XXXX v XXXX

01f-29-09-2020w Federal Court (Mahkamah Persekutuan) 23 March 2021 • 01(f)-29-09/2020(W)

Catchwords

TRADE MARK LAW: Infringement of Trade Mark and Passing Off – Section 38 of the Trade Marks Act 1976 [Act 175] - Trade mark infringement - Registered trade mark - Infringing names - goodwill - Leave to appeal (questions of law) - Whether the use of generic words which form part of a company, corporate, trade of domain name, which such words are also comprised as part of registered trade mark of another party (but which are not registered as a word mark or disclaimed), is deemed to be an infringement of such registered trade mark - If so, what is the definition of “allied field” for the purpose of determining whether such usage in relation to passing off action” is to be considered an act of passing off - What is the definition of “engaging in a business of an allied field” which would amount to a misrepresentation in relation to a passing off action, where one party has generic words which form part of their company, corporate, trade or domain name, and such words are also comprised as part of a registered trade mark or company name of another party.

Practice Areas

Intellectual Property Civil Procedure Contract

Judges (3)

Nallini Pathmanathan Coram Tengku Maimun binti Tuan Mat Delivered Zaleha binti Yusof Coram

Parties (2)

Xxxx Appellant Xxxx Respondent

Judgment

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Source: eJudgment (01f-29-09-2020w)