High Court axes action against liquor mark

Malaysia

In PH Products Sdn Bhd v Suenyun Sdn Bhd (Case D2-22-1225-2004, August 22 2005), the Kuala Lumpur High Court has dismissed the plaintiff's application for an interlocutory injunction against the defendant's use of the TWO AXE device mark for liquor.

PH Products Sdn Bhd claimed that, pursuant to two deeds of assignment, it was the proprietor of the mark KAPAK (meaning 'axe' in Malaysian) with a device of two axes. PH Products contended that it had acquired goodwill and reputation in the KAPAK mark through its substantial use, promotion and sale of liquor bearing the mark since 1986.

Suenyun Sdn Bhd, a manufacturer and seller of liquor and spirits, began using the mark GOLDEN X with a device of two axes for liquor in 1998. In mid-1999 it stopped using the GOLDEN X mark and instead started to use the TWO AXE mark with a two axe device.

PH Products filed an action with the Kuala Lumpur High Court against Suenyun for trademark infringement and passing off. It also applied for an interlocutory injunction to restrain Suenyun from using the mark TWO AXE.

PH Products alleged that Suenyun's TWO AXE mark was confusingly similar to its KAPAK mark and had caused or was likely to cause confusion or deception among members of the trade and public. PH Products also alleged that Suenyun had misrepresented its goods as those of PH Products, which would injure PH Products' business and goodwill.

Suenyun contended that (i) the claim was frivolous, and (ii) PH Products had failed to show that there was a serious question to be tried in that it had not proved that the word 'axe' (or 'kapak') and a device of two axes in gold colour were distinctive of PH Products. Suenyun also contended that PH Products had failed to provide evidence of actual confusion despite the fact that PH Products and Suenyun had been selling liquor side by side for several years.

Suenyun also argued that its business and goodwill would suffer irreparable damage if an interlocutory injunction were granted. It claimed that the balance of convenience was against granting the injunction since PH Products was guilty of unreasonable or inordinate delay in taking several years before seeking interlocutory injunctive relief.

The court agreed and dismissed PH Products' application for an interlocutory injunction with costs. It found that Suenyun would suffer greater hardship if the interlocutory injunction were granted.

Michael Soo and Gan Kai Ling, Shook Lin & Bok, Kuala Lumpur

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