Ken and Barbie, as we all know, are one of those quintessential matches made in heaven. Ever since Ken was introduced in 1961, he has held over 40 occupations. It is therefore safe to assume that Ken is either the “Jack of all trades” or a person with multiple personalities. However, despite his ever changing character and fantastic outfits, there can only be one Ken. In fact, has anyone ever pondered on what would happen if two “Kens” were to co-exist at the same time?
This issue was touched on in a recent case, where the High Court of Malaya issued a ruling in favour of the right to use the trademark “KEN” exclusively, despite this word potentially being a common name in Malaysia.
The Plaintiffs, Ken Holdings and its seven subsidiaries, are in the business of engineering, construction, consultancy, property development, building works, land reclamation, dredging and provision of geotechnical services and have used the trademark “KEN” in the names of its property development projects since the year 2000.
Subsequently, the Plaintiff discovered that the Defendants, Sri Seltra Sdn Bhd and its subsidiaries (a diversified business conglomerate in the business of motor vehicles, heavy machinery, property development, business consultancy services, contractual works in property development and property and investment holding called the Ken City Group of Companies) were using the trademark “KEN CITY” in the promotional materials of their development projects.
This discovery did not sit well at all with the Plaintiffs, who then initiated court proceedings against the Defendants, claiming that the trademark “KEN CITY” was confusingly similar to the Plaintiff’s mark “KEN”.
The Defendants, in response, claimed that they had been using “KENCO” as their company name since 1979, and as such, should be considered as the first owners of the “KEN” mark. However, this argument was rejected by the High Court, as the Court viewed that “Kenco” was not used as a trademark, but as a company name. The Defendant had only started using the trademark “KEN CITY” in 2011; thus, the Plaintiff was clearly the first user of the “KEN” mark in Malaysia.
The Court instead considered the Plaintiff’s assertion that they had acquired substantial goodwill in the trademark “KEN” through use of this mark since 2000, and weighed it against the Defendant’s claim that “KEN” was a common word and as such, should not be allowed to be monopolized by a single party.
The Defendants supported their arguments with a list of companies in Malaysia that have the word “KEN” as part of their business name. However, the High Court rejected the arguments as the Defendants could not provide evidence that the companies listed were or are still actively trading with the mark “KEN” in the property development and construction sector.
As a result, the High Court adjudged that the public had associated the mark “KEN” with the Plaintiffs in the sector of property development and construction and that “KEN” had acquired a secondary meaning.
In addition, during the cross-examination stage, the Defendants had admitted that there was a likelihood of confusion and in such a case, it is sufficient to establish a passing-off action. Accordingly, the High Court agreed with the Plaintiffs’ allegation that the Defendants had intentionally used “KEN CITY” in in their advertisements in a manner that would allow them to ride on the goodwill and reputation of the Plaintiffs.
Based on these facts and circumstances, the High Court ruled that the Defendants had committed the tort of passing-off by using the mark “KEN CITY” and upheld the Plaintiffs’ right to have exclusive use of the name “KEN”. The High Court simultaneously rejected the Defendants’ counter claim for defamation and unlawful interference, and in siding with the Plaintiffs, stated that the letters containing the alleged defamatory statements were merely queries made to authorities to obtain confirmation to the approval of the Defendants’ advertisements.
This decision shows that while it is sometimes tempting to incorporate a famous mark into your own trademark, there are occasions where even the presence of other elements in your mark – distinctive as they may be – does little to prevent consumers from associating your mark with the famous mark; in which case an action for passing off may still be found.