The Protection Of Kanji Characters In Malaysia – The Yomeishu Saga

Background

The proprietors of Kanji character trade marks in Malaysia can take comfort from a decision of the Malaysian Court of Appeal which upheld the decision of the High Court where it was held that the wide usage of the phonetic sound of the combination of the Kanji characters in question among the local Chinese dialect groups gave the Plaintiffs in the case a reputation for their trade mark and get-up as well as for their product in the Mandarin pronunciation of the phonetic sound of the Kanji characters concerned.

This is of wide implication, in a multilingual country such as Malaysia especially with many Chinese dialect groups as it would mean that even if the Kanji characters concerned arose in Japan as was the case, the proprietor could obtain goodwill and reputation for the phonetic pronunciation of the said Kanji characters in Mandarin or Chinese dialects if there is sufficient evidence of use in Mandarin of the dialects concerned.

The significant decision was the case of Yomeishu Seizo Co. Ltd. & Others v. Sinma Medical Products (M) Sdn Bhd [1996] 2 MLJ 334.

The High Court Decision

The first Plaintiff, a Japanese corporation was the registered proprietor in Malaysia of a combination of trade marks being (i) a combination of three Kanji characters ( 養命酒 ) ;(ii) the romanized word “Yomeishu”, which is the phonetic sound in Japanese of the three Kanji characters; and (iii) the logo that depicts a stylized flying dragon, hilltops, clouds and water, all in respect of their product, a herbal medicinal wine manufactured in Japan. The Plaintiffs also contended that the combination of the three Kanji characters was an invented word.

The Defendant was a Malaysian importer of Chinese patent drugs and medicated wine and had importer a medicinal wine which had in its get-up the combination of the three Kanji characters ( 養命酒 ) with the prefix of two Kanji characters in smaller print that made up the word Chinese.

The Mandarin transliteration of the three Kanji characters ( 養命酒 ) will be “Yang Ming Jiu” with a disclaimer that the words were only descriptive of the wine.

The Plaintiffs’ case

The Plaintiffs being the Japanese corporation which was the trade mark owner in Malaysia and its former and present distributors in Malaysia commenced an action against the Defendant for trade mark infringement and passing off. The Plaintiffs’ main ground was that the Romanized transliteration of the five characters in the trade mark registered by the Defendant causes its trade mark to be confusingly similar to that of the first Plaintiff’s trade marks, in that it contains an essential feature of the first Plaintiff’s trade mark, namely the romanized sound in Mandarin of the combination of the three Kanji characters.

The Plaintiffs therefore sought an injunction and that the romanized words “Chinese Yang Ming Jiu” as included in the Defendant’s trade mark expunged.

The Defendant’s Defence

The Defendant’s defence was that:-

  • the combination of the three Kanji characters is not an essential feature of the first plaintiff’s trade marks and that in any event it is not, and cannot be, a coined or invented word in that the combination has a merely descriptive meaning and has reference to a class of wines that has been consumed and commonly marketed in Malaysia and other parts of the world;
  • the combination of the three Kanji characters had not acquired any secondary meaning of being distinctive of the Plaintiffs’ medicinal wine;
  • the public does not associate the combination of three Kanji characters with the Plaintiffs or the Plaintiffs product;
  • the five Kanji characters romanized into “Chinese Yang Ming Jiu” merely describes the product as being Chinese “life-strengthening wine” and accordingly the Plaintiffs are not allowed to claim exclusive rights over the same;
  • since the combination of the three Kanji characters has a descriptive usage as stated above, the Plaintiffs should not have been able to obtain registration as it not a coined or invented word and sought rectification of the Register of Trade Marks by the cancellation of the combination of the three Kanji characters as the first Plaintiff’s trade mark.

The Courts finding

Whether it is an invented word

After hearing the testimony of language experts in the origins of the three Kanji characters, the court found that although the combination of the characters “Yo Mei” or “Yang Ming” may have been used in very ancient times as it appears as a word in a 200BC Chinese publication, it appears to have fallen into disuse and may have been only used in some medical books. However, in the 17th century the characters “yomei” was used by the ancestor of the founder of the first Plaintiff together with the word “shu” meaning “wine” which was an uncommon combination then.

The Judge therefore found that although the word may have originally been used 1800 years before, there was ample time for it to become obsolete and be re-coined. The Court also found that the mere fact that each Kanji character has its meaning an any primary school-leaver would have no problem getting the meaning of the combination to be “tonic wine” did not detract from the effect and conclusion that the combination “yang ming” or “yomei” ceased to be used in that form and was not included in literature or dictionaries except as a quotation from a 200 BC book.

