Ferrero S.P.A. v Koon Brother Sdn. Bhd. (WA-22IP-5-01/2025)

This is an application vide enclosure 11 by the Plaintiff, Ferrero S.P.A. ("the Plaintiff"), for an inter-partes interlocutory injunction pursuant to Order 29 of the Rules of Court 2012, seeking to restrain the Defendants, Koon Brothers Sdn. Bhd. (the "1st Defendant") and My Biscuit Marketing (the "2nd Defendant") (collectively "the Defendants"), from manufacturing, marketing, distributing, selling, offering for sale, advertising, promoting, or otherwise dealing in 2! ! products that allegedly infringe the Plaintiff's registered trademarks, well-known marks, and trade representation.

Having carefully considered the written submissions of both parties, the affidavit evidence placed before this Court, and the oral submissions of learned counsel, I allowed enclosure 11 with costs. I now state the grounds of my decision.

The Plaintiff is a company incorporated under the laws of Italy and is a member of the Ferrero Group, one of the world's largest confectionery manufacturers. The Ferrero Group manufactures and markets over 35 internationally renowned brands, including "Ferrero Rocher", "Nutella", "Kinder Bueno", "Kinder Chocolate", "Kinder Surprise", "Mon Cheri", "Hanuta", and "Tic Tac" (collectively referred to as the "Ferrero Brands").

The Plaintiff is the manufacturer of Nutella, a hazelnut and cocoa cream spread ("Nutella Spread"), which has its origins traced back to Mr. Pietro Ferrero, the founder of the Ferrero Group. Since 1965, the Nutella Spread has been packaged in an iconic glass jar design known as the "Nutella Jar", which has become a cultural and commercial icon worldwide.

The Nutella Spread is sold in various formats, including the Nutella Jar and mini packs or cups known as "Coppetta". The distinctive packaging, labeling, colour scheme, and overall visual appearance of the Nutella products constitute the "Nutella Get-Up", which the Plaintiff 3! ! asserts has acquired significant goodwill and distinctiveness. The representations of the Nutella Spread are reproduced below: Nutella® Spread (Nutella Spread encased in the NutellaJar) (Nutella Coppetta featuring the Nutella Jar design)

The Plaintiff is the registered proprietor of multiple "Nutella" trademarks in Malaysia, registered under Class 30 of the International Classification of Goods and Services (ICGS). These registrations date back to as early as 22nd August 1973 and include both word marks and composite marks featuring the term "Nutella" and associated designs. The registrations cover a wide range of goods, including confectionery, bakery products, chocolate spreads, and cocoa-based products. The details of the Trademark registration are reproduced below: 4! ! No. Trademark Class Registration No/s: (Registration Date)

30 M/063250 (22/8/1973) Confectionery and bakery goods; chocolate products, particularly a cream comprising cocoa with or without other ingredients, all included in class 30.

30 S/016817 (22/8/1973) Confectionery and bakery goods; chocolate products, particularly a cream comprising cocoa with or without other ingredients, all included in class 30.

30 2012007543 (8/5/2012) Bread, biscuits, cakes, chocolate or cocoa base beverages, pastry and confectionery, chocolate and chocolate products, chocolate or cocoa spread cream, ice-creams; all included in class 30.

30 TM2021035292 (8/11/2021) Pastries; confectionery; ice cream; honey; chocolate; chocolate products; cocoa-based spread cream; chocolate-based spread cream; chocolate and hazelnut-based spread cream; cocoa-based beverages. 5! !

30 TM2022008891 (8/3/2022) Coffee, tea, sugar, rice, tapioca, sago, substitute of coffee, flour, pressing of cereals (excluded forages); bread, biscuits, cakes, pastry and confectionary, eatable ice-creams; honey, treacle, yeast, baking powder; salt, mustard, pepper, vinegar, sauces; spices; ice; spread creams; chocolate and chocolate product, specially pastry for chocolate beverage, chocolate pastry, coverings, in particular chocolate coverings, chocolate, praline, chocolate products for decorations of Christmas tree, goods substantial in chocolate covering eatable with alcoholic stuffed, sugar articles, pastry, chewing gum, chewing gum without sugar, candies without sugar.

30 TM2022034494 (9/8/2022) Pastries; confectionery; ice cream; honey; chocolate; chocolate products; chocolate-based spread cream; chocolate spreads containing nuts; cocoa-based beverages.

NUTELLA®- 60 YEARS OF SMILES 30 TM2023000300 (3/11/2022) Pastries; confectionery; biscuits; chocolate; chocolate based products; chocolate spreads for use on bread; edible ices; ice cream; sorbets [ices].

30 TM2022006843 (8/12/2022) Coffee, tea, cocoa and artificial coffee; flour and preparations made from cereals; bread; pastries; confectionery; ice cream; sugar; honey; chocolate; 6! ! chocolate products; chocolate-based spreads; chocolate spreads containing nuts. (hereinafter collectively referred to as the “Malaysian Nutella Marks”)

Of particular relevance to this application is the "Nutella Coppetta Mark" (Registration No. 2018062041, registered on 8th June 2018), which specifically covers pastry, confectionery, chocolate, chocolate spread cream, and cocoa and hazelnut spread cream. The representations of the Nutella Coppetta mark is reproduced below: 30 2018062041 (8/6/2018) Pastry and confectionery, chocolate, chocolate spread cream, cocoa and hazelnut spread cream; all included in class 30.

It is the Plaintiff’s case that the "Nutella" marks are registered in almost 200 countries worldwide, with the earliest registration dating back to 1964.

The Plaintiff contends, and has adduced evidence to demonstrate, that its Nutella marks have attained the status of well-known marks due to extensive use and widespread recognition globally.

It is the Plaintiff’s case that it has a substantial global footprint, spanning Europe, North and South America, Africa, Asia and Oceania, 7! ! supported by 37 manufacturing plants across five continents. The Plaintiff further avers that its brands are sold in more than 170 countries, including Malaysia, and that its annual worldwide consolidated turnover (for all its brands) from 2020 to 2023 exceeded RM218 billion. Over the same period, the Plaintiff estimates that global sales of Nutella products alone exceeded RM34 billion.

