St. John Ambulance has been providing humanitarian and charitable services in Malaysia since 1908. These everyday heroes render emergency assistance and aid to the sick and wounded, provide first aid standby and training, a hemodialysis service, and countless other community services. But who is looking after St. John?
St. John Ambulance Malaysia (SJAM) registered its insignia in 2010 in Malaysia as a trademark to be applied to articles of clothing, footwear and headgear. They engaged a third party as its authorised distributor to market and retail goods including uniform and clothing that displayed the SJAM emblem.
The High Court recently held that PJ Uniform Sdn Bhd’s use of the insignia infringed SJAM’s trademark. Why? Because the emblem used was considered as being identical to the registered mark, PJ Uniform had not been granted permission to use the mark and intended to use the mark in the course of trade, and they used the mark in a way that was likely to be seen as officially sanctioned.
PJ Uniform claimed that as SJAM was a charitable organisation, it should not be afforded protection under the Trademark Act. Trademarks, they argued, should be reserved for those who trade. The Court swiftly denied this line of argument and determined that charitable and humanitarian works were of a business nature and thus could seek trademark protection.
The Court’s reasoning was that a trademark is important protection for charitable organisations, as it enables the public to place their trust in and depend upon the mark as a signature of quality and reliability. Without such protection the trademarks of charitable and not-for-profit organisations such as the WWF would carry little meaning, as the mark could be reproduced by anyone under any circumstance.
The Court also found PJ Uniform liable of the tort of passing off, which protects the goodwill and reputation attached to the business of a claimant. Goodwill is generated from an organisation’s trading activities which build recognition among consumers. To satisfy the requirements of the tort, SJAM had to prove a number of elements.
Firstly, it was conceded that there was a strong attribution of goodwill to SJAM as a provider of charitable and humanitarian services. However, PJ Uniform argued that goodwill must be attached to a “business” and that SJAM was not engaged in commercial business. Again, the Court construed “business” liberally and held that the term applies to charitable organisations.
Second, because the Court had already found instances of confusion, the test for misrepresentation was easily made out. This is because consumers were likely to believe that PJ Uniform was somehow associated with SJAM or the uniforms were produced under license from SJAM.
Finally, the Court held that SJAM suffered damages from the passing off, as the authorised retailer suffered a loss of earnings in relation to shirt sales. In addition, the inferior quality of the PJ Uniform T-shirts coupled with a higher sale price was detrimental to the reputation of SJAM.
Consequently, PJ Uniform was injuncted from using the SJAM mark in any future course of trade, ordered to destroy any remaining T-shirts displaying the SJAM emblem, required to publish public notices of their wrongdoing, and ordered to pay an account of profits and costs.
The trademark, one of intellectual property’s everyday heroes, once again proved that it is a cornerstone in protecting the legal rights of an organisation, coming to the rescue of St. John Ambulance.