The High Court of Malaya in Kuala Lumpur in Civil Suit No. D8-22-1863-2002 on 8th March 2008 held at the end of a full trial, that the trademark Emmer Zecna does not infringe the registered trademark Ermenegildo Zegna in respect of the use of the mark in Class 25 for menswear. It further held that there was also no passing off of the Plaintiff’s trademark and business by the Defendant.
Ermenegildo Zegna is a trademark originating from Italy and is known for its expensive and desginer clothing, in particular menswear. Emmer Zecna is a Malaysian trademark used on low priced menswear.
The High Court Judge, in his judgment, concurred with the Defendant’s contention that
- the marks Emmer Zecna and Ermenegildo Zegna, compared as a whole, are distinguishable;
- consumers of expensive products will not make a purchase without inspection of the trademark or brand-tag on the goods;
- customers who purchase clothing cannot be likened to grocery shoppers who are rushing to choose goods of a shelf filled with various trademarks;
- the goods are not purchased over the phone so oral confusion is not so relevant;
- the huge price difference between the Plaintiff’s and Defendant’s products is important as it means that the goods are not in direct competition;
- literacy level is high in Malaysia and consumers are more demanding, discerning and observant than before and thus are able to distinguish the marks;
- it is common knowledge that local businesses choose foreign sounding brands for better sales and to penetrate the market quickly;
- confusion involving discount cards, alteration of trousers and picking up of clothes by a third party are “mere administrative confusion” and not “actual instances of confusion”. The confusion in this case was de minimis and coincidental;
- the imperfect recollection test is to be applied having regard to the sort of people who would buy the products and the circumstances in which they buy;
- the survey evidence adduced by the Plaintiff cannot be relied on due to the following grounds:
*the questions posed to interviewees were mostly leading questions which were one-sided and biased, leaving not much room for the interviewees to think and produce their own answers
*there was no true recording of the interview, thus the answers of the interviewees were not recorded in verbatim
*the interviewees were not called to Court, thus the evidence was all hearsay evidence and prejudicial to the Defendant as the Defendant had no opportunity to cross-examine the witnesses first hand - the Plaintiff has limited goodwill as it only has two outlets in Malaysia, both of which attracts tourists and “upper bracket income” consumers, thus a majority of Malaysians are not aware of the existence of the Plaintiff’s mark:
- there were no mistaken purchases by consumers and the alleged confusion does not amount to misrepresentation;
- the Court has to consider practicalities of the commercial market today where there are many trademarks which peacefully co-exist in Malaysia, such as MISTER and SISTER (for condoms) and POWER and SUPERPOWER (for shoes).
The Plaintiff’s action for infringement of trademark and the tort of passing off was dismissed with costs.
KASS International Sdn Bhd is pleased to say that it acted as Intellectual Property Consultants and Advisor to the owner of the Emmer Zecna mark in respect of the litigation strategy. Should the full High Court judgment (in verbatim) be required, please feel free to contact us at ipr@www.kass.com.my
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