In this case, the Plaintiffs and the Defendants were neighbours. The High Court had dismissed an application by the Plaintiffs who applied for an order for interlocutory injunction to restrain the Defendants from installing any CCTV cameras at the Defendants’ house which faced the Plaintiffs’ house as well as also for an order to compel the Defendants to remove their CCTV cameras that were installed facing the Plaintiffs’ house.
The Plaintiffs alleged that the act of the Defendants installing the CCTV cameras had intruded their livelihood and daily activities. The Defendants on the other hand alleged that the CCTV cameras were for security reasons as their house had been intruded before and also that the CCTV cameras only showed the Plaintiffs’ house as background.
The grounds given by the High Court in dismissing the Plaintiffs’ application are, among others, as follows:
(a) there is no evidence to show that the CCTV cameras intruded the livelihood and daily activities of the Plaintiffs. Further, there is no evidence in the Plaintiffs’ affidavit to show that the CCTV cameras recorded the Plaintiffs’ activities.
(b) the Defendants are entitled to install CCTV cameras for security and safety purposes.
(c) if the interlocutory injunction is granted this will bring a legal implication to the general public especially when CCTV cameras are installed at residential and commercial premises to protect the safety of the general public.
(d) there is no right of privacy in Malaysia thus the Plaintiffs do not have the right to institute an action against invasion of privacy rights.
Walton International Limited v Yong Teng Hing B/S Hong Kong Trading Co & Anor (Civil Appeal No: W-02-685-2008)
The appellant is the registered proprietor of “GIORDANO” trade mark and other related trade marks in Class 25 (for garments and wearing apparels; jeans, T-shirts, pouch, accessories, trousers, clothing, footwear and headgear and articles of clothing), Class 18 (for leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery); and Class 13 (for GIORDANO ladies).
The appellant’s predecessor in title, Giordano Limited has sold and exported substantial quantities of goods bearing “GIORDANO” trade mark, such as articles of clothing, watches with leather straps, leather belts, eyewear including sunglasses, bags, wallets umbrellas and fashions accessories, to many countries including Malaysia. All the “GIORDANO” trade mark and other related trade marks worldwide together with the goodwill and reputation in connection with the trade marks were assigned to the appellant in 1991.
The respondent on the other hand, is the sole proprietor of Hong Kong Trading Co. He ventured into businesses of selling watches with leather and imitation leather straps in 1986, and selling optical and sun glasses, and cases made of leather or imitation leather in 1992, in Malaysia. All the goods sold and dealt with by the respondent used the “GIORDANO” trade mark. He had in fact applied to register the “GIORDANO” trade mark for goods in Classes 9, 14 and 18 and had obtained registration of “GIORDANO” trade mark in Class 14.
The respondent filed an application for registration of the trade mark “GIORDANO” at the Registry of Trade Marks, Malaysia in 1992 for optical and sun glasses in Class 9. The appellant filed an opposition against the respondent’s application on the grounds, inter alia, that the “GIORDANO” trade mark applied for by the respondent is identical or similar to the appellant’s “GIORDANO” trade mark.
The Registrar dismissed the said opposition and the appellant filed an appeal to the High Court against the Registrar’s decision in dismissing the said opposition. The learned High Court judge dismissed the appeal and decided in favour of the respondent i.e. rejecting the appellant’s opposition and accepting the respondent’s application for registration of “GIORDANO” trade mark for Class 9. The appellant then appealed against the High Court decision to the Court of Appeal.
Allowing the appeal, the Court of Appeal held the following:
1. In the present case, the appellant had adduced unchallenged documentary evidence that the appellant and/or its licencees have been using the “GIORDANO” trade mark extensively in Hong Kong and in other countries around the world, in respect of goods such as articles of clothing, watches with leather straps, leathers belts, eyewear including sunglasses, bags and wallets. The appellant and/or its licencees first used the said trade mark in Malaysia in relation to goods such as articles of clothings, leather belts, bags, wallets, umbrellas and other fashion accessories sometime in 1990, before the respondent’s alleged date of first use of the trade mark in Malaysia in 1992.
2. The appellant had acquired substantial goodwill and reputation in the “GIORDANO” trade mark in Malaysia and in other countries in respect of those goods. The High Court should have taken into account the appellant’s significant use and registration of the said trade mark, particularly in relation to Class 25 goods in considering whether confusion or deception would arise.
