IN THE KUALA LUMPUR REGIONAL CENTRE FOR ARBITRATION BETWEEN CHELSEA TEA COMPANY (CTC) (CLAIMANT) AND ALMOND TEA COMPANY (ATC) (RESPONDENT)

Transcription

1 C THE 11 TH LAWASIA INTERNATIONAL MOOT COMPETITION IN THE KUALA LUMPUR REGIONAL CENTRE FOR ARBITRATION 2016 BETWEEN CHELSEA TEA COMPANY (CTC) (CLAIMANT) AND ALMOND TEA COMPANY (ATC) (RESPONDENT) MEMORIAL FOR THE CLAIMANT 1

2 TABLE OF CONTENTS TABLE OF CONTENTS... 1 STATEMENT OF JURSIDICTION... 1II INDEX OF AUTHORITIES... 1V QUESTIONS PRESENTED... VIII STATEMENT OF FACTS... IX SUMMARY OF PLEADINGS... XII PLEADINGS... 1 I. THE APPLICABLE LAW THAT SHOULD BE APPLIED IS THE LAW OF MALAYSIA... 1 A. Malaysian Law should be the applicable law based on the conflict of law rule.. 1 B. The principle of lex loci delecti also points to Malaysian Law... 2 C. The principle of lex loci protectionis points to Malaysian Law... 2 D. The principle of lex contractus points to Malaysian Law... 3 E. Lex loci solutionis principle points to Malaysian Law... 3 F. Intention of the parties can be implied to have chosen Malaysian Law... 3 II. THE RESPONDENT HAS BREACHED CLAUSE 4.2 OF THE DISTRIBUTION AGREEMENT... 5 A. The Respondent s mark is similar to the Claimant s lion logo mark... 5 B. Clause 4.2 of the Distribution Agreement is not a restraint of trade clause... 5 C. Concurrent actions in contract and torts are possible... 6 I

3 III. THE RESPONDENT S USE OF THE WORD CEYLON IS MISLEADING AS TO THE QUALITY AND ORIGIN OF THE GOODS. 7 A. The word Ceylon Tea is a protected geographical indication... 7 B. The use of such word could pass off as to the quality and origin of the goods... 8 IV. THE RESPONDENT S HAS INFRINGED THE CLAIMANT S MARK AND HAS PASSED OFF THEIR GOODS AS THAT OF THE CLAIMANT S A. The Respondent has infringed the Claimant s mark through their use of ATC s mark B. The tort of passing off has been committed by the Respondent PRAYER FOR RELIEF II

4 STATEMENT OF JURISDICTION The parties, Chelsea Tea Company (the Claimant ) and Almond Tea Company (the Respondent ) hereby submit this dispute to arbitration in accordance with the Kuala Lumpur Regional Centre for Arbitration ( i-arbitration Rules ) through Clause 22.1 of the Distribution Agreement (the Agreement ) entered by both parties on 20 th October Any award made by the tribunal will be final and binding pursuant to Rule 12(7) of KLRCA i-arbitration Rules. III

5 INDEX OF AUTHORITIES INTERNATIONAL CONVENTION AND REGULATIONS Agreement on Trade Related Aspects on Intellectual Property Rights, 1 7 January 1995, 1869 UNTS 299 LEGISLATIONS Malaysian Geographical Indication Act , 8 Malaysian Trade Marks Act Sri Lanka Intellectual Property Act CASES Ak Koh Enterprise v A1 Best One Food Industries [2015] 9 MLJ Compagnie Generale Des Eaux v Compagnie Generale Des Eaux Sdn Bhd 11 [1996] MLJU 575 De Cordova v Vicks Chemical Co (1951) 68 RPC IV

6 Harrods Ltd v R. Harrod Ltd (1924) 41 RPC 74 8 Hendersen v Merret Syndicates [1994] UKHL 5. 6 Leo Pharmaceutical Products Ltd A/S v Kotra Pharma Sdn Bhd [2009] 5 9, 10, 12 MLJ 703 Lim Yew Sing v.hummel International Sports & Leisure A/S [1996] 3 MLJ 2 7 Maestro Swiss Chocolate Sdn Bhd & Ors v Chocosuisse Union Des 7, 8 Fabricants Suisse De Chocolate [2016] 2 MLJ 359 Mem Company Incorporated v Cussons (International) Limited [1974] RPC 10 7 Meidi-Ya Co Ltd Japan v Meidi-Ya (M) [2008] 6 MLJ Millennium Medicare Services v Nagadevan Mahalingam [2016] 2 CLJ 36 5 Mount Albert Borough Council v Australian Temperance and General 3 Mutual Life Assurance Society Limited [1938] A.C. 224 Mutiara Rini Sdn Bhd v The Corum View Hotel Sdn Bhd [2016] 7 MLJ , 13 V

