Published on 30 July 2010
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:
| No | Plaintiff’s ChipsMore | Defendant’s Chipsplus | Observation by the court |
| 1. | Plastic Packaging of rectangular shape containing the chocolate cookie. | Plastic Packaging of rectangular shape containing the chocolate cookie. | The plastic packaging is similar |
| 2. | 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. |
| 3. | 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. |
| 4. | 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. |
| 5. | 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 |
| 6. | 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. |
| 7. | 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.
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