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

[2022] 4 MLRA 243

SKYWORLD HOLDINGS SDN BHD & ORS v. SKYWORLD DEVELOPMENT SDN BHD & ANOR
Federal Court, Putrajaya
Nallini Pathmanathan, Zaleha Yusof, Rhodzariah Bujang FCJJ
[Civil Appeal No: 02(f)-50-09-2020(w)]
8 April 2022

JUDGMENT

Zaleha Yusof FCJ:

Introduction

[1] This Court, on 7 September 2020, allowed the application for leave on appeal the following questions of law to the appellants based on:

Question 1

Whether the use of generic words which form part of a company, corporate, trade of domain name, which such words are also comprised as part of registered trade mark of another party (but which are not registered as a word mark or disclaimed), is deemed to be an infringement of such registered trade mark?

Question 2

If so, what is the definition of "allied field" for the purpose of determining whether such usage in relation to passing off action" is to be considered an act of passing off ?

Question 3

What is the definition of "engaging in a business of an allied field" which would amount to a misrepresentation in relation to a passing off action, where one party has generic words which form part of their company, corporate, trade or domain name, and such words are also comprised as part of a registered trade mark or company name of another party?

[2] For convenience, parties will be referred to as they were at the High Court.

[3] The appellants were the defendants at the High Court and the respondents were the plaintiffs.

Background Facts

[4] The salient facts can be found in the grounds of judgment of both the High Court as well as the Court of Appeal and the respective submissions of the parties, which we shall reproduce below with modification.

[5] The plaintiffs are involved in the business of property development. The 1st to 4th defendants are connected and affiliated companies, involved in businesses relating to real estate activities, project development, retail sale of construction materials and even tourism. The 5th and 6th defendants are the only directors and shareholders of the corporate defendants.

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

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