In Nor Yanni bt Adom & Anor v Ortus Expert White [2020] 1 MLJ 101, the Appellants (the Defendants in the High Court proceeding) appealed against the decision of the High Court in finding that the Defendants were liable for breach of dealership agreement, trade mark infringement, and passing-off of the Respondent’s (the Plaintiff in the High Court proceeding) trade mark.
The Plaintiff is the owner of the registered trade mark “
”. The Plaintiff brought an action against the Defendants for breach of the dealership agreement, trade mark infringement and passing-off in relation to whitening cream bearing the mark ‘Real Expert White’ sold by the Defendants. The Defendants’ products with its mark are shown below:
The High Court held that the Defendants were liable on all three causes of action and the Defendants appealed to the Court of Appeal (“COA”).
At the appeal, the issue for consideration was whether the Plaintiff had fully discharged the burden of proving the infringement or the passing-off by the Defendants.
Taking into account the crown device on the Plaintiff’s mark, the diamond-shaped device and the word “Real” on the Defendants’ mark, and the disclaimer on the words “ROYAL” and “EXPERT WHITE”, the COA was of the view that the ideas and the concepts of the two words are distinct and different, and cannot be confused with one another.
Even if there was similarity in respect of the words “EXPERT WHITE” in both the Plaintiff’s and Defendants’ marks, the disclaimer on “EXPERT WHITE” clearly established that the words “EXPERT WHITE”’ alone are not protected by the registration.
Since there was non-infringement of the Plaintiff’s registered trade mark, and the Plaintiff could not establish goodwill in its trade mark, the alleged element of misrepresentation would also fail. The failure to prove neither trade mark infringement nor passing-off by the Defendants meant that there was no breach of the dealership agreement.
The COA held that the Plaintiff had not discharged the burden of proving the infringement or the passing-off by the Defendants. The Appellants’ appeal was allowed and the High Court’s decision was set aside.
It is important to note the effect of disclaimers on a registration. A person does not infringe a registered trade mark by using that part of the mark which has been disclaimed. Nevertheless, disclaimers do not affect rights arising at common law, and the fact that there is a disclaimer in a registered trade mark does not prevent the owner from succeeding in a passing-off action if the elements of passing-off could be established.