Fishing equipment firm wins appeal over trademark dispute

 

The Court of Appeal held Bulzen Sport liable to TCE Sports for the tort of passing off as the overall similarities in the get-up of their products could not have been a coincidence.

PUTRAJAYA: 

A popular Penang-based fishing tackle company, TCE Sports Sdn Bhd, succeeded in a passing off suit against rival Bullzen Sport after the Court of Appeal entered judgment in its favour on appeal.

Justice Azizul Azmi Adnan, who delivered the broad grounds of the three-member bench’s decision, said TCE Sports had established goodwill because of their extensive sales revenue which was not challenged at trial.

“What the trial judge failed to appreciate was how each of the elements was arranged in the whole get-up of the product packaging.

“We conclude that the overall similarities in the get-up over the whole packaging could not have been a coincidence,” he said.

Crucially, Azizul said, the trial judge had failed to take into account the fact that the defendant (Bullzen Sport), when opposing the plaintiff’s (TCE Sports) trademark registration application, appeared to have accepted that there were similarities in the plaintiff’s product packaging.

“The plaintiff has sufficiently proven its case that the product sold by the defendant has been misrepresented as that of the plaintiff,” the judge said when allowing the declaratory reliefs sought.

Justice Azizah Nawawi, who chaired the bench, ordered damages to be assessed before the High Court in Penang.

Also on the panel hearing the appeal was Justice Firuz Jaffril.

The bench also ordered Bullzen Sport to pay TCE Sports RM80,000 in costs.

TCE Sports had noted that Bullzen Sport was selling fishing lines with a confusingly similar get-up and trademark nationwide.

Two years ago, TCE Sports filed a suit for passing off, seeking to prevent Bulzen Sport from misrepresenting their goods or services as being those of TCE Sports.

In its statement of claim, TCE Sports sought a declaratory order that its “SOL” trademark was well-known and entitled to protection by virtue of Section 76 of the Trademarks Act 2019.

TCE Sports also sought a declaration that it was the first user of the SOL trademark on fishing lines and is, therefore, entitled to singularity and exclusivity.

The High Court dismissed the suit, giving rise to the present appeal.

Lawyers Timothy J Dass and S Prayveen Raj appeared for TCE Sports, while Chung Wei Leng and Ng Siok Lyn acted for Bullzen Sport. - FMT