Federal Court rules likelihood of confusion from public must be considered in determining trademark infringement

30 March 2022

Ortus Expert White Sdn Bhd v Nor Yanni Adom & Anor (Civil Appeal No. 02(F)-12-02-2020(W))

In Ortus Expert White Sdn Bhd v Nor Yanni Adom & Anor, the Malaysia Federal Court addressed whether, in a trade mark infringement and passing off action,
it should consider the disclaimed words in juxtaposition or combination with the essential features in the registered trade mark for the purposes of deciding whether there was a likelihood of confusion and/or deception.

In this case, the plaintiff was a distributing company for “Royal Expert” beauty products and the owner of the registered “Royal Expert White” trade mark.
The first defendant entered into a dealership agreement with the plaintiff and distributed the plaintiff’s products with his wife, the second defendant. The defendants sold skin whitening cream bearing the trade mark “Real Expert White” in packaging allegedly similar to the plaintiff’s products. At the High Court, the plaintiff commenced an action against the defendants for, among other things, trade mark infringement and passing off.

The High Court ruled in favour of the plaintiff but the Court of Appeal later held that the plaintiff had failed to discharge their burden of proof that there were trade mark infringements by the defendants. The Court of Appeal also held that the plaintiff failed to prove the tort of passing off. The plaintiff appealed to the Federal Court.

In allowing the appeal, the Federal Court held as follows:

• In an action for trade mark infringement, the determination of whether there is likelihood of confusion/deception of the public ultimately lies with the c
• The court cannot decide the issues of infringement of trade mark and likelihood of confusion and/or deception solely upon the basis of the use of disclaimed words.
• The court can consider disclaimed words in terms of phonetic, visual, and trade channel aspects for comparison to decide whether there is likelihood of confusion and/or deception.
• The court shall consider the marks as wholes and not disregard the disclaimed words, and whether their collocation and arrangement were all inserted in similar form and position or arrangement so as to make the whole so similar as to be calculated to confuse and/or deceive. The end purpose is whether the mark is so similar as to be calculated to cause a confusion and/or deception.
• It is the duty of the court to conduct an inquiry as to whether a mark resembles another and this involves the eye as well as the ear together with some composite factors like phonetics and semantics.
• In the determination of an infringement of a trade mark, other than ocular examination, the likelihood of confusion from among the public of average intelligence and imperfect memory must be given equal weightage by the court.
• In comparing marks, the proper course is for the courts to look at the combination of those that are common to the trade, vis-à-vis disclaimers, together with the essential features, “their arrangement and their insertion in the impugned mark so as to make the whole so similar to the registered mark of the plaintiff as to be calculated to confuse and/or deceive”.