A mall in Kota Kinabalu has retained its rights to use the trademark “Suria” (which means “Sun” in Sanskrit and “Malay”) after a one year battle in the High Court of Kota Kinabalu. In 2009, the owner of Suria KLCC mall, Suria KLCC Sdn Bhd (“Suria KLCC”) sued the developer of Suria Sabah mall, Makamewah Sdn Bhd, for trademark infringement and passing off and sought for an injunction and damages.
The case was decided in favour of the Suria Sabah mall developers (“SS developers”) on the grounds that (i) there was no proof adduced to show that SS developers misrepresented themselves, (ii) “Suria” is a common, non-distinctive word and thus Suria KLCC had no exclusivity to the word, (iii) Suria KLCC’s registered mark is not merely for the word “Suria” but for “KLCC” and the swirl device as well; the combination of the elements makes the mark distinctive.
(Combined Mark bearing Reg No. 01008199)
(Word Mark bearing Reg. No. 01008200)
The above are representations of the registered trademarks owned by Suria KLCC as extracted from the Malaysian Trademark Office.
That Suria KLCC had not named their other two malls with the word “Suria” accompanied by the name of the location they are based in (Putrajaya and Terengganu) also seemed to influence the Judge’s decision in this case.
The outcome of this case is interesting as although the word “Suria” is commonly used in Malaysia, the word is not commonly used on malls. Further to that, the Suria KLCC mall is adjacent to the well-known Petronas Twin Towers, known to residents worldwide as the landmark skyscraper in Kuala Lumpur (KL). The association with the famous Twin Towers creates fame for the mall itself and almost all Malaysians who have been to KL have been to Suria KLCC, including Sabahans.
The decision against Suria KLCC came as a surprise to the author. As a preventive measure for brand owners who are concerned about their trademarks, proper analysis of their registrations and registration of individual elements in their mark which are unique or distinctive should be considered/undertaken.
Take the following marks as examples:
Dunkin Donut has registered the combined version of its mark and as individual marks – the words in its trademark and the logo or device as well.
Similarly, McDonalds has also registered the slogan and the golden arch individually.
As one can observe, more registrations afford stronger trademark protection. However, as cost will be higher for additional registrations, especially when the mark is used in foreign markets, trademark prosecution strategy is required by brand owners. Do consult us if you have a combined trademark and find yourself in a similar situation.
Note: The trademarks referred to in this article belong to their respective owners. KASS does not claim any proprietary right whatsoever. The marks are used in this article solely for educational purposes.
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