Case: Pizzaroma Sdn Bhd & Lau Soak Teng vs. Roman Colosseum Sdn Bhd [2024] CLJU 830
Key Details of the Case:
Pizzaroma Sdn Bhd and Lau Soak Teng brought a case against Roman Colosseum Sdn Bhd for passing off and unlawful interference with trade related to the use of their trademark and IP rights in pizza restaurants.
Despite the first plaintiff's application to register the trademark being refused, they pursued an interim injunction to prevent the defendant from using the offending marks. However, the court dismissed the application primarily because Pizzaroma Sdn Bhd was wound up, and the second plaintiff, Lau Soak Teng, had unilaterally assigned the trademark to herself.
Legal Arguments and Rulings:
There are several key legal arguments and rulings emerged that ultimately led to the dismissal of the plaintiffs' application for an interim injunction.
(1) Validity of Trademark Assignment:
The second plaintiff, Lau Soak Teng, provided an Assignment of Trademark Agreement dated 6 July 2023, in which Pizzaroma Sdn Bhd purportedly assigned the trademark to her.
However, the court noted that Lau Soak Teng had signed the agreement both as the assignee and on behalf of the assignor (Pizzaroma Sdn Bhd), raising questions about the validity and genuineness of the assignment.
The timing of the assignment, occurring shortly before Pizzaroma Sdn Bhd was wound up, further complicated its legitimacy, suggesting potential undue preference.
(2) Locus Standi and Good Faith:
Following the winding-up of Pizzaroma Sdn Bhd, Lau Soak Teng attempted to proceed with the injunction application in her own name.
The court questioned her locus standi (legal standing) to continue the action unilaterally, especially since the Official Receiver, appointed as liquidator, had not been informed or involved.
The second plaintiff's lack of transparency and candour, failing to disclose critical information about the winding-up and the trademark assignment, was highlighted as a significant issue undermining her credibility and good faith.
(3) Evidence and Use of Trademark
The court emphasized the lack of evidence demonstrating the continued use of the trademark by Pizzaroma Sdn Bhd after its winding-up.
Additionally, Lau Soak Teng had authorized a new company, Rich Taste Arch Sdn Bhd (RTA), to use the "Pizza Roma" trademark effective 1 August 2023. This further muddied the waters regarding who actually held and used the trademark.
Judgment and Costs:
Given the issues surrounding the trademark assignment, the winding-up of Pizzaroma Sdn Bhd, and the lack of clear evidence of trademark use by the plaintiffs, the court dismissed the interim injunction application.
The court ordered the second plaintiff, Lau Soak Teng, to pay costs of RM15,000.00 to the defendant, Roman Colosseum Sdn Bhd, noting her lack of candour and good faith as critical factors in this decision.
Practical Implications on IP Rights:
This ruling highlights the critical need for clear and valid trademark assignments and the importance of maintaining transparency and good faith in legal proceedings.
Businesses should ensure all transactions and assignments related to intellectual property are well-documented and legally sound to withstand scrutiny in court. The decision also underscores the significance of providing complete and honest disclosures to the court.
My Comments:
This case illustrates the perils of insufficient legal documentation and the importance of maintaining proper records and transparency. The court's scrutiny of the trademark assignment process and the subsequent winding-up of the first plaintiff emphasizes the need for thorough legal preparation.
This serves as a valuable lesson for businesses to meticulously document IP transactions and ensure all legal requirements are met to avoid potential pitfalls in litigation.
If you have any questions regarding the article, please feel free to contact our managing partner, Eugene Yeong.
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