It is also the Plaintiff’s case that it has established a substantial commercial presence in Malaysia through its subsidiary, Ferrero Malaysia Sdn. Bhd., and its exclusive distributor, DKSH Malaysia Sdn. Bhd. The Plaintiff avers that its products are widely available throughout Malaysia, both in physical retail outlets and on online e-commerce platforms. The Plaintiff further states that, between 2019 and 2023, it spent in excess of RM68 million on advertising and promotional activities in Malaysia, and generated sales revenue exceeding RM790 million over the same period.

The 1st Defendant is a private limited company incorporated in Malaysia and is involved in the business of manufacturing and distribution of biscuits and confectionaries.

The 2nd Defendant nature of business is as wholesaler, supplier, distributor, and agent of food products, including but not limited to biscuit and snack food.

It is the Plaintiff's case that the Defendants have manufactured, marketed, and sold products that closely imitate the Plaintiff's registered Nutella trademarks, trade representation, and overall get-up, including the distinctive Nutella Coppetta packaging. These 8! ! products are referred to collectively as the "Unauthorised Products". The descriptions of the Unauthorised Products are reproduced below:

The Plaintiff avers that the Unauthorized Products incorporate essential elements of the Nutella Coppetta Mark and the Nutella Get-Up, including similar packaging designs, colour schemes, labeling, and product configuration. The Plaintiff asserted that such conduct constitutes trademark infringement, passing off, infringement of well-known marks, and unlawful interference with the Plaintiff's business.

The evidence adduced by the Plaintiff includes samples and photographs of the Unauthorized Products, which bear striking similarities to the Plaintiff's Nutella products.

The Plaintiff contended that the Defendants' conduct is deliberate and calculated to ride upon the goodwill and reputation of the Plaintiff's 9! ! Nutella brand, thereby causing confusion and deception among consumers.

The Plaintiff's claims, as pleaded in its the Statement of Claim are founded on the following causes of action: a) Trademark infringement under Section 38 of the TMA 2019, arising from the Defendants' unauthorized use of marks identical or deceptively similar to the Plaintiff's registered trademarks; b) Infringement of well-known marks under Section 70 of the TMA 2019, on the basis that the Defendants' use of the Unauthorized Products is likely to cause confusion or dilute the distinctive character of the Plaintiff's well-known marks; c) Passing off, arising from the Defendants' misrepresentation to the public that the Unauthorized Products originate from or are associated with the Plaintiff, thereby damaging the Plaintiff's goodwill; and d) Unlawful interference with the Plaintiff's business and trade, arising from the Defendants' deliberate and wrongful conduct.

The reliefs sought by the Plaintiff include, inter alia, permanent injunctions, delivery up and destruction of infringing goods, damages or an account of profits, and costs. 10! !

Section 50 of the Specific Relief Act 1950 (“SRA 1950”) provides that:- “Preventive relief is granted at the discretion of the court by injunction, temporary or perpetual.

Section 51(1) of the SRA 1950 provides:- “Temporary injunctions are such as are to continue until a specified time, or until the further order of the court. They may be granted at any period of a suit, and are regulated by the law relating to civil procedure.”

Order 29 Rule 1(1) Rules of Court 2012 (“ROC 2012”) provides as follows:- “An application for the grant of an injunction may be made by any party to a cause or matter before or after the trial of the cause or matter, whether or not a claim for the injunction was included in that party’s originating process, counterclaim or third-party notice, as the case may be.”

It is trite law that an applicant seeking an interlocutory injunction must satisfy the Court on three essential requirements, as laid down in Keet Gerald Francis Noel John v Mohd Noor bin Abdullah & Ors [1995] 1 MLJ 193 (Keet Gerald Francis): a) Whether there is a serious question to be tried; b) Whether damages would be an adequate remedy; and c) Where the balance of convenience lies. 11! !

These principles have their roots in the seminal English decision of American Cyanamid Co v Ethicon Ltd [1975] AC 396 and have been consistently applied by Malaysian courts.

The burden lies on the Plaintiff to establish, on a prima facie basis, that it has a good arguable case. The Court is not required to embark on a mini-trial or to resolve disputed questions of fact at this interlocutory stage. The threshold is not high; what is required is that the Plaintiff demonstrate that its claim is not frivolous or vexatious and that there is a real prospect of success at trial.

If the Plaintiff succeeds in demonstrating a serious question to be tried, the Court must then consider whether damages would be an adequate remedy for the Plaintiff. If damages are not adequate, the Court must assess where the balance of convenience lies, having regard to all relevant factors.

I now turn to consider whether the Plaintiff has satisfied the three requirements as envisaged in Keet Gerald Francis.

Learned counsel for the Plaintiff submitted that there are bona fide serious questions to be tried in this action, arising from: a) Infringement of the Plaintiff's registered trademarks; b) Infringement of the Plaintiff's well-known marks; c) Passing off by misrepresentation 12! ! a) Infringement of the Plaintiff's registered trademarks

In addressing the first issue concerning the infringement of the Plaintiff's registered trademarks, learned counsel for the Plaintiff highlighted that in the latter part of 2021, it came to the Plaintiff's attention that the Defendants had infringed the Plaintiff's Nutella Coppetta Mark. Specifically it is the Plaintiff’s case that the Defendants had, without the Plaintiff's licence or consent, manufactured, imported into or exported from Malaysia, distributed for the purpose of sale, sold or offered for sale, advertised or promoted, and/or commercially dealt in the course of trade in Malaysia, goods and/or packaging bearing a sign similar to the Plaintiff's Nutella Coppetta Mark in Class 30 ("the Unauthorised Marks"). On this basis, learned counsel submitted that the Defendants' conduct gives rise to a likelihood of confusion on the part of the public, thereby constituting an infringement under Section 54(2)(b) of the TMA 2019.

Section 54(2)(b) TMA 2019 provides as follows:- “(2) A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign-

(a)…

that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public.” 13! !