3. Under section 14(1)(a) of the Malaysian Trade Marks Act 1976 (“Act”), registration of a trade mark should be refused if there is likelihood of confusion or deception to the public or customers. It is for the person applying for registration (the applicant) to establish that there is no likelihood of such confusion or deception; or that the result of the use of the mark will not cause a number of persons to wonder whether the products of the respondent and of the appellant came from the same source.
4. It is not enough for the applicant to negate the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of the registration and to the manner in which the latter then uses his work. The applicant must also take into account all legitimate use of which the opponent may reasonably make of his mark within the ambit of his registration.
5. It may be important to see whether the registered mark is of a general or special character and to ascertain the extent of its reputation. Again, it may be important to determine whether the goods in respect of which it is registered constitute a narrow class or wide variety of goods as also will be the question of whether the goods of both the applicant and the opponent will be likely to find market substantially in common areas and among the same classes of people.
6. In the present case, both the appellant’s and respondent’s goods are fashion apparels which are targeted at the same class of customers and market areas. It is highly likely that members of the public will wonder if the appellant’s and respondent’s goods, both bearing the “GIORDANO” trade mark, might originate from the same source. There is sufficient evidence to show that the appellant is the originator or bona fide proprietor of the “GIORDANO” trade mark, particularly when the appellant has commenced use of the said trade mark in Malaysia prior to the date of the respondent’s application.
7. The evidence indicates that the respondent did not independently devise the mark himself. The respondent in truth is not the true proprietor of the “GIORDANO” trade mark. The respondent is trying to obtain the benefit of the worldwide reputation of the appellant. The respondent has failed to proffer any plausible explanation on his choice of mark which is identical to the appellant’s mark.
8. If at the date of application for registration of the trade mark by the respondent, the trade mark, although it has not been used in Malaysia, has become associated in the mind of the public with the appellant’s goods, then the respondent cannot claim or appropriate proprietorship of the said trade mark. There are no artificial limits on geographical areas to which reputation or goodwill can or cannot extend. Thus, the appellant’s reputation or goodwill in the “GIORDANO” trade mark outside Malaysia prior to the respondent’s use of the said mark in 1992 reinforces and supplements the reputation and goodwill of the appellant’s “GIORDANO” mark in Malaysia.
9. Modern technology and communications have improved to such an extent that the public in Malaysia would be aware of foreign marks even though such marks had not been previously used in Malaysia. Confusion and deception have no boarders in these days of information technology age. A small amount of use of the “GIORDANO” trade mark by the appellant is sufficient to prevent the respondent or any other party from claiming proprietorship in the said mark if its use by the respondent is likely to cause confusion to the public. The appellant in the present case has through its licencees used the “GIORDANO” trade mark in Malaysia prior to the filing date of the respondent’s application for registration.
10. In the present case, the learned Registrar, should refuse registration of the application by the respondent as there is a real risk of confusion or deception in that members of the public, as opposed to persons in the trade alone, might erroneously suppose that the respondent’s goods or products originated from or in are some way connected with the appellant.
11. The respondent as an applicant for registration of the “GIORDANO” trade mark bears the onus of proof to satisfy that the said trade mark is registrable and should be registered under the Act.
12. In law it is not a pre-requisite under section 14(1)(a) of the Act that the appellant must have acquired goodwill or reputation in the mark in Malaysia prior to the application for registration. It is sufficient so long as the mark has been in use in Malaysia by the appellant prior to the respondent’s application for registration. Going by the words of section 14 (1)(a) of the Act, the court has to determine whether the use of the “GIORDANO” trade mark by the respondent is likely to deceive or cause confusion to the public. If there are people who are likely to be deceived or confused by the use of the trade mark by the respondent, then it can safely be concluded that such use is likely to deceive or cause confusion to the public. Thus it is not necessary to find whether the appellant had acquired a reputation or goodwill in respect of its use of the trade mark on its products in order to get protection under section 14(1)(a) of the Act.
13. The issue of ‘first user’ of the said trade mark was raised before this court. The learned High Court judge concluded that the respondent was the first person who used the “GIORDANO” mark in Class 9 in Malaysia, hence the appellant has no reputation or goodwill in the “GIORDANO” mark in connection with goods in Class 9. However, the Court was of the view that the learned judge’s finding on this ‘first user’ issue is not supported by sufficient evidence adduced by the parties.
14. The Court is satisfied that there is no evidence to support the respondent’s allegation that he has been selling sunglasses, eye wear or fashion accessories bearing the “GIORDANO” trade mark in or before 1992. As such, based on the available evidence, the court is convinced that the appellant (not the respondent) is the first user and therefore the bona fide proprietor of the “GIORDANO” trade mark.
