Consitex SA v TCL Marketing Sdn Bhd [2008] 8 CLJ 444 – High Court

The Plaintiff is the registered proprietor of the trade marks “ZEGNA” and “ERMENEGILDO ZEGNA” in Malaysia in respect of clothing, boots, shoes and slippers. The garments bearing the Plaintiff‟s trade mark had been sold in Malaysia since 1992.  Defendant had been trading under the “EMMER ZECNA” trade mark for garments since 1997. Defendant applied to register “Z EMMER ZECNA & Device”. The Plaintiff opposed the application and argued that the trade mark “EMMER ZECNA” was confusingly similar to the Plaintiff‟s registered trade marks and thus amounts to infringement of its trade marks. Defendant contended that the marks were not identical and did not so closely resemble the Plaintiff‟s trade marks as to be likely to deceive or cause confusion in the course of trade.  Plaintiff‟s claim was dismissed by the High Court. 

When applying the test laid down in Re Pianotist and Tohtonku of whether a mark is likely to deceive or cause confusion, the comparison of the marks, visually and orally, must be done in its entirety. The Court held that there were substantial and significant differences between the marks which would not give rise to confusion in the market.  It was also held that there was no likelihood of consumers being deceived at the point of sale as the distribution channels are different. Plaintiff‟s garments are sold in boutiques located in exclusive locations whereas the Defendant‟s garments are sold in island counters in departmental stores, supermarkets, and shopping outlets in shopping malls. The Plaintiff‟s and Defendant‟s goods are not in direct competition. 

Plaintiff also failed to show evidence that there was such a “wrong purchase” in the mistaken belief that the Defendant‟s goods were the same as that of the Plaintiff. The survey report tendered by the Plaintiff had not provided any direct evidence as it was conducted post date of the writ and prior to the trial and not prior to the filing of the writ.  The Plaintiff had failed to discharge their burden of proof on a balance of probabilities to satisfy the Court that Defendant had infringed Plaintiff‟s registered trade mark or had passed off their products as that of the Plaintiff‟s products.