A further point raised by the Court was that if the combination “yomei” or “yang ming” is merely descriptive, then it is not tenable that none of the 300 medicinal wines put in evidence used the said combination except for the defendant’s product.

Usage of the Word

The Court held that the evidence showed that the Plaintiff did promote its product among the Chinese community in Malaysia and the Plaintiff’s product was referred to as Yang Ming Jin to Mandarin speaking customers “Yang Miang Chiew” to Hokkien speaking customers and so forth.

The Court also accepted the evidence of a radio campaign organized by the Plaintiff over the local Chinese language stations where the listeners were told that the first 100 listeners who brought in an empty bottle or box of the medicinal wine “Yang Ming Jiu”, “Yang Meng Chow” or “Yeoh Miah Chiew” i.e. phonetic pronunciation in Mandarin, Cantonese and Hokkien respectively, could get a free bottle. Out of the 120 listeners who responded 110 came with empty Yomeishu bottles and 10 with the Defendant’s product, so the Court did find there was confusion by a significant percentage of consumers.

The Court accepted that the fact the radio campaign was conducted in Chinese dialects and Mandarin led the public to run up conclusively proves that even if “Yang Ming Jiu” in its primary meaning is descriptive of a class of medicinal wines, it had come to refer to in its secondary meaning to the product of the Plaintiffs.

Furthermore evidence was given wherein an employee of the third Plaintiff had purchased one of the Defendant’s products from a shop and was thereafter given a receipt for “Yomeishu”, which was further evidence of confusion.

The Appeal

In the appeal against the High Court decision reported in Simma Medical Products (M) Sdn Bhd v Yomeishu Seizo Co Ltd & Ors [2004] 4 MLJ 358, the Court of Appeal upheld the High Court decision above with a number of salient comments.

On Trade Mark Infringement

The Court of Appeal held that the contention by the Defendant that it never used the three Kanji characters as a trade mark although it used the “Chinese Yang Ming Jiu” in romanized letters as its trade mark is untenable. The prominence given to the Chinese characters on the Defendant’s product proves clearly a deliberate use of the three kanji characters.

The Court also upheld the trial judge’s decision that the three kanji characters used by the Plaintiff is a coined or invented word and the use of the five kanji characters by the Defendant so nearly resemble the three kanji characters which had been trade marked by the Plaintiffs as to be likely to cause confusion and be infringing.

The Court of Appeal also held that the mere registration of a trade mark does not afford a defence to the party who wrongfully registered the same and the relief to rectify the Trade Mark Register can be ordered as well as the Plaintiffs being entitled to an injunction as of right.

Passing-off

Here the Court of Appeal held that the three elements in passing-off being reputation, misrepresentation and damage had been established by the Plaintiff.

This is as the sale in Malaysia of the Plaintiffs’ product from 1969 to 1992 of RM34,000,000 (USD12 Million at the then exchange rate) and advertising expenses at RM8,000,000 (i.e. US3.5 Million) was substantial.

The Court of Appeal also agreed that there was evidence of confusion as was demonstrated by the radio campaign as 10 out of 121 listeners would show about 80% of them was confused.

The Court finally stated the use of the two kanji characters meaning “Chinese” before the three Kanji characters would not be allowed to distinguish, as it would be akin allow a trader to pass-off his goods by calling it Malaysian Coca Cola.

Lesson from the Yomeishu Case

It is now clear that it is important for companies which have their trade marks in Kanji characters to have the same registered as trade marks. This is because although the phonetic pronunciation in Japan may be different from that of Mandarin or the various Chinese dialects spoken in Malaysia, the Courts will give protection to the trade mark if an infringer uses the same Kanji characters notwithstanding it may be pronounced differently or have a different transliteration.

There is also now a new basis to oppose romanized transliterations of Kanji characters which have been applied for trade mark registration, whether they are Japanese or Chinese transliterations. This would be strongly recommended as it gives a wider ambit of protection for the mark.

In view of the Courts approval in respect of the radio campaign to show confusion, it appears that an imaginative campaign would be helpful to help establish confusion. Furthermore the fact that a relatively low threshold of 8% was accepted would make it not difficult show confusion.

Therefore with the Court of Appeal affirming the High Court decision it appears that proprietors of Kanji character trade marks are given a strong level of protection in Malaysia as even the romanized use of the Kanji characters would be protected which is a welcome development for trade mark owners especially in Japan.

Leave a Reply

Your email address will not be published. Required fields are marked *