15. The Court was of the view that even if the respondent’s goods are not exactly the same with the appellant’s goods, nevertheless all their goods are in the same description. Therefore the prohibition under section 19(1)(a) of the Act is applicable and the respondent’s trade mark should not have been registered. The Registrar is duty bound to enforce the prohibition under section 19(1)(a) of the Act strictly, even without any opposition to the registration by the proprietor of the trade mark.
16. In the present case, the Court was of the view that “optical and sunglasses” (in Class 9) and “garment and wearing apparels” (in Class 25) are goods of the same nature in that both can be commercially described as “personal wear” or articles meant to be worn on the body. From a practical and commercial point of view, both categories of goods are considered to be fashion wear.
17. Both categories of goods have common practical purpose of acting as articles of adornment for personal wear. From a commercial stand point both categories of goods are used and sold as articles which portray one’s sense of fashion and preference. Sunglasses (Class 9) can be used as a form of fashion statement. One may choose square or oval-shape sunglasses purely based on preference and taste. Similarly, one may choose to buy clothes or pants (Class 25) of a particular design or colour based on one’s preference and taste.
18. In today’s business environment and practice, both categories of goods are more often than not manufactured, distributed and sold through the same sources or channels. For instance, many famous brands such as Giorgio Armani, Dunhill, Cartier, Nike, Calvin Klien, Dolce and Gabbano, Channel, Christian Dior, Hugo Boss, Versace, Gucci, Coach, Guess, manufacture and distribute both categories of goods. Further, a visit at any shopping complexes would show that such goods are commonly sold at the same places next to each other in departmental stores, fashion boutiques and retail stores.
19. The goods covered by the respondent’s application, i.e. optical and sunglasses, and the appellant’s goods, i.e. articles of clothing, watches with leather straps, leather belts, eyewear including sunglasses, bags, wallets, umbrellas and fashion accessories, are closely related as these are goods commonly sold together or next to each other in departmental stores or fashion boutiques. Further, those goods are likely to be manufactured, distributed and sold through the same sources or channels. It is also likely that the respondent and the appellant share the same market.
As the Personal Data Protection Act 2010 will be in force any time soon, data users are advised to be familiar with, and to start adhering to, its principles.
THE Personal Data Protection Act 2010 that is set to be enforced regulates the collection of personal data by parties for commercial transactions and will change the way we do business.
In brief, personal data is defined as any information that relates directly or indirectly to a data subject, who is identified or identifiable from that information or from that and other information in the possession of a data user.
A data user is basically the party using the personal data of an individual, which is referred to as data subject in the Act.
Personal data may take various forms and may be a name combined with other information, passport/identity card number, telephone number, photograph, fingerprint, or DNA.
A name itself cannot be personal data as there may be many individuals with the same name. However, where the information is combined with other information such as an address, this may be sufficient to identify an individual.
Unfortunately, the Act is only limited to personal data in respect of commercial transactions. Social media networking websites such as Facebook and Twitter, and foreign website owners are not subject to the Act.
This limits the type of personal data that are protected, for example, intimate photographs of individuals. As such data is normally not collected through commercial transactions, their distribution may not contravene the Act.
In Hong Kong, such data is covered. In an incident relating to the online circulation of nude photos of certain celebrities, the Privacy Commissioner for Personal Data decreed that such photographs are caught under the Hong Kong Personal Data (Privacy) Ordinance.
The Act sets out seven principles which a data user must adhere to when dealing with personal data. They are General, Notice and Choice, Disclosure, Security, Retention, Data Integrity and Access.
Failure to comply with any of the seven principles amounts to an offence punishable with a fine not exceeding RM300,000 or imprisonment not exceeding two years or both.
Under these principles, the collection and use of personal data must be consented to by the data subject, and steps must be taken to ensure that they are updated, correct and stored securely.
Further, adequate notice must be given to data subjects that their personal data will be used, and the purpose of the same. Data subjects should also be given the choice to opt out from giving certain personal data. Personal data no longer in use has to be destroyed.
Consent is not defined in the Act but a positive consent — written, oral or electronic — would be sufficient. However, positive consent would not apply in a scenario where a data user sends a form requesting consent and the form states that consent is assumed if no response is given. Failure to respond may not be considered as consent under the Act.
As the Act only applies to personal data in respect of commercial transactions, whether blogs would fall under its purview would depend on the circumstance of the case. If a blog is established purely for a recreational purpose, the Act may not apply due to the limitation of the definition of personal data.
A website generally collects personal data in two situations: when a user visits the website, and when a user provides information to the website operator, e.g. through an online form.
