Penang fish tackle company wins trademark dispute in apex court

Federal Court rules that TCE Sports has established goodwill through trading activities, extensive advertising, and product packaging.

The Federal Court upheld the Court of Appeal’s decision affirming TCE Sports Sdn Bhd’s trademark claim against rival Bullzen Sport.

PUTRAJAYA:

 The Federal Court has unanimously upheld a Court of Appeal decision in favour of popular Penang-based fishing tackle company TCE Sports Sdn Bhd, affirming its trademark claim against rival Bullzen Sport.

A three-member bench led by Justice Nordin Hassan dismissed Bullzen’s appeal, ruling that the Court of Appeal had not erred in overturning an earlier High Court judgment.

Nordin said TCE Sports had, on the balance of probabilities, successfully established goodwill in its “SOL” brand fishing line.

He noted that the company’s growth was evident through years of trading activities, extensive advertising, and the distinctive appearance of its product packaging.

“We also agree that there are similarities between Bullzen Sport and TCE Sports product’s packaging that would have resulted in confusion among consumers,” he said.

The Federal Court ordered Bullzen Sport to stop selling products bearing the “XOL” brand, and awarded TCE Sports RM50,000 in costs.

The bench, which also comprised Justices Lee Swee Seng and Collin Lawrence Sequerah, however, varied certain relief granted by the appeals court to TCE Sports.

In 2022, TCE Sports filed a suit against Bullzen Sport to prevent it 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 under the Trademarks Act 2019.

It 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, but the Court of Appeal in 2024 reversed that finding.

Lawyers Timothy J Dass, S Prayveen Raj and Nur Syafikah Faiz appeared for TCE Sports, while Bahari Yeow, Patricia Chung, Ng Siok Lyn and Tan Jing Xuna acted for Bullzen Sport. - FMT