Japanese wine producer toasts victory in character mark dispute

Malaysia

In Sinma Medical Products Sdn Bhd v Yomeishu Seizo Co Ltd ([2004] 1 LNS 258, July 24 2004), the Court of Appeal of Malaysia has ruled that the appellant was guilty of (i) infringing the respondent's registered trademark made up of three kanji characters (Japanese pictograms based on Chinese characters) for herbal, medicinal wine, and (ii) passing off its products as the respondent's.

Yomeishu Seizo Co Ltd sells medicinal wine under a trademark that consists of three kanji characters that are pronounced 'Yomeishu' in Japanese and 'Yang Ming Jiu' in Mandarin. Sinma Medical Products Sdn Bhd imports medicinal wine from China. The wine's get-up includes a combination of five kanji characters of which the first two mean 'Chinese' and the last three mean 'life preserving wine' - pronounced as 'Yang Ming Jiu' in Mandarin and 'Yomeishu' in Japanese. Sinma registered its five kanji characters as a trademark.

Yomeishu sued Sinma for trademark infringement and passing off. The High Court upheld the claims and ordered that Sinma's trademark be expunged. Sinma appealed, alleging that:

  • the trial judge had erroneously ordered its mark to be expunged;

  • its mark did not infringe Yomeishu's mark as the five kanji characters merely described the product as 'Chinese life preserving wine';

  • the last three characters (pronounced as 'Yang Ming Jiu' in Mandarin) were not, of themselves, being used as a trademark; and

  • there was no passing off as there was no evidence of confusion between the marks because the get-up of the two parties' products was different.

The Court of Appeal upheld the trial judge's decision. It found that Yomeishu had established that its customers in Malaysia referred to its product not just as 'Yomeishu' but also as 'Yang Ming Jiu'. It held that Sinma's registered trademark sounds identical or similar to Yomeishu's trademark when pronounced in Mandarin. It concluded that Sinma's trademark should not have been registered, and the trial judge did not err in ordering its expungement and rectification of the register. The court went on to state that since Yomeishu had registered the three kanji characters, it had a monopoly in those characters, regardless of how they are pronounced.

Secondly, the court rejected the argument that Sinma's use of the characters pronounced 'Yang Ming Jui' was not trademark use. The court held that the prominence given to those characters on the products proved their deliberate use as a trademark. The court also noted that Sinma had consciously changed the name of the wine imported from China to 'Chinese Yang Ming Jiu'.

Finally, while it found that the get-up of the products was different, the court affirmed the trial judge's decision that there was confusion arising from phonetic similarity between the marks. This confusion was clearly demonstrated by a radio campaign conducted by one of Yomeishu's business partners. That party launched a promotion over the Chinese radio networks in Mandarin, Cantonese and Hokkien offering 100 listeners the chance to exchange an empty bottle or box of Yomeishu's medicinal wine, referred to as 'Yang Ming Jiu', 'Yong Meng Chow' and 'Yeoh Miah Chiew' on the radio, for a free bottle of the product. Some 121 listeners, all Chinese, responded to the promotion:

  • one hundred and ten brought empty boxes or bottles of Yomeishu's product;

  • ten brought boxes of Sinma's product; and

  • one person brought one empty bottle of Yomeishu's product and one of Sinma's product.

This evidence established that a significant majority of Malaysian Chinese consumers related Yomeishu's product to the sound of the combination of the three characters in the Chinese dialects, including 'Yang Ming Jiu' in Mandarin. It also clearly showed confusion among a large percentage of consumers. Therefore, the court concluded that the trial judge had been correct in deciding that Sinma was passing off its products as Yomeishu's.

Lee Shih and Suaran Singh Sidhu, Skrine, Kuala Lumpur

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