If you find that your registered trademark is identical or similar to another mark, or vice versa, you may want to read this article. Even if you don’t find yourself in this situation, you may still find the following story interesting.
A trademark is a sign that indicates the origin of particular goods and services, which helps consumers choose one brand over another. Thus in a situation where a current mark is identical or confusingly similar to a prior mark, the proprietor of former might find themselves in a legal dispute.
Recently, a case involving a dispute between the owners of two similar marks was heard in the High Court. FBK Automotive Components (Malaysia) Sdn Bhd (“FBKAC”) was originally the owner of the and marks, whereby the Applicant, DJ Auto Components Manufacturing Sdn Bhd (“DJ”), had obtained the rights to the marks by way of assignment from FBKAC.
FBKAC had used the said marks in the course of their trade for many years before assigning it to DJ. The issue arose when the Respondent, FBK Systems Sdn Bhd (“FBK Systems”, unrelated to FBKAC), registered and started to use marks which were similar to DJ’s marks.
In accordance to the Trade Description Act 1976, since DJ is the registered proprietor of the mark, and has alleged that a third party is infringing its rights in the said mark; the burden is on FBK Systems to convince the High Court that its mark should not be declared as a false trade description.
FBK Systems had contended that there was no likelihood of confusion as it has been in the market since 1996 and its packaging differs from DJ’s. However, the Judicial Commissioner opined that this assertion lacks credibility in the absence of supporting evidence.
The Judicial Commissioner viewed that the use of the letters “FBK” on FBK Systems’ mark was a clear use of an identical or similar mark, thus constituting a trademark infringement.
In addition, it was held that the use of the “” mark on FBK Systems’ goods and packaging was not sufficient to avoid confusion due to the prominence of the letters “FBK”.
Moreover, DJ had raised an interesting question as to why FBK Systems did not use the device marks by themselves on the packaging and goods instead of prominently featuring the letters “FBK” on the packaging.
The Judicial Commissioner stated that despite the fact that the words “Made by FBK Systems Sdn Bhd” appear on the packaging, there was a strong likelihood of confusion among the general public. This point was further emphasized as it was observed that the words “Made by” and “Systems Sdn Bhd” were intentionally printed in smaller fonts, thus rendering them less significant.
In short, the use of “FBK” with such prominence was deemed to be a calculated move to cause deception and confusion, and ride upon the reputation and goodwill in DJ’s mark.
This decision does not come as a surprise to the author as it was obvious that FBK Systems was riding on the goodwill and reputation of the FBK mark. Why else would the letters FBK be made to be significantly larger than the words “Made by” and “Systems Sdn Bhd”? It was just that their creative infringement was put to a stop.