For purposes of this application, the Plaintiff’s case for trademark infringement is based on the second limb of section 54(2) TMA 2019 as the infringing mark complained of is similar to the Plaintiff’s registered mark and is in relation to goods which are related/similar to the goods for which the Plaintiff’s Marks are registered for.

In Low Chi Yong (t/a Reynox Fertichem Industries) v Low Chi Hong & Anor [2018] 1 CLJ 287, the Federal Court held that, for trademark infringement, the plaintiff has to prove that:-

He owns a valid trademark;

(ii) The trademark was used in the course of trade without consent; and

(iii) The unlawful usage of the trademark owned by him had caused deception/ confusion among prospective customers.

In the present case, I find that the Plaintiff has, on the material presented before this Court, demonstrated proprietary rights in its Marks as set out in paragraphs 10-11 above.

The Plaintiff had also led evidence to show that the Defendants have used a sign which is confusingly similar to the Plaintiff’s Nutella Coppetta Mark. A representative comparison of the Plaintiff’s mark against the Defendants’ product and/or packaging bearing the Unauthorised Marks is exhibited as follows: 14! !

At this interlocutory stage, I am satisfied that a side-by-side comparison of the Plaintiff’s Nutella Coppetta Mark and the Defendants’ product and/or packaging bearing the Unauthorised Marks is capable of supporting the “similarity” requirement contemplated by section 54(2) of the TMA 2019. That, in turn, is sufficient to establish a bona fide serious issue to be tried on this limb of the Plaintiff’s claim.

In a case for trademark infringement the extent of similarity of the products must be examined. In this regard, the similarity of the Defendant’s Unauthorized Product and/or its packaging bearing the Unauthorised Marks and the Plaintiff’s Nutella Coppetta Mark must be examined.

The rules of comparison to be applied in ascertaining the similitude of marks are well-established and laid down in the often-quoted passage 15! ! by Parker J. in Pianotist Co's Application (1906) RPC 774 (Pianotist) as follows:- "You must take the 2 marks. You must judge of them both by their look and by their sound. You must consider the goods to which they are applied. You must consider the nature and kind of customer who would be likely to buy these goods. In fact, you must consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. You must remember not to judge the two marks side by side in isolation but to consider all factors."

The Pianotist test has been accepted and applied by the Malaysian Courts including in the following cases:- Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 2 MLJ 63 (Tohtonku) Caitlan Financial Corp NV v CA Seimer (M) Sdn Bhd & Anor [2001] 3 423 (Caitlan)

The factors for consideration whether a mark alleged to be similar and would cause confusion and deception to the public has been succintly summarised in Bata Ltd v Sim Ah Bah v Sim Teng Khor & Ors [2006] 6 MLJ 445 (“Bata case”) as follows:-

the idea of the mark is to be regarded;

the elements of the mark must be taken as a whole;

imperfect recollection of the mark by customers or purchasers should be taken into account;

the aural as well as the visual aspect of a customer towards the mark is relevant; and

all the circumstances of the trade must be considered. 16! !

In this regard this Court must embark on a proper examination of the Plaintiff’s Marks and the Defendants Unauthorized Products and/or its packaging bearing the Unauthorised Marks in deciding whether the Defendants Unauthorized Products and/or its packaging bearing the Unauthorised Marks is confusingly similar to the Plaintiff’s Nutella Coppetta Mark.

Learned counsel for the Plaintiff submitted that the essential features of the Plaintiff’s Nutella Coppetta Mark are as follows:-

The word ‘nutella’ in lower case which is represented with the letter ‘n’ in black followed by the letters ‘utella’ in red;

The presence of the devices of hazelnuts and green leaves which appear prominently;

The iconic Nutella Jar which features a very distinctive and recognisable shape that comprises of a squat, bulbous body that is wider at the middle and tapers slightly towards the base and the top, above the main body the jar has a noticeably narrower cylindrical neck to accommodate the cap, the large white cap which is wide, flat plastic screw cap that is proportionally large compared to the body and the transparent glass or plastic body where the contents comprising of chocolate hazelnut spread are clearly visible, giving the jar a unique appearance.

The white label that runs across the middle of the jar with the transparent portions appearing and above and below the white 17! ! label.

Juxtaposing this against the Defendants Unauthorized Products and/or its packaging bearing the Unauthorised Marks learned counsel highlighted the following:-

The use of the prefix “nu” in black font followed by red lettering mimics the stylisation of the Plaintiff’s “Nutella” mark, which comprises a black “n” followed by red “utella” in a similar lowercase typeface;

The adoption of devices such as hazelnuts and green leaves on the product label, which are prominent features of the Nutella packaging;

The use of a jar-like container with a white lid, which closely resembles the iconic packaging of Nutella and contributes to the overall visual association in the minds of consumers;

The presence of a red banner and colour schemes that further reinforce the connection to the Plaintiff’s get-up;

The cumulative presentation of these elements, typography, colour palette, graphics, and packaging style, collectively mirrors the Plaintiff’s trade dress in a manner that is likely to mislead.

In assessing whether the Plaintiff has raised a bona fide issue to be tried on trade mark infringement, I am guided by the well-known 18! ! Pianotist approach. The enquiry is not a meticulous search for differences, but whether, notwithstanding such differences, the main idea conveyed by the two marks is the same. This Court must consider the leading and distinctive features by which the mark is likely to be recalled. Where the impugned sign appropriates the feature that strikes the eye and fixes itself in the mind, a likelihood of confusion may arise.

Applying those principles at this interlocutory stage, I am satisfied that the Plaintiff has raised a bona fide issue to be tried that the Defendants’ Unauthorised Products and/or their packaging bearing the Unauthorised Marks are confusingly similar to the Plaintiff’s Nutella Coppetta Mark, thereby engaging section 54(2)(b) of the TMA 2019.

This conclusion is reinforced by the Defendants’ own position on the origin and commercial dealing of the Unauthorised Products. The Defendants have expressly admitted that the Unauthorised Products were manufactured by the 1st Defendant. There is therefore no dispute, at least for present purposes, that the goods originated from the 1st Defendant.