7 Re Pianotist Co's Application ('Pianola') [1906] RPC Re Sandow Ltd's Application (1914) 31 RPC Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR Seet Chuan Seng & Anor v Tee Yih Jia Foods Manufacturing Pte Ltd [1994] 13 2 MLJ 770 Shaifubaharim bin Mohd v EM Exhibition (M) Sdn Bhd [2012] 9 MLJ Spalding Bros v Gamage (1915) 32 RPC TC Pharmaceutical Industries Co Ltd v Koay Sai Leat [2016] 8 MLJ , 13 The Commissioners of Inland Revenue v Mueller & Co s Margarine Ltd 11 [1901] AC 217 The Scotch Whisky Association v Ewein Winery [1999] 6 MLJ Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 2 MLJ Wallis v Smith [1882] 21 Ch D YK Fung Securities Sdn Bhd v James Cape (Far East) Ltd [1997] 4 CLJ VI

8 Yong Sze Fun & Anor v Syarikat Zamani Hj Tamin Sdn Bhd [2012] 1 MLJ BOOKS Collins, L. (1987). Dicey and Morris on Conflict of Laws, Volume 1. 1 Stevens. Fawcett, J. J. & Torremans, P. (1998). Intellectual Property and Private 2 International Law. New York, NY: Oxford University Press Jane C. Ginsburg, The Private International Law of Copyright in an Era of 2 Technological Change, 273 Recueil des cours 239 (1998) OTHER DOCUMENTS Dinwoodie, G. B. (January 19, 2001). WIPO Forum on Private International 2 Law and IntellectualProperty. WIPO/PIL/01/4 c Presentation by Mr. Hasita De Alwis: Ceylon Tea Sri Lanka s best known 7 Geographical Indication, 3 rd April 2013, WIPO/GEO/BKK/13 VII

9 QUESTIONS PRESENTED I. What is the applicable law that should be referred to in this dispute. II. Whether or not ATC has breached the Agreement by distributing SAILOR S CEYLON affixed with the ATC s Mark in Malaysia. III. Whether or not ATC s use of the word CEYLON in respect of its tea products is misleading. IV. Whether or not ATC s use of the ATC s Mark amounts to trademark infringement and/or passing off. VIII

10 STATEMENT OF FACTS The Background All tea manufactured in Sri Lanka is monitored by Sri Lankan Tea Board ( SLTB ) a statutory body established under Sri Lankan Act of Parliament. SLTB is the registered owner of the famous Lion Logo, 1 which is affixed on all certified CEYLON TEA products. The Claimant, Chelsea Tea Company ( CTC ) is a company which manufactures Ceylon Tea under the brand CTC Ceylon based in Sri Lanka since Marvin Ranatunga is the Chairman of the Board of Directors of CTC. The Respondent, Almond Tea Company is a Singaporean company managed by Phillip Chan which involves with the production and distribution of tea products in Malaysia and Singapore. The Agreement Ranatunga is interested to invest in Malaysian tea market, and is a registered proprietor of the Lion Logo in Malaysia. During his trip in 2008 to Cameron Highlands, Malaysia, he intended to have Philip Chan as CTC s distributor due to his vast knowledge on Malaysian market. Philip Chan rejected the offer as the distributorship agreement requires ATC to cease all of its sales on tea products. 1 Item numbered 1, Schedule 1 of the Distribution Agreement. IX

11 A fungal disease had infected ATC s source of tea a month after Philip Chan rejected Ranatunga s offer to become CTC s distributor. A second offer was made by Ranatunga, which resulted in the entry of the Distribution Agreement (the Agreement) by both parties on 20 th October 2008 with a nominal monetary consideration. The Agreement states amongst others as follows: During the Term and for a period of 12 months after it the Distributor must not be concerned or interested, either directly or indirectly, in the manufacture or distribution in the Territory of any goods that compete with the Products, affixed with the Trade Marks or any other arguably similar mark in the Territory. The Agreement also prohibits the Respondent from using any similar marks as the Lion Logo. This aforementioned term of the Agreement is disputed between the parties. Chelsea Tea Company The Claimant, CTC, is one of Ceylon Tea manufacturers originated from Sri Lanka and its tea products is from the Kandy District of Sri Lanka. CTC CEYLON are mainly marketed in Europe. After the distribution of CTC CEYLON by ATC in Malaysia, CTC garnered a strong consumer base in the country, and has then established its Southeast Asia headquarters in Kuala Lumpur, Malaysia. X