Information collected from a visitor to the website would include the IP address of the visitor and also cookies. Cookies are files used by websites to collect information about a user’s online activity. It can recognise a computer when a user logs on and can allow a website to store and remember usernames and passwords. Such information must be properly kept and not revealed to third parties.
As for the latter situation, website operators should inform the visitor that his or her information will be kept and used by them and their related parties. If website operators wish to use the information for other purposes, such as for marketing, they should obtain consent from the data subject.
Also, if personal data will be transferred outside Malaysia, consent should be obtained, otherwise any reference to the owner should be removed as it is an offence under the Act for a data user to transfer personal data outside Malaysia.
Companies need to be careful when sending out marketing materials. Under the Act, data users may be liable to a fine not exceeding RM200,000 or imprisonment not exceeding two years or both if they refuse to cease sending unsolicited marketing materials.
Following the security principle, personal data collected by website operators must be kept properly to ensure that they are not leaked. Proper security measures such as encryption must be in place.
If personal data is meant to be revealed to the public, notice should be given ahead and consent obtained. For example, a web forum should indicate to its users that information will be revealed to the public if requested. However, if the personal data is requested by a competent authority, consent may not be required.
> WHAT will be done with the personal data;
> WHO is collecting the personal data;
> WHAT personal data is being collected;
> whether the personal data will be transferred out of Malaysia: AND
> whether the personal data will be disclosed to third parties.
As the Act will be in force any time soon, data users are advised to start adhering to its principles. Notice and consent of data subjects are the keys to allow a data user to use personal data. As such, data users should revise their data collecting system to be in line with the seven principles.
Unfortunately, at this stage, the extent and applicability of the Act is unknown and it seems to be wide and far reaching and, to a certain extent, excessive. In this regard, a Personal Data Protection Commissioner should be appointed soon to address these uncertainties.
In many jurisdictions with data protection legislation, the respective Commissioners play a vital role in determining the scope and applicability of the Act and will from time to time issue good practice notes or clarifications to the public.
Published in The Star Newspaper on 21 January 2010
The explosion in Internet-based social networking – fuelled by ease of DIY publishing – is throwing up new challenges, business and legal, to the online community.
THE year 2009 marked an important year for social media networking. It brought change to politics, society and business.
Many politicians set up their own Twitter accounts to connect with the masses.
Many companies – from multinational companies to our local restaurants – set up accounts on social media networking websites to publicise their business, and even to manage consumer complaints.
Malaysian company MOL Global Pte Ltd entered into an agreement with Friendster, Inc to acquire 100% of Friendster.
Also launched was Project Alpha, Malaysia its first online TV show about Malaysian bloggers.
Social media, designed to be disseminated through social interaction, is created using highly accessible and scalable publishing techniques, Internet-based applications that build on the ideological and technological foundations of Web 2.0 and allow the creation and exchange of user-generated content.
Social media can take many different forms, including Internet forums, weblogs, social blogs, wikis, podcasts, pictures, videos, ratings and bookmarking (Source: Wikipedia). Examples of social media networking websites or tools are Facebook, Twitter, LinkedIn and Friendster.
With social media websites rising in popularity, there are now more content generators on the Malaysian online community. Publishing content, once a technical and time consuming task, has been simplified; users merely need to enter text and click a button to publish.
Is Malaysian law able to cope with such changes?
The law governing online activities remains the same. Content generated through social media websites are still governed by laws on defamation, trade mark, copyright, and as well as the Computer Crimes Act 1997, Communications and Multimedia Act 1998, and so on.
Internet users should be vigilant when posting updates, blog entries, tweets, comments and emails.
Even a 140-character limit tweet may get you into trouble. For example, Courtney Love, the widow of Kurt Cobain, was sued by her former clothes designer for defamation, invasion of privacy and inflicting of emotional distress for “an extensive rant” on Twitter about how she was billed for custom clothing.
Social media websites or tools have also been used to attack others. Some users think they can hide incognito behind the screen. However, some were unmasked and had to endure severe punishment.
Making a complaint against malicious users is now fairly easy and can even be done online – at http://aduan.skmm.gov.my, the website of the Malaysian Communications and Multimedia Commission’s (MCMC) complaints bureau.
In the face of severe punishments, malicious users will take all sorts of steps to keep their identity secret. They may use fake names and emails, proxy servers, and also install devices to ensure that their identity cannot be traced. However, they are not safe from the long arm of the law.
The blogger argued that his anonymity protected him against any action being brought against him. His application failed. The judge commented that blogging is a public activity and any right of privacy would likely be outweighed by public interest in revealing his activities.
