1. ) TATSUNO CORPORATION 2. ) TATSUNO ENGINEERING & SERVICE MALAYSIA SDN BHD v FLOWFUEL SDN BHD

Case Significance

Illustrates how misrepresenting a product's manufacturing provenance can ground both trademark infringement under the Trademarks Act 2019 and passing off, where goodwill, a confusing misrepresentation and likely damage are established.

This High Court decision, in the Commercial Division at Kuala Lumpur, concerns trademark infringement and passing off in the market for fuel dispenser pumps and fuel retail solutions. The first plaintiff manufactures fuel dispenser pumps and is the registered owner of the marks in issue; the second plaintiff, its wholly-owned Malaysian subsidiary, holds the exclusive right to use those marks for goods and services in Malaysia. The defendant, a one-stop fuel systems solutions provider that supplies and sells fuel dispenser pumps and related equipment, was said to have used the plaintiffs' marks in the course of trade without consent. After a full trial, the court allowed the plaintiffs' claim.

On the infringement claim under the Trademarks Act 2019, the court considered whether the defendant had used the plaintiffs' marks in the course of trade without their consent, whether that use was likely to cause confusion, and whether the doctrine of exhaustion of rights applied so as to answer the claim. On passing off, the court applied the classical elements — goodwill or reputation in the goods or services, a misrepresentation by the defendant, and the likelihood of damage.

The court found the passing off established. On the evidence of the plaintiffs' witness, it held that the information plates on the pumps supplied by the defendant misrepresented the pumps' manufacturing dates, the pumps having in fact been manufactured earlier than the dates represented. That false information was capable of affecting the quality and safety of the pumps — a pump that should have been disqualified from use might be damaged or catch fire — and was found to have affected the plaintiffs' global contracts with fuel providers. The court concluded that the elements of passing off were met and that the defendant's conduct was likely to cause damage to the plaintiffs. The judgment is a useful illustration of how misrepresentation as to a product's manufacturing provenance can ground both trademark and passing-off liability.