Tan Kim Hock Product Centre Sdn. Bhd (Perayu Pertama) v Tan Kimhock Tong Seng Food Industry Sdn Bhd (M-02(NCVC)(W)-1161-06/2017)

TAN KIM HOCK PRODUCT CENTRE SDN BHD (NO. SYARIKAT: 550403-W) … PERAYU PERTAMA

SIAH SIU ENG (NO. K/P: 530712-04-5126) … PERAYU KEDUA (NO. SYARIKAT: 25611-P) … RESPONDEN DALAM MAHKAMAH TINGGI MALAYA DI MELAKA GUAMAN SIVIL NO: 22NCvC-12-03 TAHUN 2015 (NO. SYARIKAT: 25611-P) … PLAINTIF

TAN KIM HOCK PRODUCT CENTRE SDN BHD

SIAH SIU ENG (NO. K/P: 530712-04-5126) … DEFENDAN-DEFENDAN 2 DIDENGAR BERSAMA [DALAM MAHKAMAH TINGGI MELAKA DI MELAKA DALAM NEGERI MELAKA SAMAN PEMULA NO. 24 – NCVC – 460 – 12/2015 Dalam Perkara Kaedah 7(2) dan (3) Kaedah-Kaedah Mahkamah 2012 Dan Dalam Perkara s. 46(1), (2) dan (4) Akta Cap Dagangan 1976 (Akta 175) Dan Dalam Perkara Cap Dagangan Berdaftar No. M/07924 Dalam Kelas 30 Dengan Logo: Dan Dalam Perkara Cap-Cap Dagangan Tan Kim Hock ( dan di bawah s.82 Akta 175

