The Court held that descriptive wordings of common and geographical reference are public source which all traders in the business can use to associate themselves with their own trade or business.
Facts of the Case
Plaintiff was incorporated in 1996 under the name of MIFF Sdn Bhd.Plaintiff is in the business of providing services relating to the organizing and holding of exhibitions, trade fairs and shows related to furniture. The company’s corporate name, MIFF is registered as a trademark since March 2000. Plaintiff has been promoting its MIFF exhibitions and fairs via various media and medium and their fairs are reported regularly in the newspapers. Plaintiff’s exhibitions are well attended and organized. Participants and visitors to the plaintiffs MIFF exhibition and trade fairs includes renowned public figures, consists of Malaysians and overseas visitors.
the first defendant, Kuala Lumpur & Selangor Furniture Entrepreneur Association is an association or body registered in Malaysia under the Societies Act 1966. It is a trade association or body joined and participated by, amongst others, furniture businessmen. The second, third and fourth defendants are the association’s President, Vice-President and Secretary-General.
Plaintiff had organised its MIFF exhibitions and trade fair at KLCC for the year 2006 to 2007. In 2008, plaintiff hold its exhibition at PWTC. Plaintiff discovered that the first defendant organized and held an exhibition and trade fair for the furniture industry at KLCC. The first defendant used the name “MFF” for its exhibition. Plaintiff alleged that the use of the name “MFF” by the first defendant for its exhibition and fair at KLCC has caused and/or likely to cause confusion in the marketplace and in the industry. It is contended that the use of MFF by the first defendant to identify its exhibition and fair would also lead or likely to lead to a false suggestion, association or connection with the plaintiff's MIFF exhibition and fair, thereby causing or likely to cause damage and injury to the plaintiff's goodwill and reputation. Hence, the first defendant’s use of MFF is an infringement of the plaintiff's trademark registration for MIFF and also constitutes passing-off.
Defendants contended that the mark “MFF” used is neither identical nor similar to the plaintiff's Trade Mark. There is no likelihood of confusion or deception. Furthermore, the mark MFF is used alongside the first defendant's association logo.
Issue of the Case
Whether the first defendant's disputed mark is identical or as nearly resembling with the plaintiff’s registered mark as is likely to deceive or cause confusion?
Judgment of the Case
Plaintiffs registered trade mark consists of the alphabets 'MIFF' and device. The device
element of the Plaintiffs mark can be described as a drawing of a bird in flight with its wing outstretched (the bird in flight device).
Defendant's disputed mark are the alphabets 'MFF' and the words “MALAYSIA FURNITURE FAIR” and the year “2008”. The Defendant's mark also has device which can be described the 'arm chair like' device. Plaintiff argued that one would read, identify and pronounced the first defendant mark “MFF” as “MIFF” and the alphabets “MFF” is the leading feature which infringed the plaintiff’s “MIFF” trade mark.
The Court held that the test is whether the totality of the trade mark is such that it is likely to cause deception or confusion. The Court carried out a visual comparison between the two trademarks as a whole.
The Court observed that the first defendant’s trade mark contains a device suggestive of an arm chair. The visual appearance of the first defendant’s trade mark focus on the “arm chair like” device. On the other hand, the plaintiff’s presentation of the bird in flight device is characteristically different from the first defendant’s device.
As the evidences shows that the “arm chair like” device being the essential and significant feature of the first defendant’s disputed mark when considered as a whole, it has a high level of inherent distinctiveness. It is easily remembered when being seen by members of the public. Thus, it does not resemble the plaintiff’s trade mark as to be calculated to deceive and cause confusion. For this reason, it does not infringe the plaintiff’s trade mark.
For the claim of passing off, the plaintiff claims that it has exclusive rights of use over the term “MALAYSIAN INTERNATIONAL FURNITURE FAIR" and its abbreviation "MIFF" in connection with and in relation to the organization and the conduct of furniture exhibition.
The Court held that descriptive wordings such as “Malaysia” and “Furniture” are public source of common and geographical reference from which all traders in the furniture business can use to associate themselves with their own furniture trade, business or exhibitions. In the present case, the first defendant’s use of the wordings “MALAYSIA FURNITURE FAIR” and its abbreviation “MFF” are descriptive and are common words used to indicate the nature and type of exhibitions organised in Malaysia. Thus, there is nothing wrong with the using of the words to describe their services or business.
It is also the Court’s view that the plaintiff cannot deprive others from using descriptive terms such as “Furniture”, “Malaysia” and “Fair”. In any event, plaintiff has not established that it had already acquired secondary distinctiveness over the usage of those terms. Therefore, the first defendant cannot be said to have passed off the plaintiff’s activities for using the descriptive terms of “MALAYSIA FURNITURE FAIR” and its abbreviation “MFF”.
In conclusion, the plaintiff’s claim was dismissed with cost.
Principle of the Case
Descriptive wordings of common and geographical reference are public source which all traders in the business can use to associate themselves with their own trade or business. Others cannot be deprived of using such descriptive wordings.
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