The Kuala Lumpur High Court recently upheld a trademark infringement claim in relation to the archive of a community website.


The plaintiff was the registered proprietor of Trademark Registration 04001971 for the following trademark in respect of jewellery products in Class 14 in Malaysia:

The plaintiff contended that the defendant had infringed or passed off its JACMOLI trademark by leaving in the archives of its website (www.ytlcommunity.com) several articles featuring the plaintiff, as well as the plaintiff's JacMoli boutique and trademark, dating from when the plaintiff was a tenant at the defendant's Starhill Gallery Shopping Centre.

In its defence, the defendant denied that it had infringed the JACMOLI trademark or passed off its goods or business as that of the plaintiff in any way. It contended that the alleged infringing articles on the YTL website were merely part of its record of past events or historical facts pertaining to the Starhill centre, and that the allegedly infringing articles had been published for the purpose of promoting the plaintiff when the plaintiff was a tenant at Starhill.

The defendant further counterclaimed for the following:

  • the attempted passing-off of the defendant's STARHILL and STARHILL GALLERY trademarks;
  • the expungement of the JACMOLI trademark on the basis that there had been no bona fide use of the JACMOLI trademark by the registered proprietor for a continuous period of three years up to one month before the defendant's counterclaim to expunge the plaintiff's mark; and
  • damages and aggravated or exemplary damages, as the plaintiff's action had been brought in bad faith and had been filed for a wrongful and collateral purpose.

The trial commenced and concluded on August 8 2011 and the decision was delivered on October 19 2011.


The court found that the plaintiff had established its claim for trademark infringement and passing off and hence allowed the plaintiff's claim with costs and dismissed the defendant's counterclaim with costs. The brief grounds of the court's decision were as follows.

Trademark infringement
In deciding the issue of trademark infringement, the court ruled that:

  • the unauthorised use and continued publication of the JACMOLI trademark amounted to an infringement by the defendant, despite the fact that the defendant was not using the JACMOLI trademark in relation to jewellery in Class 14 and that the JACMOLI trademark was used to refer to the plaintiff;
  • the infringing use need not be in relation to goods in Class 14;
  • use of the JACMOLI mark was in the course of trade, as the defendant's witness had admitted that the alleged infringing articles were being used for commercial purposes; and
  • use of the JACMOLI trademark on the YTL website had the effect of luring the plaintiff's potential customers to Starhill.

In deciding the issue of passing-off, the court ruled that:

  • very minimal trading activities would suffice to establish goodwill - thus, the promotion and media coverage in relation to the opening of the plaintiff's boutique was sufficient to generate goodwill;
  • media coverage in China showed that the plaintiff had acquired reputation and goodwill, as the plaintiff would otherwise have been unable to attract such coverage; and
  • use of the JACMOLI trademark on the YTL website had the effect of luring the plaintiff's potential customers to Starhill.

Expungement of trademark
The court accepted the plaintiff's explanation that the lack of sales by the proprietor of the JACMOLI trademark was attributed to the fact that the plaintiff's goods were sold by way of consignment with the plaintiff's Hong Kong company. The court was satisfied that there had been uninterrupted use of the JACMOLI trademark and the counterclaim for expungement was dismissed.

Bad faith
The court found that there was no basis for the defendant's contention that the action had been commenced in bad faith or for a collateral purpose, despite the fact that:

  • the plaintiff waited for nearly a year to institute the action after finding the alleged infringing or offending articles;
  • had initially demanded compensation of RM6 million, which was not pleaded or claimed in the statement of claim; and
  • the plaintiff's claim was made after the tenancy action had been instituted against the plaintiff.

The court found that the plaintiff had suffered damages as a result of passing-off.

For further information on this topic please contact Michael Soo or Lee Lin Li at Shook Lin & Bok Kuala Lumpur by telephone (+60 3 2031 1788), fax (+60 3 2031 1775) or email ([email protected] or [email protected]).


(1) JacMoli Designs & Jewellers Sdn Bhd v YTL Corporation Berhad, Kuala Lumpur High Court Civil Suit D22IP-11-2010.