TAN KIM HOCK PRODUCT CENTRE SDN BHD (NO. SYARIKAT: 550403-W) 3

SIAH SIU ENG (NO. K/P: 530712-04-5126) … PEMOHON-PEMOHON (NO. SYARIKAT: 25611-P) … RESPONDEN PENDAFTAR CAP DAGANGAN … PIHAK BERKEPENTINGAN] CORUM: DR. HAJI HAMID SULTAN BIN ABU BACKER, JCA ABANG ISKANDAR BIN ABANG HASHIM, JCA YAACOB BIN HAJI MD SAM, JCA GROUNDS OF JUDGMENT Preliminary This judgment is prepared pursuant to section 42(1) of the Court of Judicature Act 1964 (Revised 1972), as my learned brother, Dr Haji Hamid Sultan Abu Backer, JCA has since retired. My learned brother, Abang Iskandar bin Abang Hashim, JCA (now the Chief Judge of Sabah and Sarawak) has read this judgment in draft and has expressed his agreement that this judgment be the judgment of the court. 4 INTRODUCTON [1] This appeal arose as a consequence of the decision of the High Court after full trial, allowing inter alia the Respondent’s (Plaintiff) claim for passing off and infringement of trademark against the Appellants (Defendants). [2] In the court below, the Appellants have filed an application vide Originating Summons No. 24-NCVC-460-12/2015 (OS) to expunge the Respondent’s registered trademark M/72924 pursuant to section 46(1) of the Trade Marks Act, 1976 on the alleged ground that there was non-use of the said registered trade mark by the Respondent. This OS was heard together with this writ action and was dismissed with cost as well by the High Court. [3] Having heard the submissions of the parties, we have deferred our decision to a date to be fixed. We now give our decision. THE MATERIAL FACTS [4] The relevant facts of the Respondent’s case have been set out clearly by the learned High Court judge’s grounds of judgement at para 3 to 34. [5] For ease of reference, we shall reproduce the relevant facts of the case based on the evidence adduced and as extracted from the grounds of judgment of the learned High Court judge. 5 [6] The Respondent is a private limited company incorporated under the laws of Malaysia which was established by its founder Mr. Tan Kim Hock (TKH). TKH was known as “Dodol King” in Melaka. [7] The Respondent’s primary business is the manufacturing and marketing of traditional sweets and savories such of dodol cake (“kuih dodol”), kaya cookies and coconut candies, as well as other local food and health products. All of the Respondent’s products bear the registered trademark and/or getting of , , “Tan Kim Hock” and being Mandarin version of “Tan Kim Hock” and 陈金福 being Mandarin of Product Centre (Tan Kim Hock Product Centre). [8] Sometimes in the 1950s, TKH and his late wife, Madam Ngow Swee Yam (Madam Ngow) formulated a special recipe for their kuih dodol, which became a favorite among their village folks then. At that time TKH and Madam Ngow would make kuih dodol and distribute them among their relatives and friends, usually during festive seasons. Thereafter TKH started selling the kuih dodol from house to house in the Malay kampung near Brangan Enam, Umbai, Melaka. [9] In order to establish a market name and presence, TKH registered the trade mark of “ ” on 20th February 1967. As shown above, the 6 first trade mark of TKH bore the image of a coconut tree, which forms the main ingredients for the kuih dodol and other products. The registered proprietor of this first trade mark bearing registration No. M/47372 was TKH trading as Tong Seng. [10] TKH’s business developed rapidly and sometime in the early 1970s TKH set up a small outlet named “Syarikat Tong Seng” at No. 85, Bendahara, Jalan Bunga Raya, Melaka. [11] Syarikat Tong Seng’s business grew exponentially and in 1973, TKH acquired a shop at No. 91, Jalan Bendahara, Melaka, for the purpose of manufacturing and selling his products. Following this, TKH started to use “Tong Seng Foodstuff Factory” as the name of his business enterprise. [12] Somewhere in the year 1974, TKH once again changed his business name to “Tan Kim Hock (Chop Tong Seng) mainly to avoid public confusion and to differentiate his products from that of his competitors who started using similar sounding names to that of Tong Seng. Despite the various changes to the names in his business, TKH maintained the name “Tong Seng” in some form or the other, as its Chinese meaning i.e. “an any direction it must succeed”. [13] Sometime in early 1970s, pursuant to the effort of TKH and his son, Tan Bee Long (TBL/PW9), a logo was created as the “Created Mark” to carry out his business. The Created Mark contains a block letter, “T” with a coconut tree in it, and at the middle of the coconut tree is the letter “S” 7 symbolizing “Tong Seng”. The logo was created in the following form: [14] The Created Mark was first used by TKH sometime in 1973 at a trade fair where TKH’s business enterprise had participated and used the Created Mark in its advertisements, hoardings and promotional materials. Further business documents from time to time, such as, letterheads and invoices also showed that TKH’s business enterprise had used the Created Mark to carry out its business. [15] Following the tremendous growth of the business, TKH and the entire business and goodwill of Tan Kim Hock (Chop Tong Seng) was sold to the Respondent for RM30,000.00 as consideration. [16] On 21 September 1976, the Respondent registered the trade mark “ ” (Registered Mark). The Registered Mark bears registration No. M/72924. The Registered Mark’s main feature is the Created Mark with the words “CAP POKOK KELAPA” added to the bottom. 8 [17] The words “CAP POKOK KELAPA” was added so as to maintain the connection and continuity with the earlier registered mark “ ” [18] Sometime in 1983, the Respondent shifted its office from No. 1, Jalan Bendahara, Melaka to a new building known as Wisma Tan Kim Hock, which remains as their headquarters until to-date. [19] The Respondent later expanded its business by establishing “Tan Kim Hock Group of Companies” which consists of the following companies: a) Tan KimHock Tong Seng Food Industry Sdn. Bhd; b) Tan Kim Hock Confectionary Sdn Bhd; c) Hotel Tan Kim Hock Sdn Bhd; d) Kim Hock Fruit Industry Sdn Bhd; e) Kilang Ubat Tan Kim Hock; f) Kilang Makanan Tan Kim Hock; g) Restoran Makanan Istimewa Tan Kim Hock; h) Tan Kim Hock Fruit Product Sdn Bhd; i) Tan Kim Hock Product Centre (where the registration expiry date was 7/3/2006); and j) Tan Kim Hock Product Centre Sdn Bhd. [20] Kim Hock Fruits Sdn Bhd and Tan Kim Hock Product Centre were responsible for marketing and retailing the Respondent’s products as well as other local food products, while the Tan KimHock Tong Seng Food 9 Industry Sdn Bhd (the Respondent) concentrated in manufacturing, wholesale and exports of their products. [21] In 2001, the Respondent incorporated Tan Kim Hock Product Centre Sdn Bhd (the 1st Appellant) and the Respondent promoted Madam Siah Siu Eng (the 2nd Appellants) to be one of the directors and a minority shareholder of the 1st Appellant. The Respondent supplied all its products to the 1st Appellant for sale at its business premises at Jalan Bendahara, Melaka. The responsibility of the 2nd Appellant was to promote the business and reputation of the Respondent’s products bearing its various trade marks, both registered and unregistered. [22] On 16.08.2005, the Respondent had made an application to register the Created Mark with the words “Tan Kim Hock” at the bottom of the said mark, i.e. . However, due to the carelessness of the Respondent’s administrative side, the said application was abandoned in