The Plaintiff additionally highlights that the Unauthorised Products have been marketed and/or promoted beyond Malaysia, including by export and offering for sale in numerous overseas markets. The Defendants admit marketing and export activity and likewise contend entitlement to sell the products as their own. The Plaintiff maintains that the same conduct constitutes continuing infringement. These competing positions, by themselves, underscore that there is a genuine controversy requiring determination at trial. 19! !

In light of the foregoing—namely, the arguable similarity of the Unauthorised Marks to the Plaintiff’s Nutella Coppetta Mark, the admissions as to manufacture and commercial dealing—I am satisfied that the Plaintiff has demonstrated bona fide issues to be tried that the Defendants’ acts of manufacturing, exporting, distributing, offering for sale, selling, advertising and promoting the Unauthorised Products constitute infringement under section 54(2)(b) of the TMA 2019, in that such use is capable of resulting in a likelihood of confusion on the part of the public. b) Infringement of the Plaintiff's well-known marks and Passing off by misrepresentation

I now turn to the Plaintiff’s complaint founded on (i) infringement of its well-known marks, and (ii) passing off by misrepresentation. In my view, both heads raise bona fide issues to be tried sufficient, at this interlocutory stage, to warrant full ventilation at trial.

Learned counsel for the Plaintiff submitted that the Plaintiff’s “Nutella” marks have been recognised as well-known marks in a number of foreign jurisdictions, including decisions of courts in Singapore and the European Union, with the most recent decision dated 12.12.2024. On the material presently before me, that recognition is at least capable of supporting the Plaintiff’s contention that “Nutella” enjoys well-known mark status.

Where a mark is well-known, the statutory protection is found in section 76 of the TMA 2019. Section 76(1) of the TMA 2019 provides that:- 20! ! “(1) A well-known trademark shall be entitled to protection under this section –

Whether or not the trademark has been registered in Malaysia, or an application for the registration of trademark has been made to the Registrar; and

Whether or not the proprietor of the trademark carried on business, or has any goodwill, in Malaysia.

Subject to subsections (5) and (6), the proprietor of a well-known trademark shall be entitled to restrain by injunction the use in Malaysia, in the course of trade and without the proprietor’s consent, of any trademark which, or an essential part of which, is identical with or similar to the proprietor’s trademark-

in relation to identical or similar goods or services, where the use is likely to cause confusion; or

in relation to any goods or services, where the use of the trademark would indicate a connection between those goods or services and the proprietor, and is likely to damage the interests of the proprietor. “

Section 76(1) makes plain that protection may be invoked irrespective of whether the mark is registered in Malaysia, and irrespective of whether the proprietor carries on business or has goodwill in Malaysia. Section 76(2) further entitles the proprietor to restrain, by injunction, unauthorised use in the course of trade of a mark identical or similar to the well-known mark, whether in relation to identical/similar goods where confusion is likely, or in relation to any goods where the use suggests a connection and is likely to damage the proprietor’s interests.

Against that statutory framework, I am satisfied that there are bona fide issues to be tried as to whether the Defendants’ use of the impugned signs is (i) likely to cause confusion on the part of the public, and/or (ii) likely to indicate a connection between the Defendants’ goods and the 21! ! Plaintiff, with consequent damage to the Plaintiff’s interests. Put another way, there is a real issue to be tried whether members of the public are likely to be misled into believing that the Unauthorised Products are products of the Plaintiff, or are an extension, variant, or authorised line associated with the Plaintiff’s Nutella products.

Flowing from this, there is likewise a bona fide issue to be tried on damage. I accept the Plaintiff’s submission that where consumers associate the Unauthorised Products with the Plaintiff’s Nutella brand, they would naturally expect a comparable level of quality. Any divergence in quality is beyond the Plaintiff’s control and may, if the Plaintiff succeeds at trial, be shown to tarnish the Plaintiff’s goodwill and reputation. At this stage, that alleged harm is neither fanciful nor remote.

I would add that section 76 is designed precisely to safeguard proprietors of well-known marks from unauthorised exploitation, even where local registration is absent. In the present case, the Plaintiff maintains not only that its Nutella marks are well-known, but also that they enjoy substantial recognition among Malaysian consumers. Whether that contention is ultimately established is a matter for trial; but for present purposes, the Plaintiff has demonstrated a bona fide basis to invoke section 76 and to contend that the Defendants’ impugned conduct falls within its mischief.

Reverting to the issue of passing off, the requirements of the tort of passing-off were laid down by the House of Lords in Erven Warnink BV v J Townend and Sons (Hull) Ltd [1979] 2All ER 927 which has been approved and followed by the Malaysian Apex Court in Seet 22! ! Chuan Seng & Anor v Tee Yih Jia Foods Manufacturing Pte Ltd [1994] 2 MLJ770 at pages 781 to 782 and can be summarised into the following 3 essential elements: -

goodwill must be attached to the goods or services supplied by the plaintiff in the mind of the purchasing public by association with the identifying get-up under which the plaintiff's goods or services were offered to the public, such that the get-up was recognised by the public as distinctive specific of the plaintiff's goods or services;

there must be a misrepresentation by the defendant to the public, whether intentional or not, leading or likely to lead the public to believe that goods or services offered by him were the goods or services of the plaintiff; and

the plaintiff must demonstrate that he suffered or that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services was the same as the source of those offered by the plaintiff.

In order to determine whether there is goodwill attached to the Plaintiffs goods, I refer to the case of Yong Sze Fun &Anor (t/a Perindustrian Makanan & Minuman Layang-Layang) v Syarikat Zamani Hi Tamin Sdn Bhd &Anor [2012] 1 MLJ 585 relied on by learned counsel for the Plaintiff where the Court held as follows: - 23! !