Anything posted on the Internet will stay on the Internet. It will travel and be read by other people. Nothing is ever private on the Internet.
Although one may argue that it is one’s right of privacy to have one’s personal activities protected, the law does not prevent others from doing so.
Trade marks and trade names have also been highly abused in social media websites. Many users register their username using trade marks or trade names of other companies or individuals.
Companies have had to seek legal advice on the available courses of action in restraining such action or in obtaining such names back. This resulted in hefty legal fees and also time.
In combating such problems, Facebook gave trade mark owners the opportunity to register their rights to the username before the launch of personalised username and URLs. In doing so, Facebook had taken steps to avoid any lawsuits over trade mark.
Twitter on the other hand was not so lucky. A well-known US sports figure, St. Louis Cardinals manager Tony La Russa sued Twitter over an account created in his name.
The false account posted updates that gave the false impression that the comments came from La Russa. The suit said the comments were “derogatory and demeaning” and damaged La Russa’s trade mark rights. The case was eventually settled.
The year 2010 will be another interesting year. Internet-enabled phones and data plans are offered at an affordable rate. Users can now access the Internet through their mobile devices whenever and wherever they are.
It will be interesting to see what are the new tools for online social networking, and the new legal challenges for the online community.
> The writer is a young lawyer. Putik Lada, or pepper buds in Malay, captures the spirit and intention of this column – a platform for young lawyers to articulate their views and aspirations about the law, justice and a civil society. For more information about the young lawyers, please visit www.malaysianbar.org.my/nylc.
Social networking sites such as Facebook and Twitter have allowed people to easily let others know what is on their minds. But users should be careful with what they post because the laws of the land apply to cyberspace as well.
THE Internet is increasingly becoming a virtual soapbox for people to vent their thoughts – and sometimes frustrations and dissatisfaction. The proliferation of blogs, discussion groups, and more recently, social networking, have emboldened many – with the assumption that making comments from behind a screen shields them from any legal repercussion.
However, the long arm of the law extends beyond solid ground, and reaches into the virtual realm as well.
According to H.R. Dipendra, from the Malaysian Bar Council’s human rights committee, there is no distinction between comments posted on the Internet and traditional print media.
“Internet posts are subject to similar laws as that of print media, aside from the Communications and Multimedia Act 1998 (MCMC Act) and Printing Presses and Publications Act 1984.
False sense of security: People on social networking sites and blogs tend to say more than they do in real life, thinking they can do it anonymously.
“You have to be careful what you write, and not just post what comes off the top of your head. If you know it to be inflammatory, then you should be careful,” he says.
“Some think they can post or write anything, but that is not true,” he says.
Examples of legislation (see chart) include the Sedition Act, Internal Security Act, as well as civil and criminal defamation laws – all of which have previously been invoked to bring an individual to court, most famously in the cases involving blogger Raja Petra Kamarudin.
More recently, DAP member Teng Chang Khim was summoned to appear before the party disciplinary committee for a Twitter message that read “OMG! Real culprit freed.”
Dipendra says what has happened to Teng is fascinating, but does not believe anything will come out of it.
“His statement is not defamatory as it does not specifically refer to any particular person. It is a general opinion on a general matter,” he says.
Posting news content on Internet blogs, for example, is in some way similar to what mainstream news journalists do, but Law feels that bloggers are at a distinct disadvantage.
“They do not have proper media training or resources to help them determine what they are doing is legal.”
He opines that as social networking and blogging activity is still relatively new, there is little legal precedent to follow and there are many issues yet to be tested in court.
“The wording of the MCMC Act (Section 233 and 211) is very broad, and there is a lot of uncertainty. Because it is not yet tested, you can be snagged if its wording can be defined to suit your case,” he says.
Dipendra shares a similar opinion, and believes that when the law was drafted, it was intentionally broadly-worded.
“It can be of any mode, medium or application – SMS, iPad or Twitter – so long as you type out a comment and post it, you will fall within the ambit of the two sections.
“The law is broad enough to include everyone, even an innocent disseminator,” he says.
However, he does not think it is a bad law.
“It may be uncertain and ambiguous, but not bad law. It gives enforcement agencies a lot of leeway so they would have the unfettered discretion for its use. The only question is if this discretion is used fairly,” says Dipendra.
Anonymity not guaranteed
Foong Cheng Leong, from Lee Hishammuddin Allen & Gledhill’s intellectual property department, says that people tend to say more than they do in real life, thinking they can do it anonymously.
