Taking The Lid Off Biolife, Spuntino and Ciotolla

By Jamieson McKinnon

Dart Industries Inc & Anor v CMN International Sdn Bhd & Ors – Civil Suit No.: WA-22IP-16-04/2017 consolidated with WA-22IP-17-04/2017

Background & Facts:

The High Court of Malaysia case Dart Industries Inc & Anor v CMN International Sdn Bhd is four combined suits between two Plaintiffs; Dart Industries Inc. and Tupperware Brands Malaysia Sdn. Bhd., who allege that the Defendants had infringed on their registered industrial designs.

The 1st Plaintiff is an American company which is the registered owner of an industrial design which had been applied to their “ECO Bottle” and “Modular Bowl Series” Tupperware products. The Plaintiff owns all intellectual property rights to the Tupperware products, and has spent a significant amount of time, effort, research and cost in designing the products. The two designs have also been consistently promoted over the internet. The 2nd Plaintiff is incorporated in Malaysia and is a sub-licensee of the 1st Plaintiff with the exclusive right to use two of their designs.

The 1st Defendant, CMN International Sdn Bhd, is a Malaysian company involved in the business of retail and direct sales. The other Defendants are two individuals who are customers of the 1st Defendant, and are registered under the 1st Defendant’s “CMN Malaysian Entrepreneur” program. The Plaintiffs claimed that the Defendants had infringed their registered designs under Section 32(2) of the Industrial Designs Act 1996 (IDA). The Defendants counterclaimed for declaratory orders that their “Biolife” Borneo bottles, “Spuntino” and “Ciotolla” food container covers are not infringing any registered design rights.

Side-by-side Comparison of the Plaintiffs‘ and Defendants‘ products:

Issues:

At large, the main issues considered were:

What constitutes an infringement of the two designs pursuant to the IDA?
In this regard:
- Was there an application of the two designs to the 1st Defendant’s products?
- Were there fraudulent imitations of the two designs?
- Were there obvious imitations of the two designs?
- Can the Defendants rely on the defence of “innocent” infringement of the two designs?

Decision:

In considering the aforementioned issues, the Court decided that the 2nd Plaintiff, as a sub-licensee of the two designs, cannot file the two suits, and had their claims dismissed.

With regard to whether the Defendants had infringed the design, the Court considered the elements that must be met for the claim to be satisfied. Firstly, the design must be in force, and not removed by the Court in line with s 24(1)(a) IDA or 27(1)(a) IDA. Secondly, there must be no license or consent from the Plaintiff provided to the Defendant allowing them to commit the act in question. On the facts, the Court found these elements to be fulfilled.

Finally, the third element outlines that the Defendant must have either applied the design to a product, undertaken in fraudulent imitation, or committed obvious imitation of the design. Through applying the facts at hand, the Court agreed this element was met, on the basis that imitation occurred through the resemblance in the overall curved shape, and physical depressions on the product. This imitation was deemed to be obvious imitation due to a side-by-side visual comparison highlighting that the Defendants products were “very close” to the two designs, and that the resemblance to the two designs were “immediately apparent to the eye looking at the two”.

This factor was enhanced due to both parties sharing similar customers.

Resultantly, the Court decided that the 1st Defendant had infringed the Plaintiff’s Registered Industrial Designs due to a lack of license or consent. The individual Defendants were also found to be infringing for selling the 1st Defendant’s products. As such, the 1st Plaintiff was awarded relief including declarations that the Defendants had infringed, a perpetual prohibitory injunction against the Defendants, and an account of profit.

This case emphasizes the importance of having new designs registered in Malaysia, as it shows how IP is used as a tool to prevent third parties encroaching on one’s market share. Contact us if you’d like us to review your designs of products, packaging or shapes or ornaments that you use in your business to stand out amongst competitors. Our IP experts can give you a free analysis on your IP Assets.

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.