In Sinma Medical Products v Yomeishu Seizo Co Ltd [2004] 4 MLJ 358 Sinma Medical Products appealed against a High Court decision that found it guilty of passing off and infringement of the mark owned by Yomeishu Seizo Co Ltd and granted an order rectifying the Trademark Register.
Sinma commenced the business of selling a product named Lingzhi or New Lingzhi Chiew, which was changed to Chinese Yangmingjiu in 1981. Sinma’s product was sold with a logo showing a combination of three kanji characters prefixed with two kanji characters that represent the word ‘Chinese’. The full logo read ‘Chinese Yangmingjiu’.
Sinma was the registered proprietor of a trademark that contains an English translation of two kanji characters that make up the word ‘Chinese’ and a transliteration of three other kanji characters into romanized Mandarin to read ‘Yangmingjiu’, thus forming the mark CHINESE YANGMINGJIU.
Yomeishu’s product, which bore a registered trademark consisting of three kanji characters depicting the romanized word ‘yomeishu’, had been imported into and sold in Malaysia since 1969.
The Court of Appeal held that the three elements in passing-off being reputation, misrepresentation and damage had been established by the Plaintiff.
