How a Dodol Trademark Stirred Up a Legal Dispute in Malaysia: Tan Kim Hock Product Centre Sdn Bhd & Anor v Tan Kimhock Tong Seng Food Industry Sdn Bhd.

The making of dodol usually takes a lot of physical energy, as the thick concoction requires many hours of constant stirring. But as you continue reading, you’ll find something else “stirring” up in this dodol story. In Malaysia, many foods are a fusion of rich cultures. Dodol is one such food. It is a sweet, sticky snack made from coconut milk, palm sugar and glutinous rice flour that is popular not only during Hari Raya celebrations but also across the Nusantara archipelago.

Dispute background

Tan Kim Hock Tong Seng Food Industry Sdn Bhd (the Respondent) is in the business of manufacturing, processing, and distributing food products, including dodol. Together with his late wife, the founder Tan Kim Hock created their own version of the sweet delicacy which they sold door to door since the 1950s before establishing the company.

In 2001, Tan Kim Hock Product Centre Sdn Bhd (the first Appellant) was incorporated with the Respondent to sell and market the dodol products. Tan Kim Hock and a second shareholder, Madam Siah Siu Eng (the second Appellant) were appointed as the directors of this newly established venture. Sometime later, Tan Kim Hock sold his holdings in the first Appellant to the second Appellant and her family. The first Appellant continued to sell the Respondent’s dodol products after the latter had relinquished his interests in the company. However, the Respondent ceased distributing its dodol products to the first Appellant in November 2013. The issue ensued when the Respondent discovered that the first Appellant was selling dodol products which were not the Respondent’s products but bore a similar trademark.

The Respondent wanted the first Appellant’s “infringing trademark” to be declared as a false trademark, being confusingly similar to the Respondent’s. And so, the Respondent applied for a Trade Description Order (TDO) under Section 9 of the Trade Descriptions Act 2011 (the Act). The Act establishes criminal penalties for the misappropriation of trademarks as false trade descriptions. The Respondent’s application was made based on its Trademark Registration No. M/072924 under Class 30 (covering the sweet confection made of glutinous rice, kaya, coconut biscuit, coconut candy).

Pursuant to the granting of the TDO by the Court in 2014, the Ministry of Domestic Trade, Cooperatives and Consumerism conducted a raid on the first Appellant’s premises. Under Sections 5 and 8 of the Act, it is illegal to:

(a) use a false trade description on any goods;
(b) supply or offer to supply any goods with a false trade description; or
(c) have in possession, custody, or control for supply any goods with a false trade description.

To add fuel to the flames, during the raid it was also found that the Appellant used the halal certification granted to the Respondent on seasoning packs for Bak Kut Teh (a meat dish which is typically non-halal) bearing the Respondent’s trademark as well. In addition to the alleged trademark infringement, this abuse of the halal certification would also have negatively impacted the Respondent’s reputation.

Decision

Based on the evidence presented, the High Court ruled that:

The Respondent’s trademark is valid, and that the Respondent has substantial goodwill and reputation in the disputed mark. The only component that differed in the Appellants’ trademark is the omission of the words “CAP POKOK KELAPA” or “coconut tree brand”. Even with the omission, the trademark used on the Respondents’ products still featured a dominant T device with a coconut tree. The presence or absence of the words “CAP POKOK KELAPA” was not deemed to affect the registered trademark.

The Appellants’ claim that the Respondent had failed to prove that the registered trademark as a whole (including “CAP POKOK KELAPA”) had been used on any of their products at all material times is not correct, as per Section 23(2) of the Trademarks Act 1976:

“Where under this Act use of a registered trademark is required to be proved for any purpose, the Court or the Registrar may, if and so far, as it or he shall think right, accept use of an associated trademark or of the trademark with additions and alterations not substantially affecting its identity as an equivalent for such use.”

Conclusion

What we can learn from this case is that image is everything and trademarks represent the face of any business. Therefore, it is important to protect and enforce it against potential infringements.

If you have been dealing with someone misusing your trademark and are unsure about what to do, we have you covered. With our team of highly qualified IP experts, we can assure you that if your brand is ever under attack, you have our competence, speed and tenacity behind you. Your trademark is safe with us.

Contact us at kass@kass.asia if you need assistance with any Intellectual Property matters.

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