Case: Barkat Food Heritage Sdn Bhd v Malakat Food Sdn Bhd & Ors [2023] MLJU 664
Key Details of the IP Case:
Barkat Food Heritage Sdn Bhd, operating a restaurant known for its "Roti John," filed a lawsuit against Malakat Food Sdn Bhd for trademark infringement and passing off. The plaintiff alleged that the use of the word "Malakat" was too similar to their "Malaqat" trademark. However, the court found key differences in spelling, pronunciation, and visual presentation, leading to a ruling in favour of the defendants.
Additionally, the plaintiff failed to prove sufficient goodwill in the "Malaqat" name, as their business was still closely associated with the original "Barkat Roti John" restaurant.
Trademark in Dispute:
"MALAKAT"
Legal Arguments and Rulings:
1. Trademark Infringement:
The IP court found no infringement, emphasising that the trademarks were distinctly different. As stated by the judge in Paragraph 18 of the judgement, "The Plaintiff’s Marks and the Defendants' signs are neither identical nor similar.
2. Passing Off:
The plaintiff’s claim for passing off was dismissed as they failed to establish goodwill in the "Malaqat" name. The court remarked that the plaintiff was still leveraging the goodwill of the original "Barkat" brand. An excerpt by the Judge in Paragraph 40 of the ruling is as follows:"The Plaintiff has not established any sufficient goodwill in the name 'Malaqat' to fulfill the first prerequisite to establishing passing off."
3. Defendant's Counterclaim:
The defendants’ attempt to invalidate the plaintiff's trademarks was also dismissed due to a lack of evidence proving they were aggrieved by the plaintiff’s marks.
Practical Implications:
This case highlights the need for distinctiveness in trademarks and the difficulties in proving goodwill in passing off claims. Businesses must ensure that their trademarks are visually and phonetically unique to avoid costly legal disputes. Furthermore, maintaining a clear distinction between new and legacy brand identities is essential when expanding a business or rebranding.
My Comments:
The court's detailed analysis offers key lessons. As seen in this case, distinct branding in both appearance and sound is crucial to protect a business from legal challenges. Furthermore, companies attempting to rebrand should maintain a strong and independent identity to avoid riding on the coattails of their previous business reputation.
If you have any questions regarding the article, please feel free to contact our managing partner, Eugene Yeong.
Commentaires