When the Respondent became aware of this in 2014, the Respondent’s trade mark agent applied to register the marks in 2014. The new trade mark applications were given application nos. 2014001805, 2014001812, 2014001813, 2014001814, 2014001815, 2014001816, 2014001817, and 2014001818 in their respective classes 29, 30, 32 and 35. [23] In 1976, based on an application by TKH, the trademark application No. M/72924 was registered on 21.9.1976 under Class 30 for ‘dodol being 10 a sweet confection made of glutinous rice, kaya, coconut biscuit, coconut candy’ (Cap Pokok Kelapa). The representation of the trade mark is as shown below: [24] Thereupon, together with its Group of Companies, the Respondent maintains the registration and usage of the Respondent’s trade marks in their premises and products. It is to be noted that in November 2013, TKH’s children remove him as the managing director of the Respondent company. The Respondent/Plaintiff’s case [25] The Respondent alleged that the Appellants had misused the Respondent’s trade mark in that sometime in 2013, it was discovered that the 2nd Appellant had taken advantage of the Respondent’s reputation and confidential information by practicing price cutting of the Respondent’s products. The Appellants were subsequently removed from Tan Kim Hock Group of Companies and the Respondent ceased to supply its products to the Appellants as of November 2013. [26] Despite the same, the Respondent discovered that the Appellants had applied for registration of trade mark under applications number 2013011327, 2013011329, 2013009662 and 11 2013009665 and trade mark under applications number 2014001829, 2014001830, 2014001831 and 2014001832. Meanwhile, the Appellants continued sale and marketing of products similar to those of the Respondent bearing the Respondent’s Trade Marks without the Respondent’s authorization. The Respondent have filed an objection to the Appellants’ applications for the registration of the impugned trade marks. [27] As such, the Respondent filed this suit on 20.10.2014. The Respondent’s cause of action is that the Appellants have infringed the Respondent’s Registered Trade Mark and/or passed off the Appellant’s products as those of the Respondent. [28] The Respondent further pleads that the Appellants had failed to comply with the Respondent’s demand vide a letter dated 26.2.2014 from the Respondent’s solicitors Damian SL Yeo & LC Goh demanding that the Appellants cease and desist from passing off its products using the Respondent’s Trade Mark and/or get up. [29] By way of an ex-parte Originating Summons dated 26.5.2014, the Respondents applied for a trade description order (TDO) under sub-ss 9(1) and (2) of the Trade Description Act 2011 that the durian dodol, coconut dodol and coconut biscuits (dodol products) bearing the trademark ‘Pokok Kelapa’ in the shape of “T” and containing a red and a white coconut tree which is a stylized letter in the middle of the coconut 12 tree consist of a logo “S”, on its packaging, which is confusingly similar to the Respondent’s trademark, to be declared a false trademark. The TDO was granted on 4.6.2014. The Respondent then lodged a complaint with the Ministry of Domestic Trade, Cooperatives and Consumerism. A raid was conducted at the 1st Appellant’s premise pursuant to the TDO. units of products bearing the unauthorized use of the Respondent’s Trade Marks were seized from the 1st Appellant’s premise by the authorities. [30] The Appellants filed an application for leave to intervene and to set aside the TDO. The Respondent did not object to the said application. After hearing the setting aside application, the learned High Court judge dismissed the same. On appeal, the Court of Appeal affirmed the validity of the TDO on 2.12.2016. Not satisfied, the Appellant appealed to the Federal Court. The Federal Court affirmed both the decisions of the High Court and Court of Appeal on 28.11.2017. The appeal by the Appellants was dismissed with costs and the TDO was ruled by the Federal Court to be valid [see : Tan Kim Hock Product Centre Sdn Bhd & Anor