“They think they can get away with it, but they may still get caught,” he cautions.
He gives the example of the Stemlife Bhd v Bristol-Myers Squibb (M) Sdn Bhd case. The co-defendant, Arachnid Sdn Bhd, who provided website maintenance services, was ordered to reveal the names of the persons who posted disparaging remarks against the plaintiff.
However, in a separate defamation suit involving the same parties, the judge struck out the suit against Arachnid, as it had never played an active role in respect of the content of the comments posted on the website.
There was another case where the defamatory contents of a website were deleted, but the lawyers were able to find the offending page using archived pages on waybackmachine.com.
“Simply deleting the page is not a defence, as the damage may have already been done. In a way, it is like destroying the evidence,” says Foong.
However, Law says web service providers need immunity from content posted on their website, something that United States law provides for in Section 230 of its Communications Decency Act.
Foong informs that a similar “safe harbour” provision is being drawn up in Malaysia, and the same kind of immunity may later be found here.
Dipendra also says that what is posted on cyberspace stays there forever.
“Something that you said 10 years ago on a website may resurface, and you may have no recollection of even writing it.”
While existing Malaysian law appears to cover cases of wayward online behaviour at the moment, there are some who feel that there is a need for the law to be reformed.
Sonya Liew of the Bar Council explains that the world is currently undergoing both a revolution and evolution at the moment.
“Just like how there was the industrial revolution before, now we are having an information revolution,” she says.
She explains that during the agrarian age, laws were formed to protect the land, and during the industrial age, to protect intellectual property with laws regarding copyright and trademarks, for example.
“Laws regarding sedition and secrets were passed many years ago, before the information revolution. But now, society has evolved beyond this,” she says, adding that the people’s expectations regarding the right to information have evolved – together with technological advances.
“The whole world now has information at its fingertips, and if you withhold information, people start to question the lack of access to it.
“People expect information, and the question is if existing laws are sufficient to provide for the needs of a modern society,” says Liew.
She notes that signs of this can be seen in the increasing call for freedom of expression and the right to information.
“Later, we will hear of even more rights that we have not even heard of before, and it may even eat into the right to privacy,” she says, explaining that this may arise as people may want to know more about government officers’ or politicians’ lifestyle – in order to reduce graft.
“Laws exist to serve society, and society does not serve the law. We have this need now, and the question is if the Government is doing enough to provide for this need,” says Liew.
Any significant legal reform on the use of the Internet is not yet on the horizon, and until then, social networkers and bloggers should be vigilant on their online behaviour.
“People should behave the same way online as they would in real life. If they do not shout and curse in public, then their behaviour should remain the same online. They should not wear a different hat in cyberspace,” says Law.
Foong succinctly describes the appropriate online behaviour with a biblical quotation – which is still as relevant today as it was 2,000 years after it was uttered.
“Do unto others as you would have them do unto you,” quotes Foong.
BLOGGING has become the new way of life of Malaysians. It is without doubt a new form of media where a large number of the public refer to these days in addition to the mainstream media.
With this comes responsibility. It is settled that bloggers are liable for what they say and for what other people post on their blogs. The following laws are applicable to bloggers:
> Civil and criminal defamation;
> Communication and Multimedia Act 1998; and,
> Copyright infringement.
The above list is not exhaustive and it is hoped that the following will serve as a short guide to minimise the risks of blogging.
One of the most common actions brought against website owners (which include a blogger) is a defamation suit. The definition of defamation is not a static concept.
It has been defined that a statement may be defamatory when it tends “to lower a person in the estimation of right-thinking members of society generally” or “to cut him off from society” or “to expose him to hatred, contempt or ridicule”.
Defamatory statements may not only arise from written postings but also from videos (embedded in the blog), pictures/drawings/graphics, sound and even hyperlinks. Recently, a Malaysian High Court held that a website owner is liable for a hyperlink posted by a commentor that links to a website containing a defamatory statement.
The consequence of being liable for defamation is grave. It can drain you financially and make you a bankrupt. It can even put you in jail if it falls under criminal defamation. Even a food review blogger can be subject to a defamation suit. Thus to avoid such problems, the following steps are recommended:
The most obvious, and the most important, step to take from being slapped with defamation action is to avoid defamatory statements.
Always ensure that what you write is true. If you are unable to verify the truth of a statement on your blog, junk it. Avoid criticising other people on your blog, as sometimes the criticism can be taken as defamatory.
Another type of entry you should avoid is rumour-based entries. It is advisable not to repeat a rumour made by others, unless you can prove it.
