Malaysia – The Law Of Passing Off Examined In Court

The Plaintiff’s case

The Plaintiff’s brought an action against the Defendants for passing off, conspiracy to pass of, conspiracy to injure the trade of the Plaintiffs, malicious falsehood and slander of goods and infringement of trade mark under the Trade Mark Act 1976. The Plaintiff’s product known as “Lady Gold” was registered under the Control of Drugs and Cosmetic Regulations 1984 pursuant to Sales of Drugs Act 1952 with 3 kanji characters written in Chinese, which is the subject matter of dispute, but not a registered trade mark at the time the Plaintiff commenced the writ action.

The Defendant’s case

The Defendant’s product which was registered under the CDR 1984 earlier then the Plaintiff’s and was known as Pik Yuk Chue capsules which also offer gynecological benefits as the Plaintiff’s product. The Defendants product was already in the market before the Plaintiff’s product was launched in 1999.


The Plaintiff’s main complaint is that the Defendants subsequently had marketed its products using a similar get-up of the Plaintiff’s by using 2 of the 3 kanji characters written in Chinese, which the Defendants deny that their product bore any resemblance to the Plaintiff’s product. The defendants further denied any act and/or conspiracy to pass off; no similarity between the packaging and products of the Plaintiffs and Defendants; no similarity in terms of design, color and name; no confusion and deception; and the plaintiffs failed to establish goodwill and reputation of the products at all times.


The Honourable Court proceeded to explain the law relating to passing off wherein it is to protect the goodwill and reputation of the business from infringement by dishonest competitors. To establish passing off the Plaintiff must be able to prove that there was goodwill or reputation attached to the goods or services; misrepresentation; and damages.

The law of passing as it stands is rooted from the common law and is a well defined tort. The tort essentially consist of some sort of invasion of goodwill. On the facts, the court found that the defendant had not infringed the plaintiffs trademark as the trade marks were not identical or nearly resembled each other, as the trade marks differed visually and aurally to a great extent and there was no likelihood or confusion or deception in the course of trade in relation to the products concerned.