Malaysia update: A royal appeal ' Court of Appeal reverses decision by High Court on infringement of Royal Expert White

• Published date: 20 May 2020
• Author: Ms Amy Chan
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Spruson & Ferguson

In Nor Yanni bt Adom & Anor v Ortus Expert White [2020] 1 MLJ 101, the Appellants (the Defendants in the High Court proceeding) appealed against the decision of the High Court in finding that the Defendants were liable for breach of dealership agreement, trade mark infringement, and passing-off of the Respondent's (the Plaintiff in the High Court proceeding) trade mark.

The Plaintiff is the owner of the registered trade mark "". The Plaintiff brought an action against the Defendants for breach of the dealership agreement trade mark infringement and passing-off in relation to whitening cream bearing the mark 'Real Expert White' sold by the Defendants. The Defendants' products with its mark are shown below:

The High Court held that the Defendants were liable on all three causes of action and the Defendants appealed to the Court of Appeal ("COA").

At the appeal, the issue for consideration was whether the Plaintiff had fully discharged the burden of proving the infringement or the passing-off by the Defendants.

Taking into account the crown device on the Plaintiff's mark, the diamond-shaped device and the word "Real" on the Defendants' mark, and the disclaimer on the words "ROYAL" and "EXPERT WHITE", the COA was of the view that the ideas and the concepts of the two words are distinct and different, and cannot be confused with one another.

Even if there was similarity in respect of the words "EXPERT WHITE" in both the Plaintiff's and Defendants' marks, the disclaimer on "EXPERT WHITE" clearly established that the words...