As mentioned earlier, what got many website owners into trouble is what their readers posted. And website owners are liable for comments made by other parties published on their website.
In this regard, website owners can be subject to an application to the court compelling them to reveal the identity of the commentor. It should not be much of a problem to website owners to reveal the identity, but sometimes the order goes a bit further than that.
For example, there were cases where website owners were compelled to reveal Malaysian identity card numbers of their commentors, and also slapped with costs payable to the complainant.
Thus, it is useful to set up a system to filter comments and require commentors to register themselves before they can submit comments. Alternatively, the website owner may have in place a stringent approval system where comments will only be posted upon approval.
Further, you may also reveal the details of the commentors such as their Internet Protocol (IP) address, time of posting and e-mail address on the website upon the posting of the comment.
By revealing such details, the commentors can be traced through their Internet service provider, etc. This may restrain commentors from posting malicious comments.
It would also be useful to place a warning stating that commentors are liable for what they say or that you will reveal their details to the authorities upon request. The warning can be fortified with a disclaimer, which could be useful to discourage defamatory statements.
The disclaimer can go along these lines: “The comments contained on this blog reflect the views of the author and do not in any way represent that of the owner of this blog.” This serves as notice that the views of the commentors are not shared by the blogger.
Many consider websites such as WayBack Machine and Google Cache as God‘s gifts to computer geeks. These websites keep a record of your website and are quite useful when you lose the contents of your website. You can retrieve some of your lost documents from there.
But this also means that anyone can retrieve anything deleted from your website, including defamatory statements that had been removed. But not to fear, for there is also a special option where you can stop these websites from keeping a record of your website.
If all the above fail to avoid a letter of demand or you just wish to have a carefree blog, then try blogging anonymously. This would include setting up a blog using a pseudonym with no trace of the person’s identity on the blog. Some do it for their own protection, and some do it so that they cannot be found.
Although distasteful, this allows bloggers to avoid being discovered and to post entries without any restriction. But if caught, they will suffer grave repercussion. In a recent Canadian court decision, anonymous electronic postings of defamatory material were not only actionable but would also warrant a high damages award.
With the upcoming High Speed Broadband (HSBB) rollout, we can expect more content-rich blogs. With this, the dissemination of information may expand to methods which are unknown to us now. There will therefore be new laws and challenges ahead.
Putik Lada, or pepper buds in Malay, captures the spirit and intention of this column – a platform for young lawyers to articulate their views and aspirations about the law, justice and a civil society. For more information about the young lawyers, please visit www.malaysianbar.org.my/nylc.
DANONE BISCUITS MANUFACTURING (M) SDN BHD v. HWA TAI INDUSTRIES BHD
The Plaintiff carries out the manufacture, distribution and sale of, among others chocolate chip cookies bearing the trade mark ChipsMore. The ChipsMore cookies have been sold in Malaysia since 1990 and are also exported to other countries in the region.
Sometime in 2001, the Plaintiff discovered that the chocolate chip cookies manufactured by the Defendant which were being sold in the market bearing the trade mark “Chipsplus” and a get-up and packaging which, according to the Plaintiff, were confusingly similar with the Plaintiff’s ChipsMore trade mark, get-up and packaging.
The Plaintiff through its solicitors, requested the Defendant cease and desist from its unlawful act. However, the Defendant through its solicitors denied the same and continued with the said unlawful acts. The Plaintiff then brought an action against the Defendant claiming trade mark infringement and passing off.
The High Court held the following:
(1) There can be no doubt that there is the indistinguishable phonetic representation of the prefix ‘chips’. For another, while “Plus” and “More” are two different words, there is a sufficient resemblance in idea. In deciding similarity between two words, the words have to be considered as a whole. When comparing the two words to see whether one would be confused with and mistaken for the other, the words should be compared as a whole and not merely comparing syllable, and that regard should be paid to the fact that the word is to be used upon goods similar to those upon which the other party is being used. The true test is whether the totality of the trademark is such that it is likely to cause mistake, deception, or confusion.
(2) In comparing both the marks, the Court observed and found as follows:
(i) The identical phonetic representation of the prefix “Chips”;
(ii) The similar import of the suffixes “Plus” and “More”;
(iii) The omission of the space between the two individual words “Chips” and “Plus”, corresponding to omission of the space between the two individual words “Chips” and “More”;
(iv) The larger letter “C” of the prefix and “P” of the suffix compared to the rest of the Chipsplus trade mark, corresponding to the larger letter “C of the prefix and “M” of the suffix compared to the rest of the ChipsMore trade mark; and
(v) The similar stylized double perimeter around the alphabets of both trade marks.
