Marqonsult

MIFF Sdn. Bhd. v Kuala Lumpur & Selangor Furniture Entrepreneur Association and Ors [2010] MLJU 1216. The Plaintiff is involved in providing services relating to the organizing and holding of exhibitions, trade fairs and shows in the furniture industry by reference to the name MIFF. MIFF is registered as a trademark since 9 March 2000 in Class 35 for aforesaid services in general.

The Plaintiff’s MIFF exhibitions and fairs are known to participants and visitors locally and overseas due to extensive media coverage and the Plaintiff’s vigorous promotion in various medium.

The Plaintiff brought a trademark infringement and passing off action against the 1st Defendant and its principal officers, the 2nd, 3rd, and 4th Defendants over the 1st Defendant’s use of the trademark MFF in relation to exhibitions and trade fairs for the furniture industry, in particular for an exhibition held at an international convention centre in Kuala Lumpur in 2008.

On the issue of trademark infringement, the Plaintiff alleged that the 1st Defendant’s use of MFF for its exhibition has caused and/or is likely to cause confusion in the marketplace and in the industry. As well, the use of MFF to identify the 1st Defendant’s exhibition constitutes passing-off as this would lead or is likely to lead to a false suggestion, association or connection with the Plaintiff's MIFF exhibition, thereby causing damage and injury to the Plaintiff's goodwill and reputation, or would result in likelihood thereof.

At the outset, the learned Judge agreed that MFF and MIFF are aurally and structurally similar and in general one would read, identify and pronounce the 1st Defendant's 'MFF' as "MIFF". However, the learned Judge applied the following test i.e. whether the totality of the trademark is such that it is likely to cause deception or confusion, and accepted the Defendants’ contention that as a whole, the 1st Defendant’s trademark MFF is neither identical nor confusingly similar to the Plaintiff's trademark MIFF.

The 1st Defendant’s trademark MFF is used in combination with the 1st Defendant's association logo which comprises the letters 'MFF', the words Malaysia Furniture Fair with the year 2008, and a device, described as an 'armchair like' device.

The Plaintiff’s registered trademark consists of the letters 'MIFF' and the device of a bird in flight with its wing outstretched (bird in flight device).

Comparing the Plaintiff's trademark and the 1st Defendant's mark in their entireties, and giving due consideration to words and device as a whole and not merely one element of it, the learned Judge found that:

• the 'armchair like' device in the 1st Defendant's mark brings to mind a furniture piece, namely an arm-chair, and being so striking and dominant in the 1st Defendant's mark, this device is the essential and significant feature of the 1st Defendant's mark when considered as a whole; and

• in contrast, the Plaintiff’s bird in flight device is characteristically different from the 1 Defendant's 'arm chair like' device and did not resemble anything close to a furniture piece.

The Plaintiff failed on their trademark infringement claim since the 2 trademarks did not closely resemble each other.

In order to succeed in passing- off, the learned Judge held that the Plaintiff had to show that it has exclusivity of use over the descriptive terms "Malaysian International Furniture Fair" and its acronym, "MIFF" in connection with furniture exhibitions.

In the context of descriptive terms, the Court had in the past recognized the difficulty involved for such a term before they can be said to have acquired a legal and factual secondary meaning and hence, a valuable goodwill and reputation in that term which is protectable at common law. In any event, the Plaintiff did not establish that "Malaysian International Furniture Fair" and "MIFF" had acquired distinctiveness such that these terms were synonymous with the Plaintiff.

In the Judge’s view, Malaysia Furniture Fair and MFF as used by the 1st Defendant were “incontrovertibly descriptive and commonly used” to denote the nature, type and location of exhibitions organized in Malaysia and as such, the Plaintiff cannot be allowed to interfere with the freedom of other entities to use words like "Furniture", "Malaysia" and "Fair".

Hence, the 1st Defendant in using these terms and MFF could not have passed-off the Plaintiff’s activities in relation to furniture fair and exhibitions.

ABOUT THE AUTHOR:

Clara Yip - Founding Director, MarQonsultIP, Malaysia

 B.A. (Econs.) / LL.B., University of Auckland (1992)
*Barrister & Solicitor, High Court of New Zealand (1993)
*Advocate & Solicitor, High Court of Malaya (1994)
*non-practicing
Registered Patent, Trademark & Design Agent, Malaysia
2006-2010 Asialaw Leading Lawyer (Intellectual Property)
2011 Finance Monthly Law Award Winner (Intellectual Property - Malaysia)
2011 Global Law Expert (Recommended IP Law Expert - Malaysia)