Marqonsult

Danone Biscuits Manufacturing (M) Sdn Bhd v Hwa Tai Industries Bhd [2010] 8 MLJ 500, High Court. The plaintiff, Danone Biscuits Manufacturing (M) Sdn. Bhd. has been manufacturing and distributing ChipsMore chocolate chip cookies in Malaysia since 1990. The defendant, Hwa Tai Industries Bhd, is another manufacturer of chocolate chip cookies bearing the trademark ChipsPlus.

The plaintiff brought a trademark infringement suit against the defendant pursuant to s 38 of the Trade Marks Act 1976 based on the grounds that the defendant’s trademark ChipsPlus so nearly resembled ChipsMore that it would likely cause confusion and deceive the purchasing public.

Additionally, the plaintiff claimed that the defendant had used a trademark, get-up and packaging similar to that of the plaintiff and consequently, the defendant’s distribution and selling of ChipsPlus chocolate chip cookies in such get-up and packaging amounted to passing off of the defendant’s cookies as for the plaintiff’s.

The Court found for the plaintiff on both claims. In deciding that infringement had occurred, the judge invoked the principles laid down in The Pianotist Co’s Application and held that overall, ChipsMore and ChipsPlus indeed bore a close resemblance to each other as they shared the following similarities:

1. The identical phonetic representation of the prefix ‘Chips’ which should not be disregarded although it is a descriptive element;

2. The common idea conveyed by the suffixes although ‘PLUS’ and ‘MORE’ are 2 different words;

3. The omission of the space between ‘Chips’ and ‘Plus’, corresponding to omission of the space between ‘Chips’ and ‘More’;

4. Both ‘C’ and ‘P’ in ChipsPlus were written in capital letters, corresponding to the way ‘C’ and ‘M’ were written in ChipsMore;

5. The similar stylized double perimeter around the letters of both trademarks.

Hence, the defendant’s trademark ChipsPlus was rendered confusingly and deceptively similar to the plaintiff’s trademark ChipsMore.

On the passing-off claim, the plaintiff had no difficulty in proving that it had acquired substantial goodwill and reputation in its trademark ChipsMore and its packaging comprising ChipsMore as depicted in a wavelike manner, the color yellow and a blue swathe spanning across the packaging. The defendant’s packaging was observed to bear striking similarities to the plaintiff’s and this had added weight to the impression already being conveyed by the close resemblance of both trademarks. The defendant’s trademark ChipsPlus was represented in a similar curvy-like manner on the packaging which was also yellow in color and bore a similar blue swathe.

The judge further substantiated that the likelihood of confusion for the public is high as both of the products are sold alongside each other and cater to the same segment of customers. Purchasers who recognize a product by reference to the general get-up, color and shape of a product will be misled, and this is compounded by the fact that the products being inexpensive, purchasers would not invest time into any pre-purchase examination of the get-up.

The defendant had misrepresented its chocolate chip cookies as that of the plaintiff and since the parties were in direct competition, the Court had no hesitation in inferring the likelihood of damage to the plaintiff’s goodwill through the loss of sales.

ABOUT THE AUTHOR:

Clara Yip
Advocate and Solicitor (Malaya and New Zealand) (non-practicing); Registered Patent and Trademark Agent.