(3) Having regard to the totality of the circumstances of the case and comparing the two marks with their features, the mark ‘Chipsplus’ used by the Defendant so nearly resembled the Plaintiffs trade mark ‘ChipsMore’ as to be likely to cause confusion. The similarity between the two marks was great that there was a high likelihood of confusion ensuing if any purchase of chocolate chip cookies was made by reference to the marks. As the Plaintiff had not authorized or licensed the Defendant to use that registered trade mark, the use of the Chipsplus trademark by the Defendant for identical goods, namely, chocolate chip cookies amounted to infringement of the Plaintiff’s registered “ChipsMore” trade mark.
(4) The Plaintiff here had acquired substantial goodwill and reputation in its business and trade in chocolate chip cookies bearing the ChipsMore trade mark, get-up and packaging. The Plaintiff was entitled to the exclusive use of the ChipsMore trade mark, get-up and packaging in connection with chocolate chip cookies to the exclusion of others including the Defendant. Based on the evidence adduced, the Plaintiff had goodwill and reputation in its ChipsMore trade mark and the packaging of the ChipsMore chocolate chip cookies by having the ChipsMore trademark in a wavelike manner, with the colours blue and yellow on the packaging.
(5) The Court examined the Plaintiff’s Chipsmore trade mark, get-up and packaging and the Defendant’s Chipsplus trade mark, get-up and packaging. In comparison, the Court found the following:
Observation by the court
Plastic Packaging of rectangular shape containing the chocolate cookie.
Plastic Packaging of rectangular shape containing the chocolate cookie.
The plastic packaging is similar
The ChipsMore trade mark
The Chipsplus trade mark
1. Chipsplus is in capital letters
2. The Prefix is same
3. The Suffix is different; similarity in idea.
4. The letter C and P of Chipsplus are designed similar to ChipsMore’s C and M.
The placing of the ChipsMore trade mark in a wavelike manner
The placing of the Chipsplus is curvy
There is similarity in the way the trade mark is being designed, be it wavelike or curvy.
The house mark “Danone” printed on the upper left hand side of the front of the packaging as well as its sides
The house mark “Luxury” is printed on upper left of the front packaging
The placing of both house marks at the upper left are the same.
The colour yellow is applied to the whole of the packaging including the front and back.
The yellow colour packaging is used
The yellow colour used by both marks are very similar
The chocolate chips scattered across the packaging concentrated mainly on the right of the packaging and tapering off towards the left of the packaging
3 pieces of chocolate chips cookies for front panel and 2 pieces of cookies for side panel are depicted on the packaging to give effect to the contents of the packaging.
1. The placing of a picture of the brand’s chocolate cookies in both trade marks is similar.
2. Both trade marks are placed on the right side of the packaging.
A blue swathe spanning across the packaging from left to right.
There is blue swathe in the packaging.
The blue swathe bears similarity in both marks.
(6) The Defendant’s Chipsplus trade mark, get-up and packaging were confusingly and deceptively similar to the Plaintiff’s ChipsMore trade mark, get-up and packaging. The striking similarities rendered the trade and public to be confused as they are identical goods and the likelihood of confusion between the two products was extremely high. The ChipsMore trade mark, get-up and packaging had become distinctive of the Plaintiff’s product and the use by the Defendant of similar trade mark, get-up and packaging was likely to deceive or cause deception or confusion to a potential buyer of chocolate chip cookies. As the chocolate chip cookies of the Plaintiff and Defendant are in direct competition with one another, the court would infer likelihood of damage to the Plaintiff’s goodwill through the loss of sale. Thus the Defendant has passed off its products as the products of the Plaintiff.
Foong Cheng Leong is an Advocate and Solicitor of the High Court of Malaya and also a registered Malaysian trade mark, industrial designs and patent agent.
He had served the Malaysian Bar and Kuala Lumpur Bar in the following capacities:-
1. Kuala Lumpur Bar Committee (2013 to 2020)
2. Chairperson of the Kuala Lumpur Information Technology (2012 to 2020)
3. Co-Chairperson of the Bar Council Ad-Hoc Committee on Personal Data Protection (2013 to 2016)
4. Co-Chairperson of the Bar Council Intellectual Property Committee (2019 to present)
5. Co-Chairperson of the Bar Council Information Technology and Cyberlaws Committee (2015 to 2017)
He is also the author of the following books-
1. Compendium of Malaysian Intellectual Property Cases consisting of the following two volumes
a. Vol 1- Trade Marks