In Tien Ying Hong Enterprise Sdn Bhd v Beenion Sdn Bhd [2010] 8 M.L.J 550, the Kuala Lumpur High Court held that the parallel importation of goods without the consent of the registered proprietor amounted to trade mark infringement.

The Plaintiff was the registered proprietor of the “SEIZAIKEN” trade mark in Malaysia. The Defendant imported the said batteries from a company in Hong Kong, which in turn procured the batteries from Seiko Instrument Inc. in Japan.

The Court held that pursuant to Section 35 of the Trade Marks Act 1976, the registered proprietor of the “SEIZAIKEN” trade mark had sole and exclusive right to sell and distribute goods bearing that trade mark in Malaysia. Further, pursuant to Section 38, no one else had the right to import, sell or advertise for sale such batteries in Malaysia without prior permission of the Plaintiff. Parallel imports were permitted only if the registered proprietor of the trade mark consented to the importation, distribution and sale in Malaysia.

The High Court held that the earlier judgment of Winthrop Products Inc & Anor v Sun Ocean (M) Sdn Bhd & Anor [1998] 2 M.L.J 317 (“Winthrop”) was not applicable to the present case. In Winthrop, parallel importation was permitted because the plaintiff and defendant therein were subsidiaries of the same corporate group. As such, the plaintiff was deemed to have impliedly consented to the importation of the products in question. However, in the present case, the Plaintiff had no connection or association with Seiko Instrument Inc. or the Defendant’s Hong Kong supplier.

In light of the foregoing, the High Court held that the Defendant had infringed the Plaintiff’s “SEIZAIKEN” trade mark by having imported, distributed and sold batteries applied with a mark identical to the Plaintiff’s registered “SEIZAIKEN” mark without the consent of the Plaintiff.