v Tan KimHock Tong Seng Food Industries Sdn Bhd [2018] 2 MLJ 1 FC); Tan Kim Hock Product Centre Sdn Bhd v Tan KimHock Tong Seng Food Industry Sdn Bhd [2017] 7 MLJ 730 CA]. [31] By reason of all the circumstances and conducts of the Appellants, the Respondent filed this action and sought for the following declarations pertaining to the ownership of the trade marks: “a. Satu deklarasi bahawa Plaintiff yang merupakan pemilik dan pemunya asal Cap Dagangan dan capgaya 13 “Tan Kim Hock” (“Cap Dagangan tersebut”) yang sah di sisi undang-undang dan tidak termasuk pihak-pihak lain”. [32] It is to be noted that the five (5) marks claimed by the Respondent, only the mark of is a registered marks (No. M/07924 Dalam Kelas 30) and the other four (4) marks are unregistered marks, namely common law trade marks of TKH. The Appellants/Defendants’ case [33] The Appellants’ case is stated in their Amended Statement of Defence and Counter Claim. Accordingly they content that in respect of the Created Mark it was a result of joint/collaboration between the Respondent’s founder TKH and the 2nd Appellant Madam Siah Siu Eng. The Appellants state that the letter “T” symbolized “Tan”, i.e. Tan Kim Hock and the letter “S” symbolized “Siah” i.e. Siah Siu Eng, the 2nd Appellant. The letters “T” and “S” according to the Appellants also 14 represent “Tong Seng”. And the coconut tree further indicates the ingredient used to make kuih dodol. [34] The defence of the 2nd Appellant states in summary that TKH the founder of the Respondent promised to give her shares, ownership and goodwill in the Tan Kim Hock businesses due to the 2nd Appellant’s hard work and effort in expanding the business. The 2nd Appellant further maintains that once THK’s business had expanded, the 2nd Appellant as the co-founder and business partner was entrusted with several responsibilities which include “Supervisor” in the Respondent’s company, “Personal Assistant” to TKH and the “Group Financial Controller”. [35] The 2nd Appellant further contended that in 2001, pursuant to the earlier promise by THK, the 2nd Appellant established the 1st Appellant in which TKH held 60,000 shares and the 2nd Appellant held 40,000 shares. TKH had also made the 2nd Appellant a director of the 1st Appellant. Subsequently, in 2006, TKH transferred more shares in the 1st Appellant to the 2nd Appellant for valuable consideration, which according to the 2nd Appellant was in fulfilment of TKH’s promise to the 2nd Appellant. The 2nd Appellant further stated that in 2012, TKH transferred all the remaining shares in the 1st Appellant to the 2nd Appellant and the 2nd Appellant’s son for valuable consideration of RM200,000.00. The 2nd Appellant claimed that the sale of TKH’s remaining shares in the 1st Appellant to the 2nd Appellant includes transfer of ownership, goodwill and business reputation of TKH in Tan Kim Hock Group of Companies and in particular the Trade Marks of the Respondent. Thus, the 1st Appellant claimed that it is now the owner of the said Trade Marks. 15 [36] Further, the Appellants contended that the trademark bearing Registration No. M/07924 Class 30 (Registered Mark) with logo “ ” was never use by the Respondent and as such argued that it considered abandoned because of non-use. [37] As such, the Appellants (Defendants) in their counterclaim sought for a declaration that the Appellants are owners of four unregistered marks namerly: and (the 2nd and 3rd Marks) and the words “Tan Kim Hock” and “Chen Jin Fu Te Chan Jia” in Mandarin (the 4th and 5th Marks). [38] Vide the Originating Summons (OS) No. 24NCVC - 460 -12/2015, the Appellants sought to expunge the registered trademark of the Respondent [No. M/07924] in Class 30 with logo: 16 Proceedings and Decision of the High Court [39] The Respondent filed this action (main suit) against the Appellants. The main suit was a contest between the Respondent and the Appellants over the ownership of the common law trade marks bearing the mark and logo of “Tan Kim Hock”. The Respondent claimed ownership over the following Tan Kim Hock (Tan Kim Hock Trade Marks):

