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?