That goodwill is the benefit added to the business through extensive trading operations which attracts customs;

That trademark or get up is the badge and indicia that signifies, indicates and identifies the goodwill and the business;

That goodwill is created through and by means of trading activities; and

That the more extensive the trading activities are, which must necessarily include sales and promotions, the more value that would be attached to the goodwill.

Premised on the evidence already summarised (including the Plaintiff’s scale of sales and promotional spend in Malaysia), I am satisfied that the Plaintiff has, at the very least, raised a bona fide issue to be tried that it enjoys substantial goodwill and reputation in Malaysia in relation to its Nutella products and get-up.

The real contest, at this interlocutory stage, is misrepresentation. The law is clear that misrepresentation need not be express; it is more commonly implied through the adoption or imitation of a mark, name or get-up associated in the public mind with the plaintiff. In A.G. Spalding & Bros v A.W. Gamage Ltd (1915) 32 RPC 273, approved locally including in Yong Sze Fun (supra), Lord Parker emphasised that a passing off claim rests on a false representation, which may be implied where the defendant uses or imitates a mark or get-up with which the plaintiff’s goods are associated.

On the Plaintiff’s case, the Unauthorised Products and/or their packaging incorporate most, if not all, of the visual cues said to characterise the Plaintiff’s Nutella spread and Nutella get-up. The 24! ! Plaintiff relies on a comparison demonstrating, among others, the adoption of the “nu” prefix, the stylised lettering and colour combination, and the recurring visual elements associated with Nutella, including the depiction of hazelnuts and accompanying design features. At this stage, that material is sufficient to raise a bona fide issue to be tried that the Defendants have adopted the Plaintiff’s distinctive get-up in a manner capable of conveying an implied association. I reproduce in this judgment the comparison table relied on the Plaintiff between the Unauthorized Products and the Nutella Spread which allegedly demonstrates how the Defendants have incorporated the essential elements of the Plaintiff’s Nutella Spread/ Nutella Get-Up:- Nutella Spread / Nutella Get-Up Unauthorised Product NS1! NS2! NS4! NS1! NS2! NS4! NS3! NS3! UP4! UP5! UP1! UP2! UP3! 25! ! UP1 – The prefix “nu” on the Unauthorised Product is identical to those on the Nutella Spread and Nutella Get-Up at NS1. UP2 – The first two letters “nu” in black and lowercase font are identical to those on the Nutella Spread and Nutella Get-Up at NS2. UP3 – The remaining letters “wafer” in red and lowercase font are similar to those on the Nutella Spread and Nutella Get-Up at NS3. UP4 – The hazelnuts (opened and half-opened hazelnuts) and green leaves are identical to the features of the Nutella Spread and Nutella Get-Up at NS4. UP5 – The jar-shaped packaging with white lid with vertical lines depicting ridges, white rectangular label on the body of the jar-shaped packaging

In addition to the above, it is the Plaintiff’s case that the Defendants have also gone on to adopt the essential elements of another product of the Ferrero Brand, namely the ‘Hanuta’ hazelnut wafer product. For ease of comparison, a representation of the same is reproduced below:- Hanuta Hazelnut Wafer & Get-Up [hereinafter referred to as the “Hanuta Wafer”]

Having regard to the overall impression conveyed, I am satisfied that there is a serious issue to be tried that the Unauthorised Products imitate the Plaintiff’s get-up in a way that is calculated to take 26! ! advantage of imperfect recollection, and thereby mislead consumers into believing that the Defendants’ products are connected with, authorised by, or a variant line of, the Plaintiff’s Nutella products.

The Defendants’ contended that the respective products can be distinguished by their type or nature. That may be a point for trial. However, for present purposes, the Plaintiff has shown an arguable case that the Defendants’ adoption of the essential elements of the Plaintiff’s get-up—including the font styling, colour composition, overall presentation, and the fact that both parties’ goods fall within the broader confectionery/snack category and are marketed through similar channels—tends to create a misleading association in the minds of consumers.

This is further reinforced by the Defendants’ own conduct. The 1st Defendant has filed trade mark application TM No. 2022020785 in Class 30 covering, inter alia, chocolate-and-nut spreads, biscuits, cookies, pastries and confectionery, wafers and related goods (“the Unauthorised Application”). The Defendants admit the filing and do not dispute that the proposed specification overlaps with goods of the kind dealt with by the Plaintiff. At this stage, this lends weight to the Plaintiff’s contention that the Defendants’ branding is not confined to some distant category, but is positioned to move directly into the Plaintiff’s commercial space.

With regard to actual damage, it is well-established that a plaintiff need not prove actual loss at this stage; a probability of damage is sufficient. In Yong Sze Fun (supra), the court reiterated that damage may be inferred where parties operate in a common field of activity, and that 27! ! the relevant damage is damage to goodwill. On the Plaintiff’s case, the Unauthorised Products compete in the same market segment and are presented in a manner said to appropriate the Plaintiff’s get-up. In those circumstances, there is serious issue to be tried that the Plaintiff’s goodwill is likely to be harmed by erosion, diversion of custom, and/or reputational dilution. In the case of Yong Sze Fun, the Court held at pages 676 and 678 as follows: - “[240] The law is settled. Actual damage need not be proven. It is sufficient to show a probability of damage. In this regard, the case of HP Bulmer Ltd and Showerings Ltd v J Bolliger SA and Champagne Lanson Pere Et Fils (1978) RPC 79 immediately comes to the forefront. There, Byckley LJ had this to say at p 95 of the report: It is well settled that a plaintiff in a passing off action does not have to prove that he has actually proved that he has actually suffered damage by loss of business or in any other way. A probability of damage is enough, but the actual or probable damage must be damage to him in his trade or business, that is to say, damage to his goodwill in respect of that trade of business. Goodwill is a word of wide import [245] On the facts, there is no necessity to prove actual damage. Since the parties are engaged in a common field of activity, damage would be presumed and inferred by the court”

Finally, the Plaintiff points to the Defendants’ marketing reach, including export activity said to extend to numerous countries. If the Plaintiff succeeds at trial, the potential harm to goodwill would not be confined to Malaysia. For present purposes, this supports the Plaintiff’s contention that the risk of damage is real and substantial, thereby 28! ! satisfying the threshold of a bona fide serious issue to be tried for passing off in support of interlocutory relief.

