes albeit preceded by the additional numeral '1' to indicate the same colours of yarns. Thus, the plaintiffs brought an action claiming that the defendants' activities amounted to the tort of passing off.

The plaintiffs were in essence seeking to claim a monopoly over numbers. To have succeeded in the action for passing off, they would have had to show that:

  • there was reputation and goodwill attached to the plaintiffs' numerical codes such that the codes were solely associated with or distinctive of the plaintiffs' products;

  • the defendants had misrepresented to the public that their goods were those of the plaintiffs; and

  • the defendants' misrepresentation had caused or was likely to cause damage.

While some authorities establishing that numerals can be distinctive do exist, it was clear that the numerical codes in question here were not. The evidence showed that the codes were common to the trade and descriptive in that they were indicative of the colour of the yarns and therefore merely indicative of the nature of the plaintiffs' products. Moreover, the numerical codes had always been used by the plaintiffs with the name DMC (referring to the first plaintiff Dollfus-Mieg & Cie) - hence, it was not the numerical codes themselves that identified the plaintiffs' products and generated goodwill, but rather it was the accompanying DMC mark which consumers associated with the plaintiffs.

The question of whether a particular mark is distinctive has been said to be only one aspect of the wider question of whether misrepresentation has occurred. In this case, the defendants' goods were sufficiently distinguishable from the plaintiffs' such that no misrepresentation could have occurred. The first defendant (Macy) had used, on its goods, its own trademark, trade name and reference numbers which were completely different and distinctive from the plaintiffs'.

After having heard from a total of 30 witnesses, the court ruled that the plaintiffs had failed to prove their claim of passing off against the defendants. However, no grounds of judgment were given.

The absence of any grounds of judgment should not detract in any way from the correctness of the court's decision that a case of passing off had not been made out against the defendants. The only disappointment, if any, is that it took the court such a considerable period of time to deliver its judgment in what appears to be such a clear-cut decision.

Patricia Woo, Skrine, Kuala Lumpur

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