(i) “Tan Kim Hock”;

(v) . [40] The Appellants made two claims of Tan Kim Hock Trade Marks: 17

(i) ;

(i) full ownership of the four (4) Tan Kim Hocks Trade Marks;

(i) Did the 2nd Defendant (Siah Siu Heng) and TKH jointly created the Created Mark of ;

(v) Did the Defendants commit the tort of passing-off?. [45] After a full trial and after evaluating the evidence in totality of 17 witnesses (5 for the Appellants and 12 for the Respondent), the learned trial judge allowed the Respondent’s claim on ownership of all the Tan Kim Hock Trade Marks. The declaration sought by the Respondent was granted. The learned High Court judge dismissed the Defence and Counter Claims of the Appellants. The Appellants’ OS was also dismissed. [46] Aggrieved, the Appellants filed an appeal to this Court. The Appellants’ Appeal and Our Decision [47] The common issues for this appeal relates to four main grounds of appeal: 20

(i) the alleged right of Tan Kim Hock to the Tan Kim Hock Trade Marks and the alleged right of the Appellants to them or any of them;

And the Created Mark was used in the advertising hoardings and promotional materials for TKH’s products. The Plaintiff had tendered photographs of this trade fair in evidence. The 2nd Defendant claims that she join TKH’s enterprise in 1970. However, this assertion contradicts documentary evidence in the form of monthly returns to the Employee Provident Fund that shows that the 2nd Defendant started her employment only in January 1973 as a dodol packer. I prefer to accept the contemporaneous documentary evidence instead of the self serving assertions of the 2nd Defendant. Further, the 2nd Defendant’s evidence is also contradicted by the oral testimony of Hamzah bin Talib (PW1) and Rokiah binti C Muhammad (PW2), who were employees of TKH since before the 2nd Defendant joining TKH’s enterprise. PW1 and PW2 testified that the 2nd Defendant was first employed as a dodol packer sometime in 1973. In the circumstances, the 2nd Defendant’s claim that she was involved in the business decisions of TKH and 25 had contributed the created of the Created Mark in the early 1970s is incredible.” [54] Therefore, the basic question for our decision here is whether the learned judge had misdirected himself in his assessment and evaluating the evidence in totality with regard to this fundamental issue. We find there has been no such misdirection. Premised of the above background, we are in the agreement with the learned judge findings that the ownership of the Respondent’s Trade Marks still belongs to the Respondent. We too find that there is more than ample evidence establishing the facts that the business and goodwill of Tan Kim Hock (Cop Tong Seng) was sold by TKH to the Respondent for valuable consideration in 1976. Thus, the Respondent had acquired propriety interest in the registered trade mark, and the Created Trade Mark . We find nothing erroneous about this important finding of fact by the learned High Court judge. [55] On the issue of the alleged joint ownership of the Created Mark, His Lordship further held in paragraph 40 of the grounds of decision as follows: 26 “The overall evidence indicates that the Plaintiff’s version of the creation of the Created Mark is more probable. Thus, I find that the 2nd Defendant had no involvement whatsoever in the creation of the Created Mark and hence the 2nd Defendant cannot claim co-ownership or authorship of this mark.” [56] We find the learned High Court judge has correctly applied the legal principles and examined the evidence to come to conclusion that the 2nd Appellant cannot claim co-ownership or authorship of Created Mark. The alleged contribution claimed by the 2nd Appellant has nothing to do with the claim to proprietorship of a trade mark. Under the common law, proprietorship of a trade mark is established by first use. Even if we assume for the moment that the 2nd Appellant has contributed much to the growth of the Tan Kim Hock Group of Companies, it is irrelevant to the issue of ownership or co-ownership of the Created Mark. Such contribution does not empower the 2nd Appellant to claim any rights over any of the trade marks used by the Respondent and its predecessor in the course of their trade. [57] On the issue on the sale of the business known as “Tan Kim Hock (Chop Tong Seng)” including the goodwill associated with it and the 27 Respondent’s Trade Marks to the Respondent, including the Created Mark, the Registered Trade Mark and the name “Tan Kim Hock” and its Chinese equivalent from TKH to the Respondent in 1976, the learned trial judge in paragraph 40 had held as follows: “When the totality of the evidence is considered. Hence, following Plaintiff had acquired propriety interest in the registered mark and the Created Mark ” [58] We observe that the learned trial judge has dealt with this second issue in extenso as appears in paragraphs 41 to 45 of his grounds of decision. The learned judge accepted as factual evidence of the Company Resolution dated 1 April 1976 (exhibit ‘P2’) which shows that the Respondent had bought the business of “Tan Kim Hock (Chop Tong Seng)” lock, stock and barrel, which includes the goodwill and trade marks. P2 showed that the goodwill of the business of “Tan Kim Hock (Chop Tong Seng)” was also sold for RM30,000.00 