Consent judgment issued in TIMBERLAND passing off case

Malaysia

The Kuala Lumpur High Court has issued a consent judgment following a settlement agreement between Timberland Company and five defendant retailers (Case D7-22-1979-2002).

Timberland produces footwear and clothing under its famous TIMBERLAND and 'tree' design marks. It commenced an action for passing off in the High Court of Kuala Lumpur against Orifocus Sdn Bhd, Gabungan Impresif Sdn Bhd, Quest Garments Sdn Bhd, FOS Clothing Sdn Bhd and an individual called Ho Kok Keong - all of which operate retailing outlets across Malaysia under the name Factory Outlet Store. Timberland claimed that the Factory Outlet Stores were selling counterfeit TIMBERLAND-marked goods. It also asserted that the defendants had infringed the copyright subsisting in the tree design mark.

The parties reached a settlement and, as part of the agreement, the five defendants confirmed that they had withdrawn the goods bearing the TIMBERLAND and tree design marks not manufactured by Timberland from all their outlets in Malaysia. Following the settlement, a consent judgment was entered into on a without admission of liability basis. The judgment of the Kuala Lumpur High Court included an injunction restraining the defendants from (i) using Timberland's TIMBERLAND and tree design marks on clothing not manufactured by Timberland, and (ii) infringing the copyright of Timberland subsisting in the tree design mark.

Pursuant to the consent judgment, the defendants also paid an agreed sum to Timberland as full and final settlement of the matter.

Teo Bong Kwang, Raja, Darryl & Loh, Kuala Lumpur

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