Case: Sika AG & Ors vs. Nippon Paint (Malaysia) Sdn Bhd [2024] CLJ 3
Key Details of the IP Case:
Sika AG and its subsidiaries brought a lawsuit against Nippon Paint (Malaysia) Sdn Bhd, claiming trademark infringement, passing off, copyright infringement, and unlawful interference with trade. The plaintiffs alleged that the defendant's use of the "LATEX 118" mark on their products infringed on the plaintiffs' "SIKALATEX" trademark. The defendant counterclaimed, seeking to invalidate the "SIKALATEX" mark and requesting various declarations and damages.
Trademark in Dispute:
"LATEX118"
Legal Arguments and Rulings:
1. Trademark Infringement:
The IP court found that the defendant's "LATEX 118" mark was neither identical nor similar to the plaintiffs' "SIKALATEX" mark. The differences in appearance, font, color scheme, and overall get-up were significant enough to avoid confusion. Additionally, the word "Latex" was considered generic and could not be monopolised by the plaintiffs.
2. Passing Off:
The IP court ruled that the plaintiffs failed to establish goodwill and reputation specifically for their "SIKALATEX 118" product in the yellow jerrycan with the red cap. The plaintiffs' evidence was insufficient to prove that the public associated this particular get-up exclusively with their products. Therefore, the claim for passing off was dismissed.
3. Copyright Infringement:
The IP court found that the plaintiffs' product data sheet (PDS) was a literary work eligible for copyright protection. The defendant's technical data sheet (TDS) was substantially similar to the plaintiffs' PDS, and the defendant failed to prove independent creation. Thus, the court ruled in favour of the plaintiffs on the copyright infringement claim and granted an injunction against the defendant.
4. Unlawful Interference with Trade:
The plaintiffs' claims for unlawful interference with trade were dismissed as they failed to establish the elements required, including proving trademark infringement, passing off, and copyright infringement beyond the product data sheet of the plaintiff.
5. Defendant's Counterclaim:
The IP court dismissed the defendant's counterclaim to invalidate the "SIKALATEX" mark, ruling that the mark was distinctive and not common to the trade. The defendant's suggestion for a middle ground allowing coexistence of the products was also declined.
Practical Implications:
This case underscores the complexities involved in trademark and copyright disputes. It highlights the importance of distinctiveness in trademarks and the need for concrete evidence of goodwill and reputation in passing off claims. Additionally, businesses must ensure robust documentation and clear distinctions in product design to protect their intellectual property rights.
My Comments:
This case serves as a critical reminder of the nuances in intellectual property law, particularly the significance of distinctive branding and comprehensive legal strategies. The court's detailed examination of trademark distinctiveness and the requirement for substantial evidence in passing off claims provide valuable insights for businesses. Maintaining clear and documented records of design development and ensuring distinct branding can prevent legal disputes and safeguard business interests.
If you have any questions regarding the article, please feel free to contact our managing partner, Eugene Yeong.
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