12 Almond Tea Company The Respondent, ATC, manufactures black tea products and its tea is cultivated in Malaysia and China. The tea from the brand SAILOR S CEYLON, is manufactured in Fujian Province in China, using seeds originated from Sri Lanka. ATC s main market is Southeast Asia, but their products are also marketed to other Asian countries, Germany and United Kingdom. Prior to the conclusion of the Distribution Agreement between the parties, ATC was involved with the manufacture and distribution of tea products in Malaysia and Singapore. The origin of the dispute It was known by CTC in March 2015 that ATC manufactures tea in China under a different brand named SAILOR S CEYLON. The product is also affixed with a mark, with lion as its subject matter. CTC contended that ATC had breached the Agreement between them and demands for ATC to stop the usage of the word CEYLON on their products. ATC denied all liability and contended that they have legal rights to use the word CEYLON and use ATC s Mark on their products. The arbitration proceeding As there is a failure to settle the dispute, the parties submit the matter before the arbitration panel pursuant to Clause 22.1 of the Agreement which states that the arbitration will be governed by KLRCA-i Arbitration Rules and will take place in Colombo, Sri Lanka. XI

13 SUMMARY OF PLEADINGS I. The applicable law that should be applied to the merits of the case is Malaysian law. II. The Respondent has breached clause 4.2 of the Distribution Agreement by manufacturing and selling their tea product embedded with trademark similar to the Lion Logo. III. The use of the word CEYLON by the Respondent is misleading as to the quality and origin of the goods. IV. The Respondent has infringed the Claimant s mark and has passed off their goods at the Claimant s. XII

14 PLEADINGS I. THE APPLICABLE LAW TO BE APPLIED TO THIS DISPUTE IS MALAYSIAN LAW. The applicable law to be applied to the substantive part of this dispute is Malaysian Law based on the (A) conflict of laws rule; (B) lex loci delicti; (C) lex loci protectionis; (D) lex contractus; (E) lex loci solutionis; and (F) from the intention of the parties. Based on the aforementioned reasons, Malaysian law can be implied. A. The principle of conflict of laws rule points to Malaysia as the applicable law. Section 22 of the Agreement 2 between the parties states that the arbitration will be governed by the KLRCA i-arbitration Rules ( Rules ).Article 35 of the said Rules 3 states that if there is an absence of agreement on the applicable law to be used for the merits of the case, the Arbitrator can decide by using the conflict of laws rules. The conflict of laws rule to be applied is by using the system of law with which the transaction has its closest and most real connection. 4 The transaction has its closest and most real connection in Malaysia as the breach committed by the Respondent materialized in Malaysia. Thus, the applicable conflict of laws rule is lex loci delicti as the Respondent has breached the Agreement in Malaysia. 2 Appendix A, Distribution Agreement between Chelsea Tea Company and Almond Tea Company [Agreement]. 3 KLRCA i-arbitration Rules 4 YK Fung Securities Sdn Bhd v James Cape (Far East) Ltd [1997] 4 CLJ 300; Collins, L. (1987). Dicey and Morris on Conflict of Laws, Volume 1. Stevens. 1

15 B. The principle of lex loci delecti for an action of passing off also points to Malaysia as the applicable law. In the case of Meidi-Ya Co Ltd Japan v Meidi-Ya (M) 5, an action is taken on the ground that the Defendant uses the Plaintiff s trademark Meidi-Ya, the differences being the dash between the word Meidi and Ya. The court held that for passing off, an action can only be taken in a country, using the laws of that country where the damage to the goodwill occurred. And in the tort of passing off goodwill is territorial in scope while reputation as generally understood thereof requires some form of business in the territory in question. Thus, Malaysian Law is the applicable law to this dispute based on the conflict of laws rule of lex loci delicti. C. The principle of lex loci protectionis points to Malaysia as the applicable law. The principle of territoriality is a ground to the principle of lex loci protectionis. 6 Trademark law is territorial in nature. 7 Hence, the question of whether trademark rights exist or whether the infringement of the said trademark has occurred is prominently determined by the law of the country in which protection is claimed. 8 One of the claims made by the Claimant is that the Respondent infringed the Claimant s trademark that has been registered and protected in Malaysia. Hence, Malaysian law should apply. 5 [2008] 6 MLJ Fawcett, J. J. & Torremans, P. (1998). Intellectual Property and Private International Law. New York, NY: Oxford University Press. 7 Jane C. Ginsburg, The Private International Law of Copyright in an Era of Technological Change, 273 Recueil des cours 239 (1998); Lim Yew Sing v.hummel International Sports & Leisure A/S [1996] 3 MLJ 7. 8 Dinwoodie, G. B. (January 19, 2001). WIPO Forum on Private International Law and Intellectual Property. WIPO/PIL/01/4. Retrieved from at para 63. 2