to the Respondent. P2 was signed by TKH and Madam Ngow who has since passed away. P2 was prepared by Jenny Chong (PW7) who had direct knowledge and involvement in the preparation of the resolution contained in P2. P2 was signed by TKH and the late Madam Ngow. Learned counsel for the Appellants submitted that TKH as the maker of P2 ought to be called by the Respondent to tender P2. Learned counsel also argued that the two doctors (Dr Suresh and Dr Taye) called to testify on the mental capacity 28 of TKH are not an expert under s. 45 Evidence Act, 1950. His Lordship held that he has no reason to doubt Jenny Chong’s recollection of events that led to the drafting of P2 under the instruction of then Company Secretary, one late Chua Pong Thia. The resolution was photocopied from the Minute Book which Jenny Chong kept for the Respondent. The Minute Book was produced in court for the inspection of the Appellant and the court. We find no reason to disturb the learned judge finding based on the above stated reasons [59] We come to the issue that is concerned with the alleged non-use of the Registered Mark of the Respondent. The Appellants have filed an OS seeking to expunge a Registered Trade Mark of the Respondent based on s. 46 of the Trade Marks Act, 1976 on the alleged ground of non-use. The burden of proof is upon the applicant, in this case the Appellants. It is to be noted that the learned High Court judge had also dismissed the Appellants’ counterclaim and the OS. [60] The argument of non-use (or abandonment of trade mark) was in fact raised in a related matter namely Tan KimHock Tong Seng Food Industry Sdn Bhd v Tan Kim Hock Product Centre & Anor (KL High Court Originating Summons No. 24-IP-25-05-2014) in the High Court of Kuala Lumpur, which relates to the validity of the TDO obtained by the Respondent. The High Court in this case found that there was no such abandonment (see : Tan KimHock Tong Seng Food Industry Sdn Bhd v Tan Kim Hock Product Centre & Anor [2016] 7 MLJ 561). The Appellants filed an appeal to the Court of Appeal. The Court of Appeal subsequently upheld the High Court decision (see Tan Kim Hock Product Centre & Anor v Tan KimHock Tong Seng Food Industry Sdn Bhd [2017] 1 MLJ 730). 29 [61] We observe that the learned High Court judge has dealt with this issue extensively. His Lordship made a finding that the ground of non-use is not proved. In fact the learned High Court judge found that the Respondent has continuously used the Registered Trade Mark on its products albeit without the descriptive words “Cap Pokok Kelapa” as provided under s. 23(2) of the Trade Marks Act, 1976. [62] It is instructive to refer to the decision of the Court of Appeal in Tan Kim Hock Product Centre & Anor v Tan KimHock Tong Seng Food Industry Sdn Bhd (supra). This court at paras 25 and 26 had held: “[24] We are in agreement with the learned judge in that respect. It was not the law either that abandonment of a trade mark had been proven merely by a period of non-use of the specific registered trade mark; there had to be definite evidence of abandonment without the intention to resume use. Further in this case, it had to be noted that the registered trade mark had been renewed from time to time and remained valid until 2021 and at the time the TDOs were sought ex parte, there was no application to expunge the registered trade marks pending in court. [25] It was also the forceful submission of counsel for the TKTS Food Industry that the omission of the words – CAP POKOK KELAPA (separately and below the logo) did not affect the dominant feature or the main component of the registered mark itself, namely the large T in red with the coconut tree in white in the middle and also an encircled S also in white. It was reiterated by counsel, and we agreed with him, that the omission of the words 30 CAP POKOK KELAPA did not affect the same continuing commercial impression a consumer of the product would have formed, namely that the product was indeed produced by or originated from TKTS Food Industry. The products of TKTS Food Industry carried the registered trade marks, albeit that the minimal alteration as recognized and countenanced by s. 23(1) of the Trade Marks Act, 1976. Accordingly, like the learned judge, we were of the view that, there arose no issue of suppression or non-disclosure of ‘abandonment’ of the registered trademark as alleged by the Appellant.” [63] The Court of Appeal decision has been affirmed by the Federal Court. In the circumstances, it is not our place to depart from a definitive finding on a matter that had been made by our apex court. [64] We shall now address the related issues of whether the Defendants (Appellants) had infringed the Plaintiff’s trademark, thus, committed the tort of passing-off. [65] Relying on the decision of the Court of Appeal in Ho Tack Sien & Ors v Rotta Research Laboratorium [2012] 8 CLJ 645, the learned trial judge had identified the following elements for the tort of passing off:

(i) that (the plaintiff) has sufficient reputation or goodwill in the mark, trademark, get-up or other indicia in question under which his particular goods or services are offered to the public;

(i) goodwill is the benefit added to the business through extensive trading operations which attract custom;