SKYWORLD DEVELOPMENT SDN BHD & ANOR v. SKYWORLD HOLDINGS SDN BHD & ORS

[2020] 3 MLRA 178

SKYWORLD DEVELOPMENT SDN BHD & ANOR v. SKYWORLD HOLDINGS SDN BHD & ORS
Court of Appeal, Putrajaya
Hamid Sultan Abu Backer, Hanipah Farikullah, Kamaludin Md Said JJCA
[Civil Appeal No: W-02(IPCV)(W)-383-02-2019]
20 January 2020

JUDGMENT

Kamaludin Md Said JCA:

Introduction

[1] This is the appellants/plaintiffs' appeal against the whole of the High Court's decision which dismissed the appellants/plaintiffs' claims against the respondents/defendants for trade mark infringement, passing off and unlawful interference with trade.

[2] The parties shall hereinafter be referred to as they were at the High Court.

[3] The plaintiffs are the registered owner of the SkyWorld Registered Trade Marks in Class 37 as follows:

[4] The plaintiffs claim that the word "SkyWorld" is a prominent feature of the SkyWorld Registered Trade Marks. In addition, the word "SkyWorld" forms part of the plaintiffs' company names and started using the "SkyWorld" Marks in 2014.

[5] The 1st to 4th defendants (Corporate Defendants) were all incorporated in 2017. The Corporate Defendants have been using the marks/words "Skyworld" and "Sky World" in relation to their company names, domain name as well as for their purported "Sky World City Sabah" project.

[6] The plaintiffs brought an action against the Corporate Defendants for using the marks/words "Skyworld" and "Sky World" in relation to their company names, domain name as well as for their purported "Sky World City Sabah" project. Hence, the defendants' corporate names had infringed the plaintiff's registered trade marks "SkyWorld". In addition, plaintiffs claim against the defendants for passing off the plaintiffs business, products and/or services by the use in the course of trade of the SkyWorld Registered Trade Marks, Names, Website and Domain Name and unlawful interference with trade.

[7] At the High Court, the plaintiffs' case is essentially that the defendants' corporate names and website domain name are infringing in that they so nearly resemble the plaintiffs' Registered Trade Marks as are likely to deceive or cause confusion in the course of the defendants' carrying out their business of developing the Sky World City project. The learned judge had dealt with the plaintiffs' claim in a full trial and delivered his decision in favour of the defendants. The grounds of judgment are found at pp 30 to 88 in Rekod Rayuan (Jilid 1-Bahagian A).

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