16 D. The principle of lex contractus points to Malaysia as the applicable law. Lex loci contractus is the law of the place in which the contract was made. Therefore, since the Distribution Agreement was signed in Malaysia 9, Malaysian law should be the applicable law to the dispute. E. The principle of lex loci solutionis points to Malaysia as the applicable law. Lex loci solutionis is the law of the place where performance of the contract was due. In this case, Malaysia is the place where performance of the contract was due, because the Respondent has agreed to distribute Claimant s tea product in Malaysia. Furthermore, the Claimant has agreed to pay the Respondent s for their services in Ringgit Malaysia. 10 F. Intention of the parties can be impliedly to have agreed that Malaysian law is the applicable law. In the case of Mount Albert Borough Council v Australian Temperance and General Mutual Life Assurance Society Limited 11, the Privy Council held that: English law in deciding these matters has treated the matter as depending on the intention of the parties, to be ascertained in each case on a consideration of the terms of the contract, the situation of the parties, and generally on all the surrounding facts. Hence, it can be seen that it was the intention of the parties to apply Malaysian law as the applicable law because the consideration given by the Claimant to 9 Question 2 of the Clarifications to the Moot Problem [Clarifications]. 10 Clause of the Distribution Agreement. 11 [1938] A.C

17 the Respondent, is in a form of monetary consideration, paid in Ringgit Malaysia 12. Moreover, the consideration from the Respondent to the Claimant is their services to distribute the Claimant s tea products in Malaysia. Other fact such as the restriction imposed on the Respondent by the Claimant is only with regards to the matter of distribution in Malaysia. This shows that the Claimant is not interested in any conduct of the Respondent performed outside of Malaysia. In addition, the Agreement was signed in Malaysia. Furthermore, the parties agree to abide by the KLRCA Rules even though the location of the arbitration is to take place in Sri Lanka. In conclusion, it can be seen that it was the intention of the parties at all times that Malaysian law is the applicable law to this dispute. 12 Clause of the Agreement. 4

18 II. THE RESPONDENT HAS BREACHED THE AGREEMENT The Respondent has breached clause 4.2 of the Agreement by (A) using ATC s Mark 13 that is similar to the Lion logo. In the event that the Respondent contends Clause 4.2 is a restraint of trade clause, the Claimant submits otherwise because (B) clause 4.2 does not have the effect of restraining the Respondent from carrying out their trade. Furthermore, it is submitted that (C) it is possible to take a concurrent actions in contract and tort. A. ATC s Mark is arguably similar to the Lion Logo. Clause 4.2 needs to be interpreted in its literal meaning 14. Hence, any use of mark that is arguably similar to the Lion Logo amounts to a breach of agreement. ATC s Mark is using a Lion device, positioned similar to that of the Lion Logo of the Claimant. In addition, they both contain a line Symbol of Quality in their mark. Hence, assessing these two marks in their entireties, it can said that ATC s Mark is similar to the Lion Logo. The Respondent has breached Clause 4.2 of the Agreement. B. Clause 4.2 of the Agreement is not a restraint of trade clause. In the case of Millennium Medicare Services v Nagadevan Mahalingam, 15 the court held that clause 11 (iii) has the effect of restricting the liberty of the appellant to carry on the practice of medical practitioner in future either by himself or with other persons for such period and within such limit as specified. The court therefore concluded that it is an agreement in restraint of 13 Moot Problem, Wallis v Smith [1882] 21 Ch D [2016] 2 CLJ 36. 5

19 trade within the meaning of section 28 of the Act 16. A distinction can be drawn between our case with the case of Nagadevan. The effect of clause 4.2 does not extend to manufacturing and distributing teas that are not affixed with the Lion Logo. Hence, the Respondent can distribute any tea from any part of the world, but not Ceylon Tea. It is submitted that clause 4.2 of the Agreement is not a restraint of trade clause. C. Concurrent actions in contract and torts are possible. According to the case of Hendersen v Merret Syndicates, it is held that tortious duty of care may arise not only in cases where the relevant services are rendered gratuitously, but also where they are rendered under a contract. 17 Hence, the Claimant is justified in taking action both under the tort of passing off as well as contract as the Respondent has breached clause 4.2 of the Agreement by using similar trademark on their products. 16 Malaysian Contract Act 1950, Act [1994] UKHL 5. 6

