Mention jewelry and what might come to mind is the famous song belted out by Marilyn Monroe in the 1953 movie “Gentlemen Prefer Blondes”:
“A kiss on the hand can be quite continental… But diamonds are a girl’s best friend”
Yes indeed – it’s all about the “sparkle, shape and size”. That single line above became a platform and theme of sorts for women across generations. Though, let’s face it, in this day and age, men seem to be equally enthralled with jewelry. From rap superstars wearing fashionable dental grills on their teeth to the girl next door wearing adorable Mickey Mouse or Hello Kitty ear studs, decking up with jewelry is about status, fame and recognition.
Clearly jewelry, especially designer jewelry, has become such a fashion statement that many creators of designer jewelry are keen to protect the Intellectual Property that subsists within them. From their design to the copyright and trademark, owners have taken the liberty to ensure that they own the exclusive rights they are entitled to. This brings us to the case of Jacmoli Designs & Jewellers Sdn. Bhd vs. YTL Corporation Berhad, which surrounds the notion that archived documents in a website can cause confusion amongst consumers.
The story behind Jacmoli & YTL
Jacmoli (the Plaintiff) is a private limited company specializing in producing high-end jewelry. Their mark in Class 14 embodies goods such as jewelry, gold, silver, platinum, precious stones such as jade. YTL (the Defendant) on the other hand is a public listed company and owner of Starhill Gallery Shopping Centre and the website www.ytlcommunity.com, which provides a platform for businesses within the YTL community to promote their goods and services.
The feud between both parties started when the Plaintiff alleged that YTL had infringed their trademark rights and were guilty of the act of passing off because the Defendant had failed to delete several articles featuring the Plaintiff’s previous boutique location and trademark on their website (www.ytlcommunity.com), articles which were in relation to the Plaintiff’s trade. The articles were written when the Plaintiff was a tenant at the Defendant’s Starhill Gallery Shopping Centre and left on the website’s archives even as the Plaintiff was no longer a tenant.
The Showdown – “I say… You say”
The archived articles were the premise of this case, due to the fact that these articles clearly made reference to the Plaintiff and the Plaintiff’s trademark and this caused confusion amongst the consumers into believing that the Plaintiff was still present in Starhill Gallery when in fact they had vacated the premises.
To further strengthen Jacmoli’s case, the Plaintiff revealed their “ammo”, a witness who claimed she thought that the Plaintiff was still a tenant in Starhill Gallery when she read articles on the website that indicated that the Plaintiff had not left the premises. YTL, not surprisingly, denied that it infringed the said trademark or that it passed off its goods or business as that of the Plaintiff’s in any way. YTL’s defense was based on the fact that the articles in question were merely archived documentation, stored as a record of past events related to Starhill Gallery Shopping Centre. The articles in relation to the Plaintiff were merely published to promote them when they were tenants at the shopping center.
The Kuala Lumpur High Court viewed that the intended acts complained of were carried out “in the course of trade” since the Defendant’s mode of business surrounds commercial activity thus took this as an economic advantage. The motivation behind the continued publication of “JacMoli” articles, in the courts opinion, was to gain financially from misinterpretations of the publications, as the Plaintiff’s mark is a well-known brand.
The High Court upheld the infringement claim over the archived news on the website and ruled in favor of the Plaintiff, on the basis that it had substantiated its claim for trademark infringement and passing off, therefore awarding the Plaintiff damages. The court also dismissed the Defendant’s counterclaim and requested it pay for court costs.
Moral of the Story?
In a nutshell, using trademarks owned by others would be deemed as a NO – Many websites do contain articles on products and services of other companies, and there is usually nothing wrong with identifying these on one’s website. However, due to the precedence of the above mentioned case, as a cautionary note, you should avoid using trademarks in a way that might cause confusion among consumers who visit the webpage. Such use might well constitute trademark infringement or an act of passing off.
Another important lesson we can learn here is that hoarding the old could lead to one’s downfall in the future! This is a wake-up call to businesses out there, especially those ranging from high-end property development to up-market shopping malls and hotels, on the importance of removing or deleting any form of documents that makes reference to third party trademarks and could potentially constitute trademark infringement or passing off, even from the seemingly harmless act of keeping them archived on their website.