Malaysia – Court Nullifies Trade Description Order

In Malaysia a trade mark owner as the possibility of enforcing his rights by way of trade description order wherein an order of court is obtained to declare an infringing brand as false trade description, which allows infringing products to be seized by the authorities and the infringers prosecuted.

However the importance of obtaining an order that is compliant with the law is illustrated by the case of Thye Huat Chan Sdn Bhd v The Shen Trading Sdn Bhd and Teong Fatt Commdities (M) Sdn Bhd [2008] 6 MLJ 99.

in this case the applicant is the registered proprietor of two ABC trade marks, one consisting of the letters ABC arranged in a triangle having a base strip enclosed within two concentric circles and the other consisting of the letters ABC arranged in a triangle but having a base strip shaped like a hull of the boat in respect of tapioca, rice and sago flour.

The applicant then applied ex parte for a trade description order and submitted three photos of the packages of tapioca starch that bore the alleged infringing ABC trade mark.

The court then made an order declaring that the three infringing trade marks that were represented in the photographs as false trade descriptions. Based on the said order, Thye Huat Chan had duly filed the draft order with the Court. However, the order was approved and sealed referring to the get-up instead of the trade mark, and the mistake was not noticed or corrected.

Upon a complaint by the applicant the Ministry’s officers seized from the premises of the respondents, sacks of tapioca starch bearing the letters ABC within a triangle. The respondents then applied to have the order set aside.

The court ordered that the order be set aside with costs despite the applicant’s suggestion that it should be amended. The Court decided that in view of the fact that a get-up and a trade mark are entirely different, the fact that the order that was extracted and acted upon was not the same as the order that was ordered by the court would mean that the extracted order had no basis of existence. The court was not in favour of amending the order, giving it retrospective effect, which should not be the case where there is criminal liability. Secondly, a trade description order needs to verbally identify an infringing trade mark and so merely affixing representations of the alleged infringing trade mark would be bad in law and grounds for it to be set aside.

Therefore, care has to be taken to ensure that a trade description order is correctly issued and contains a verbal description of the infringing mark.

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