In addressing this point, it is the Plaintiff’s position that damages would not be an adequate remedy in this case. The Plaintiff relies on the following grounds:

Damage to Goodwill and Reputation

The Plaintiff contends that the primary harm it suffers from the Defendants' infringing conduct is not pecuniary in nature, but rather damage to its goodwill and reputation, which have been painstakingly built over decades.

To add further, learned counsel for the Plaintiff submitted that goodwill and reputation are intangible assets that are inherently difficult to quantify. Once the Plaintiff's distinctive marks and get-up are diluted by the Defendants' infringing acts, the erosion of consumer trust and the blurring of the Plaintiff's brand identity cannot be measured in monetary terms nor reversed through an award of damages.

(ii) Irreversible Dilution of Distinctiveness

Learned counsel for the Plaintiff submitted that the continued use of the Unauthorized Products will cause irreversible dilution of the distinctive character of the Plaintiff's well-known Nutella marks. Once 29! ! the marks lose their distinctiveness, the damage cannot be undone by a monetary award.

(iii) International Dimension

Learned counsel further emphasised that the Defendants' infringing activities are not confined to Malaysia but extend to over 70 countries worldwide. The damage caused to the Plaintiff's goodwill and reputation is therefore global in scope.

In this regard, learned counsel submitted that the Defendants have not provided any evidence to show that they are in a financial position to compensate the Plaintiff for the significant damage caused to its goodwill and reputation worldwide. In the absence of such evidence, it cannot be assumed that damages would be an adequate remedy.

Learned counsel for the Defendants contended that damages would be an adequate remedy. Learned counsel for the Defendant submitted that the Plaintiff's claim is ultimately monetary in nature and that any loss suffered by the Plaintiff can be adequately compensated by an award of damages.

I have considered this point and I find that damages would not be an adequate remedy in this case.

The nature of the harm alleged by the Plaintiff is damage to goodwill and reputation, not merely loss of sales or profits. Goodwill is an intangible asset that is inherently difficult to quantify. The Plaintiff has established that its Nutella marks have attained well-known status and 30! ! that they enjoy substantial goodwill and reputation, not only in Malaysia but globally. The dilution of such marks and the erosion of consumer trust and brand distinctiveness would cause harm that is irreversible and cannot be measured in monetary terms. Further thereto, the Defendants' infringing activities are not confined to Malaysia. The Defendants have admitted that the Unauthorized Products are sold in Malaysia and exported to over 70 countries worldwide. The damage to the Plaintiff's goodwill and reputation is therefore global in scope.

In the case of Elan Digital v Elan Computers (1984) FSR 373 at 385 it was held that: - “In trade mark infringement cases, irreparable damage, in this sense, is relatively easily shown, since infringement may easily destroy the value of a mark or at least nullify expensive advertising in a way that is hard to quantify for the purposes of an inquiry into damages”.

In the case of SAP Malaysia Sdn. Bhd. v I World HRM Net Sdn. Bhd. & Anor [2006] 2 MLJ 678, where it was held that damage to the reputation and goodwill are impossible to assess and qualify and therefore the Plaintiff cannot be adequately compensated by an award of damages. Vincent Ng J (as his Lordship then was) held at page 682 as follows:- “[9] It is to be noted that damage to reputation and goodwill are impossible to assess and quantify and as such the plaintiffs cannot be adequately compensated in monetary terms” 31! !

The above case was cited with approval in the case of Aventis Farma SA (Malaysia) Sdn. Bhd. & Anor v Rohibul Sabri Abas & Anor

7 CLJ 525 at 543, where the court in determining the question of adequacy of damages held as follows: “The complaint of the plaintiffs are expressed in the following persuasive language. Their sales will not only be seriously affected but the continuing infringing activities of the defendants will irreparably damage the plaintiff’s goodwill and reputation in Malaysia. And, as such reputation and goodwill are impossible to assess and quantify, the plaintiffs cannot be adequately compensated in monetary terms (see SAP Malaysia Sdn. Bhd. v I World HRM Net Sdn. Bhd. & Anor [2006] 2 MLJ 678)” (Emphasis added) “I am much persuaded by the above compelling reasons put forward by the plaintiff’s counsel in his plea for an interlocutory injunction. …In similar vein, in Carrol & Ors v Tomado Ltd. [1971] RPC 401 it was held that damages to plaintiffs would be irreparable in that, inter alia, damage to the plaintiffs present and future business plans would be very difficult to quantify.”

Drawing these strands together, I am satisfied that damages would not be an adequate remedy for the Plaintiff. On the Plaintiff's case, the continued dealing in the Unauthorised Products exposes the Plaintiff to a real risk of deception and a continuing dilution of its brand equity, with reputational consequences extending beyond immediate lost sales and the domestic market. This is precisely the category of harm for which injunctive relief is ordinarily appropriate. The harm the Defendants would suffer if restrained is, by contrast, wholly pecuniary in nature and readily quantifiable. The Defendants have elected not to adduce any evidence of their dealings, revenues, or the proportion of their business constituted by the Unauthorised Products. In such circumstances, the 32! ! Court may safely infer that any alleged prejudice to the Defendants can be adequately compensated by damages should the injunction later be shown to have been wrongly granted.

Finally, I note that the Plaintiff has given the usual undertaking as to damages. If it later transpires that the injunction ought not to have been granted, the Defendants have the benefit of that undertaking as a protective mechanism. Where, on the one hand, the Plaintiff faces injury not readily compensable in damages, and, on the other, the Defendants’ prejudice is principally pecuniary and capable of being addressed through the undertaking, the balance favours the grant of interlocutory relief.

In addressing the third limb of the Keet Gerald’s test, learned counsel for the Plaintiff submitted that the balance of convenience lies decisively in favour of granting the injunction. Learned counsel highlighted the harm suffered by the Plaintiff from the continued infringement is irreparable and cannot be compensated in damages. The Plaintiff's goodwill and reputation, built over decades, would be irreversibly damaged if the Defendants are permitted to continue their infringing activities pending trial.

