Archives for March 2013
In a very interesting piece published in The Star newspaper recently, the chairman of the Malaysian Franchise Association (MFA), Abdul Malik Abdullah, who is also the owner of D’Tandoor Food Industries Sdn Bhd, expressed that “the relationship between a franchisor and franchisee is just like a marriage, at the early stage it could all be rosy and beautiful.” With that analogy, he probably meant that it takes perseverance, love and dedication to see the relationship head towards success. That compromise is needed in a marriage is an understatement and likewise, compromise is also required between the franchisor and franchisee to make the franchised business work.
The franchise industry has been growing in Malaysia, with a lot of new foreign and local brands being introduced into the market. Statistics from MFA show that the number of franchisors has risen in a steady manner since the year 2000.
The Singapore Court of Appeal (CA) was recently asked to decide on whether a descriptive mark could be protected against passing off if the descriptive elements of the mark were used by another party. The case was an appeal by the Singapore Professional Golfers’ Association (SPGA) against the decision of the High Court which found in favour of Singapore Senior PGA LLP (SSPGA).
In a previous issue of our KASS IP exposé, we looked at how, in January 2011, SPGA brought a passing off suit against the SSPGA in respect of the latter’s use of a similar name and set of initials (i.e. SPGA) in the High Court. In his judgment the High Court Judge held that firstly, SPGA had failed to establish any misrepresentation by SSPGA. Secondly, because SPGA’s trademark consisted of ordinary descriptive words/initials which had not been shown to have acquired distinctiveness, the addition of the words “Senior” and “LLP” in SSPGA’s trademark is sufficient to distinguish the business of both parties from each other. Thirdly, the relevant consumers (i.e. professional/amateur golfers), who are knowledgeable individuals, would not be confused into thinking that SPGA is associated with SSPGA. Lastly, SPGA’s allegation of bad faith on the part of SSPGA was unfounded. Consequently, the action was dismissed by the High Court.