In 2016, the owner of the registered mark, ‘LEXUS’, Munchy Food Industries Sdn Bhd (‘Munchy’) sued another biscuit manufacturer, Huasin Food Industries Sdn Bhd (‘Huasin’) for trademark infringement on the ground that Huasin used a mark ‘LEX’ for its cream sandwich biscuit products.
This case illustrates how trademark registration gives advantage to a business when pursuing trademark infringement action in Court of Law.
Vs.
The High Court ruled in favour of Munchy and found that Munchy is the 1st user of the LEXUS mark for biscuits in the course of trade in Malaysia. In reaching its finding that there is likelihood of confusion and deception between LEXUS and LEX, the High Court applied the imperfect recollection test.
At the Court of Appeal, the High Court’s decision was reversed. The Court of Appeal ruled that the High Court ought to have allowed the trademarks to co-exist taking into account the literacy level of consumer.
Finally in 2020, at the Federal Court (which is the apex court in Malaysia), the Federal Court reinstated the High Court’s decision. The Federal Court ruled that because Huasin did not plead the defence of honest concurrent use, it is barred from raising this argument. The Federal Court overturned the Court of Appeal’s decision allowing both marks to co-exist.
Registration of Trademark Providing Enormous Advantage
Malaysia has adopted the principle of first user i.e. the party who first use the mark in Malaysia is the rightful owner of the mark. However, being a first user of the mark alone does not provide adequate legal protection.
In this case, Munchy has taken a proactive step in obtaining registration of the mark ‘LEXUS’ in 1998. This cemented Munchy’s legal ownership of the mark ‘LEXUS’ and providing advantage to Munchy in pursuing its trademark infringement suit. On the other hand, Huasin has only attempted to register its mark in 2015 and the application was opposed by Munchy. Huasin did not obtain registration of its mark.
Registration of trademark gives you peace of mind because it allows your business to seek remedies against infringer under Trademarks Act 2019. Apply now before it is too late.
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