Learned counsel further added that the Defendants' infringing activities transcend Malaysian borders and extend to over 70 countries. The damage to the Plaintiff's goodwill and reputation is therefore international in scope. By contrast, the prejudice to the Defendants, if restrained, is localized and monetary. Learned counsel drove home the 33! ! point that the grant of an injunction would serve to maintain the status quo and prevent further erosion of the Plaintiff's rights pending the determination of the action at trial. This is consistent with the purpose of interlocutory relief.

In refuting the points raised by the Plaintiff, learned counsel for the Defendants submitted that the balance of convenience does not favour the grant of an injunction. Learned counsel submitted that the Defendants would suffer significant financial prejudice if restrained from selling the Unauthorized Products, which form part of their business and are exported to over 70 countries. As such learned counsel submitted any prejudice to the Plaintiff can be adequately compensated in damages and that the balance of convenience lies in refusing the injunction.

Having weighed the submission advanced by both parties, I am satisfied that the balance of convenience lies in favour of granting the injunction.

First, the Plaintiff's asserted harm—damage to goodwill, reputation, and distinctiveness—is qualitatively different from, and generally more difficult to remedy than, the Defendants' complaint of lost sales. The former is not readily measurable and may be permanent, while the latter is primarily pecuniary and, in the ordinary course, capable of quantification.

Second, the scale and reach of the infringement matters. Where the Unauthorised Products are said to circulate beyond the domestic 34! ! market, the risk of multiplying confusion and diluting the Plaintiff’s brand equity increases with time.

Third, the Defendants have not placed before the Court evidence enabling a principled assessment of their claimed prejudice. As I have stated earlier there is no disclosure of revenue, turnover, profit margins, or reliance on the Unauthorised Products. Where a party asserts grave inconvenience but withholds the very material that would allow the Court to evaluate it, the Court is entitled to treat that assertion with caution.

Fourth, the injunction sought is, on its face, targeted: it restrains dealings in the Unauthorised Products and the use of the impugned marks and get-up, not the Defendants’ entire business. This is a familiar and important feature in intellectual property cases. As observed in Aventis Farma SA (Malaysia) Sdn Bhd & Anor v Rohibul Sabri Abas & Anor (2008) 7 CLJ 525, an injunction limited to the infringing product line ordinarily mitigates prejudice, because the defendant remains free to trade in its other products.

In the case of Aventis Farma the court in assessing the balance of convenience whether to grant the plaintiff’s application for an injunction held as follows: “[28] The injunction sought is only in respect of Daxotel but the defendants can continue selling their many other drugs to purchasers, thereby maintaining their relationships. This will not harm the defendants trade in a manner which cannot be compensated in damages. Thus, they would not be adversely affected substantially by the injunction. It would follow, and I hold, that the balance of convenience favours the plaintiffs. 35! ! The ratio in Americaya Singapore Pte Ltd v. Americaya Malaysia Sdn. Bhd. [1994] 1 MLJ 695, is illustrative, as therein it was held that: “…the balance of convenience lay in favour of the plaintiffs. The defendants would not be put out of business by this order as they are not dealing with ‘Americaya’ goods only”. “Also, this court should give due recognition to the fact that the defendants began selling Daxotel in Malaysia despite being quite aware of the fact that, by doing so, they would be courting litigation” “In the event, I hold that to deny an interim injunction in the instant case will adversely impact upon the public interest in preserving intellectual property rights.” “…And, for the same compelling reasons aforesaid I am satisfied that no conditions to the granting of this interim injunction should be imposed upon the plaintiffs.”

Based on my discussion in the preceding paragraphs, I find the balance of convenience favours preserving the status quo. The status quo must be the state of affairs between the parties immediately prior to the Defendant's infringing acts, which are calculated to exploit the business reputation and goodwill of the Plaintiffs.

In New-West Management Group Sdn Bhd v Ng Ah Kow & Anor [2008] 8 CLJ 18, Ramly Ali J. (as His Lordship then was) made the following observation in relation to "status quo" at page 47: "[83] Based on the above, the balance of convenience lies heavily in favour of granting the interlocutory injunction. The granting of the injunction would preserve status quo until the matter is finally dispensed with at the trial. The plaintiffs' long-established reputation and goodwill will be preserved and prevented from being dissipated with the grant of the interlocutory injunction. The reputation and goodwill established as a result of the quality of the plaintiff's services would further not be lost and their position in the market they 36! ! had established through long standing presence would not be unlawfully appropriated."

In Nano G Central Sdn Bhd & Anor v Eva Energy Sdn Bhd & Ors [2021] 1 LNS 660, the High Court in deciding to grant the Plaintiffs' prayer for an interlocutory injunction, made the following consideration in relation to "status quo" at page 18: "[41] This Court need to consider whether the status quo should be maintained. In my judgment if the status quo is to be maintained the only order that can properly be made at this interlocutory stage is to allow the Plaintiffs' application to restrain the Defendants from using the words "nano-g": as depicted in the Plaintiffs' nano-g trademark, namely in their combined form, until the action is finally litigated. The injunction does not restraint the Defendants from continuing with their business and they may even choose to use the word "nano" or the letter "G", separately and not together, as their mark."

For the reasons adumbrated above, I am convinced that an interlocutory injunction should be granted to preserve the status quo until the determination of the action at trial. I am persuaded that greater injustice would be occasioned by refusing the injunction than by granting it. The proper course is therefore to preserve the status quo ante, restrain the alleged infringing conduct pending trial, and ensure that the final determination of the parties’ rights is not undermined by continued market activity in the interim.

I would add that the public interest in preventing consumer confusion reinforces this conclusion. Where there is a serious issue that the impugned get-up and marks are likely to mislead consumers as to 37! ! origin or connection, the Court should be slow to allow that state of affairs to persist pending trial. Accordingly, I find that the balance of convenience supports the grant of an interlocutory injunction on the terms sought, subject always to the Plaintiff’s undertaking as to damages.

