In Shizens Cosmetic Marketing (M) Sdn Bhd v. LVMH Perfumes and Cosmetics (M) Sdn Bhd, Civil Suit No: WA-24IP-21-11/2017 (Mar. 19, 2019), the plaintiff is the owner of trademark Registration No. 201301836 for LIP TATTOO for goods in Class 3, including cosmetics, makeup preparations, and lipstick. The plaintiff disclaimed the word “Lip” as a condition to registration.

The defendant is part of the renowned Parfum Christian Dior SA group, which distributes fragrances and cosmetic products under the DIOR, CHRISTIAN DIOR, and CD marks in Malaysia. The defendant began using the DIOR ADDICT LIP TATTOO trademark on its cosmetic products.

The plaintiff brought an infringement action against the defendant, and the defendant filed a counterclaim to expunge the defendant’s LIP TATTOO trademark.

In assessing the counterclaim to expunge the plaintiff’s mark, the court held that the words “lip tattoo” are neither generic nor commonly used words. It further held that the words are newly coined and had no obvious meaning until a meaning was assigned to them by the plaintiff. Hence, the court ruled that the words are “invented words” within the meaning of the Trade Marks Act 1976. The defendant’s counterclaim to expunge the mark was dismissed.

In deciding the infringement claim, the court found that the plaintiff failed to discharge the legal burden to prove that there was a likelihood of deception/confusion among consumers. The court also did not consider the word “lip” in deciding whether there was infringement.

The court further held that the defendant did not use the words “lip tattoo” in the Dior Addict Lip Tattoo products in such a manner as to render their use likely to be viewed as a trademark under Section 38(1)(a) of the Act. This is because the defendant’s use of the word “Dior” (and not “lip tattoo”) is what would indicate a connection in the course of trade between the defendant and its product. In particular, the court stated: the “DIOR trade mark is well-known, famous, and more prominent than the words “lip tattoo.”

The defendant has filed an appeal with the Court of Appeal and is currently pending the grounds of judgment.

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This article first appeared in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).