"It's My Name!" ' Federal Court Upholds Celebrity's Right To Sue For Passing Off For Use Of His Name

• Published date: 06 July 2021
• Subject Matter: Corporate/Commercial Law, Litigation, Mediation & Arbitration, Corporate and Company Law, Contracts and Commercial Law, Trials & Appeals & Compensation
• Law Firm: SKRINE
• Author: Mr Joshua Teoh

In the case of Mohammad Hafiz bin Hamidun v Kamdar Sdn Bhd (Civil Appeal No. 02(f)-64-10/2020(W)), the Federal Court held that a person with established goodwill in his name has the standing to commence an action for passing off against another who is unauthorised to use his name. The bench at the apex court, led by the Chief Justice, shifted away from the Court of Appeal's reversal and reinstated the High Court's findings that a celebrity is entitled to claim for passing off over his name.

The salient facts

The Plaintiff is a celebrity Nasyid singer and song composer. Besides being an artiste, the Plaintiff is also in the business of selling Baju Melayu and Kurtas bearing his name, 'Hafiz Hamidun' ("Plaintiff's Name"), through his company Mikraj Concept Sdn Bhd, that was later renamed Haje Sdn Bhd ("Plaintiff's Company").

The Defendant is a fabric retailer and has applied the Plaintiff's Name on the labels of certain products that it offers for sale ("Defendant's Products"). This has prompted the Plaintiff to receive messages from his fans and followers on social media, enquiring if the Defendant's Products originated from the Plaintiff.

Upon receiving the cease and desist letter from the Plaintiff's solicitors, the Defendant replaced the Plaintiff's Name on the Defendant's Products with the label 'Afiz Amidun'. Subsequently, the Defendant ceased entirely the use of 'Afiz Amidun' after the Plaintiff commenced an action for passing off in the High Court.

Findings at the High Court

The issues before the High Court were whether the Plaintiff's Name had goodwill such that it could have been passed off, and whether the Plaintiff was clothed with the requisite standing to make the claim. After assessing the evidence, the learned trial Judge found that the Plaintiff satisfied all elements for passing off over the unauthorised use of the Plaintiff's Name as a business indicium by the Defendant.

In rejecting the Defendant's contentions on the non-joinder of the Plaintiff's Company, the High Court found that the Plaintiff has the locus to commence the claim of passing off for two reasons. First, the Plaintiff's Name was inextricably linked to the Plaintiff and he has personally established goodwill in it. Secondly, even if the goodwill in the Plaintiff's Name resided with the Plaintiff's Company and not the Plaintiff, the corporate veil ought to be lifted in the interest of justice to reveal the Plaintiff as the alter ego and effective owner of the Plaintiff's...