For completeness, I would like to address the issue raised by the Defendants in the Plaintiff’s delay in applying for an interlocutory relief.

The leading authority on whether a delay is enough to disentitle the plaintiff from obtaining an interlocutory injunction is the case of Legg v Inner London Education Authority [1972] 1 WLR 1245, where Megarry J held at pages 1259 and 1260 that: "What seems to me important is not so much the length of the delay per se, but whether the delay has in some ways made it unjust to grant the injunctions claimed."

Therefore, the mere act of delay nor the length of delay per se that the Court should consider when deciding to grant or refuse an interlocutory injunction. Instead, the Court should ask the question on whether the alleged delay has prejudiced the Defendant. In Larut Consolidated Bhd & Anor v Khoo Ee Bee & Ors [1997] 5 MU 77, the High Court held at page 95 as follows: “The mere act of delay, even if there was, is not per se a factor which miligates against the grant of an injunction. The maxim ’delay defeats equity must not be applied with the blindfold that symbolizes justice. The facts of each case must be looked into. I hold that for delay to operate as a bar, it is essential that it should prejudice the defendants. From the facts of this case, in no way whatsoever were the defendants 38! ! disadvantaged by the delay. In fact, the delay in this case had acted to the defendants' benefit since they have had the use of the money for the length of the delay. On the contrary, it is the plaintiffs who are out of pocket for a large sum of money.! in exercising its discretion in granting or refusing in injunction where delay is raised, the court must consider:

whether in all the circumstances of the case and with particular regard to the facts before the court, there was a delay in the making of an application,

if there was a delay, whether the applicant had given an explanation in his affidavit to the court,’ and

if so, whether the delay in such a case was reasonable. If the court finds that the delay was reasonable, then it will exercise its discretion to grant the interlocutory injunction provided the ingredient of real injustice is present.”

In CPC (United Kingdom) Limited and Anr. v Keenan and Anr. [1986] F.S.R. 527, the plaintiffs first became aware of the existence of the "Oxbridge" products at the end of August 1985 when the manager of a shop in Oxford noticed a display of such products in the Oxford Selfridges store. On 24 September, the managing director of the 2nd plaintiff wrote to Oxbridge Selected Products expressing the plaintiffs' concern at the use of the name "Oxbridge," given the OXFORD trade mark. The view was expressed that confusion would be caused by the continued use of "Oxbridge." Subsequently, there were without prejudice discussions between the parties. By 17 January, it appeared that the 1st defendant had made clear that her stance was inflexible and therefore, proceedings were commenced on 5 February, when the 39! ! writ was issued and the notice of motion for interlocutory injunction was served.

In granting an interlocutory injunction, Justice Peter Gibson held at pages 528 and 534 as follows: "Delay on the plaintiffs' part was due to their understandable desire to avoid litigation and did not justify the denial of interlocutory relief. I bear in mind very much the question of delay, on which I have heard extensive argument. Mr. Hill-Smith has complained of the delay on the part of the plaintiffs in taking out these proceedings. In particular he complains about the delay after the letter from Mrs. Keenan of 22 November, when Mrs. Keenan made her position clear. But Mr. Fysh has submitted that an appropriate test is not so much the length of the delay per se but that whether the delay has made it unjust to grant the injunction that is sought. (See Legg v. Inner London Education Authority [1972] 1 W.L.R. 1245 at 1259-60 per Megarry J.), and I think that is the right approach. I do not regard it as wrong for plaintiffs, particularly a large corporation, when faced with a person trading either as a sole trader or with her husband, to seek to arrive at a solution out of court. There was the period during which Mrs. Keenan and the plaintiffs corresponded in without prejudice correspondence. It would not have been unrealistic of the plaintiffs to take the view that the court would be unlikely to stifle a defendant at short notice at the most important period of the defendant's trade, that is to say at Christmas time."

I accept the submissions advanced by learned counsel for the Plaintiff that, at all material times, the Plaintiff has acted in good faith and taken all reasonable steps to resolve the dispute amicably. The Plaintiff averred that it first served the Defendants with a cease-and-desist letter, following which the parties engaged in several rounds of without-prejudice correspondence. The Plaintiff further averred that, to 40! ! demonstrate its genuine desire to avoid litigation, it issued a final letter in July 2024 giving the Defendants a last opportunity to cease the alleged infringing activities and to settle the matter without recourse to court proceedings. The Plaintiff also averred that each subsequent follow-up with the 1st Defendant’s solicitors was met with repeated excuses. When it became apparent that the Defendants had no genuine intention of resolving the matter, the Plaintiff was left with no alternative but, as a last resort, to commence this action.

On the averments before me I find no difficulty in concluding that the Plaintiff had, after the Defendant’s failure to comply with its demands, taken diligent steps to compile and review the necessary documentary evidence, and to prepare and file the present suit and this application for injunctive relief. In my considered view the time taken to do so was both reasonable and necessary in the circumstances, and any suggestion of undue delay is wholly unfounded.

Therefore, the Defendant's contention regarding the purported delay and the alleged lack of urgency for an interlocutory relief is wholly unsubstantiated. The Defendant was acutely aware of its significant contribution to the delay, if any existed. Furthermore, the timing of the current application's filing does not prejudice the Defendant, who was at all material times on notice and fully aware of the Plaintiff's rights. 41! !

For the reasons adumbrated above, I allowed enclosure 11 with costs of RM 10,000.00. Dated this day of 19th February 2026. -sgd-EDWIN PARAMJOTHY MICHAEL MUNIANDY JUDICIAL COMMISSIONER COMMERCIAL DIVISION (NCC 7) HIGH COURT OF MALAYA KUALA LUMPUR Counsel: For the Plaintiff : Mr. Jasdev Singh Gill and Ms. Trimann Raj Kaur Johl (Messrs. Jasdev Chambers) For the Defendant : Ms. Noor Nabila binti Shamsudin (Messrs. Chris Lee & Partners)