First published on 10 December 2009
CIVIL SUIT NO K22-22 OF 2009-II (HC)
Suria KLCC Sdn. Bhd. (“Suria KLCC”) has been the registered proprietor of the trade marks “Suria KLCC”, “Suria KLCC & Swirl device” and the “Swirl device” in Class 35 and 36 under the Trade Marks Act 1976. Suria KLCC is engaged, among others, in the business of leasing and managing a shopping centre as well as providing business and property management services. When providing those services or in offering those services, it is presented to the public by Suria KLCC using the trade marks “Suria KLCC” and/or “Suria KLCC & Swirl device” and/or the “Swirl device” (‘Suria KLCC’s trade marks’).
A shopping complex owned and managed by Suria KLCC is strategically situated in the vicinity of the Petronas Twin Towers, a well known landmark of Malaysia. Suria KLCC says its shopping complex bearing its trade marks is one of the premier shopping complexes in Malaysia.
On or around the 7.5.2008, Suria KLCC became aware that Makamewah Sdn. Bhd. (“Makamewah”) had started development and construction of a commercial complex which was being advertised, promoted and operated or managed or leased by Makamewah using the name of “Suria Sabah” and/or “Suria Sabah & Swirl device” and/or a “Swirl device” (‘Makamewah’s said trade marks’).
Suria KLCC asserts that the actions of Makamewah in offering the said sales, lease and services to the public constitutes an infringement of Suria KLCC’s said registered trade marks and an act of passing off of Makamewah’s goods and services as those of Suria KLCC.
On 11.2.2009, Suria KLCC commenced an action against Makamewah and applied for an application for interlocutory injunction to restrain Makamewah from, among others, infringing its trade marks and pass of its trade as the trade of Suria KLCC by using the name “Suria” and/or the “Swirl device” and/or “Suria & Swirl device” or any part or parts thereof or any other business name or style which is identical with or so nearly resembling the same.
Makamewah admits that it has since 22.06.2006 started construction works on a shopping complex in Kota Kinabalu, Sabah which is being advertised, promoted and operated / managed / leased by Makamewah using the name “Suria Sabah” together with the logo of a stylized sun with its eight (8) rays arranged in a swirl which sits above the letter ‘i’ in the word “Suria”. But Makamewah denies that it is in any way infringing Suria KLCC’s trade marks or passing off its goods and services as that of Suria KLCC for the following reasons.
In its arguments, Makamewah claimed, among others, the following:
(1) Suria KLCC has no exclusive use of the letters “KLCC” and also the word “Suria”;
(2) the exclusivity of Suria KLCC’s trade mark “Suria KLCC” is only applicable when those words are used together;
(3) the word “Suria” is not a word invented by either Suria KLCC or Makamewah and that Suria KLCC should not be allowed to claim exclusivity over it as it is a generic and commonly used word derived from the Hindu sun god “Surya”;
(4) Makamewah chose to use the word “Suria” in conjunction with the word “Sabah” for its shopping complex in Kota Kinabalu, Sabah as “Suria” is the Bahasa Malaysia translation for the sun which rises first in Sabah as the eastern-most state of Malaysia; and
(5) Makamewah chose eight (8) rays arranged in a swirl in its stylized logo of the sun as eight (8) is symbolic in the Chinese custom and belief that the number eight (8) symbolizes wealth and prosperity.
The High Court dismissed Suria KLCC’s application for interlocutory injunction with costs and held the following:
(1) There is serious issues to be tried. Suria KLCC has produced sufficient evidence at this stage of the case to show that it has since 1998 actively advertised and promoted its said trade mark and has built up extensive goodwill and reputation in Suria KLCC’s business in respect of its said trade marks such that when used in relation to the provision of leasing and management services of a shopping centre and provision of business and property management services, Suria KLCC can claim that its said trade marks has come to be associated by the public with Suria KLCC and with no other party and that Makamewah by using the word “Suria” and / or the “Swirl device” and / or “Suria and Swirl device” in association with the shopping complex it is building in Kota Kinabalu, Sabah is liable to Suria KLCC for trade mark infringement and passing off. Whether Suria KLCC will succeed in its claim is a matter that must be decided at trial.
(2) Makamewah’s challenge to Suria KLCC’s right to the exclusive use of the mark “Suria” and whether the word “Suria” is a generic and commonly used word which derives from the Hindu sun god “Surya”, are matters which give rise to serious issues of law and fact which need to be investigated at a trial and are not matters which can be resolved at this stage of the case on a mere reading of disputed facts in the affidavits of the parties. Likewise, Makamewah’s contention that its trade mark is not identical to that of Suria KLCC’s trade marks nor do they resemble Suria KLCC’s trade mark so as to deceive or cause confusion in the course of trade, are matters which give rise to factual issues which it is not suitable to decide at this stage of the case on affidavit evidence alone. They should only be decided at the trial.
(3) Makamewah’s contention that no damage has been caused to Suria KLCC’s business and reputation or goodwill as Makamewah’s shopping complex is still under construction and Suria KLCC has failed to produce any evidence of the damage it has allegedly suffered should be decided in trial. At this stage of the case, all Suria KLCC has to show is that there is a likelihood of confusion on the part of the public and that there is a likelihood of damage to Suria KLCC’s business, goodwill and reputation and the Court is satisfied that Suria KLCC has succeeded in showing that there is a likelihood of such confusion and damage.
(4) The Court finds that that damages would not be an adequate remedy to Suria KLCC if it were to eventually succeed in its claim at the trial of this action. The same may be said of Makamewah too. The Court also finds that damages would be an adequate remedy to Makamewah if it were to eventually succeed at the trial.
(5) The balance of justice does not lie in favour of the grant of an injunction in this case. The relief sought by Suria KLCC is equitable in nature and it is well settled law that delay defeats equity.
(6) There has been considerable delay on the part of Suria KLCC in coming to the court for relief. The evidence shows that Suria KLCC became aware of Makamewah’s alleged infringement of its trade marks on or around 7.5.2008 and had written twice to Makamewah since then requesting the latter to cease infringing its trade marks but Makamewah refused to do so. Suria KLCC delayed for some nine (9) months before making this application. Suria KLCC has explained that the delay was caused by it having to seek legal advice from solicitors in Kuala Lumpur and Kota Kinabalu and to co-ordinate instructions between two law firms; that it needed additional time to do proper investigations to compile necessary information and documents; that the affidavits which needed to be filed had to be sent from Kota Kinabalu to Kuala Lumpur and back. The Court finds the explanation for the delay reasonable or acceptable.
(7) Given the fact that Suria KLCC was already aware of Makamewah’s alleged infringement of its trade marks in May 2008, the Court did not accept Suria KLCC’s explanation that it takes nine (9) months to obtain legal advice and to send documents between Kuala Lumpur and Kota Kinabalu. With regard to the alleged investigations which Suria KLCC needed nine (9) months to undertake, Suria KLCC has not attempted to assist the court by saying what it was that needed investigating or the nature of such investigations and why it took nine (9) months to do so.
(8) In the circumstances, it would be inequitable for Suria KLCC to expect the court to preserve the status quo ante by the grant of an injunction when Suria KLCC itself did not act with promptitude and in good time to preserve that status quo which it wants the court to preserve.