20 III. THE USE OF THE WORD CEYLON BY THE RESPONDENT ON THEIR TEA PRODUCTS IS MISLEADING AS TO THE QUALITY AND ORIGIN OF THE GOODS The Respondent s use of the word CEYLON is misleading as (A) The word CEYLON TEA is a protected geographical indication and (B) The use of such word could pass off as to the quality and origin of the goods. A. CEYLON TEA is a protected geographical indication Malaysia has the obligation to protect 18 geographical indication of other WTO Member States as a signatory to The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Although CEYLON TEA is not a registered geographical indication in Malaysia, protection can be given to unregistered 19 geographical indication under Malaysian Act. The word CEYLON TEA has obtained home registration in Sri Lanka 20 which is a prerequisite 21 for a geographical indication to be protected and this allows the protection under Sri Lanka Intellectual Property Act 22 to be extended to Malaysia Geographical Indication Act (GIA). 18 Article 22, Agreement on Trade-Related Aspects on Intellectual Property Rights, 1 January 1995, 1869 UNTS 299, [TRIPS]. 19 Section 3, Geographical Indication Act Malaysia 2000 [GIA]. 20 Presentation by Mr. Hasita De Alwis: Ceylon Tea Sri Lanka s best known Geographical Indication, 3 rd April 2013, WIPO/GEO/BKK/ Article 24, TRIPS; Section 4, GIA. 22 Section 104, Section 191, Sri Lanka Intellectual Property Act

21 This allows the Claimant, as the interested person 23 under the GIA Malaysia 24 to bring an action against the Respondent who used the word CEYLON on their goods and could mislead the public through the use of such word. B. The use of the word CEYLON could pass off as to the quality and origin of the goods. The Respondent has impliedly represented their goods as the goods of the Claimant by using the word CEYLON on its tea products together with the ATC s Mark which bore similarities to the Claimant s Lion Logo. The Respondent s Sailor s Ceylon does not possess the same quality 25 as the Claimant s tea because the tea does not comply with the standard required by Sri Lankan Tea Board 26 (SLTB) and were manufactured in China 27 instead of Sri Lanka. Although the Respondent only uses the word CEYLON, the use of such word on tea products could import a reference that it is Ceylon Tea. The word CEYLON used by the Respondent on their products were also accompanied by the ATC s Mark that is similar to the SLTB Lion Logo. Considering these two elements and the circumstances of the business 28 of both parties, the 23 Maestro Swiss Chocolate Sdn Bhd & Ors v Chocosuisse Union Des Fabricants Suisse De Chocolate [2016] 2 MLJ 359 at Section 5, GIA. 25 The Scotch Whisky Association v Ewein Winery [1999] 6 MLJ 280 at 296; Maestro Swiss at Question 4 of Additional Clarifications. 27 Moot Problem, 14; Question 12 of Additional Clarifications. 28 Maestro Swiss at 79. 8

22 Respondent has misrepresented 29 their goods as the Claimant s goods or intended their tea products to be associated with the Claimant s product. The use of the word Ceylon by the respondent could also amount to the extended form of passing off 30 apart from misrepresenting the product under the Geographical Indication Act. 29 Maestro Swiss Maestro Swiss 8; Spalding Bros v Gamage (1915) 32 RPC 273; Harrods Ltd v R. Harrod Ltd (1924) 41 RPC 74. 9

23 IV. THE RESPONDENT HAS INFRINGED THE CLAIMANT S MARK AND HAS PASSED OFF THEIR GOODS AS THE CLAIMANT S The use of ATC s mark which possess the same features as SLTB s Lion Logo amounts to (A) trademark infringement under Malaysian Trade Marks Act 1976 and (B) passing off under common law A. The Respondent infringed the Claimant s mark through their use of their ATC s mark As a registered user 31 of SLTB s Lion Logo, the Claimant has the rights to take action against any person who uses a similar mark as the registered mark. 32 Since SLTB Lion s Logo is a registered mark in Malaysia 33, the Claimant has rights to claim for trademark infringement over the use of a similar mark by the Respondent. The Respondent has fulfilled all the necessary requirements 34 to establish trademark infringement, which are (1) defendant is not a registered use or proprietor of the mark; (2) the mark is identical or so nearly resembling the registered mark; (3) mark used in the course of trade; (4) mark used in the same class of goods and services; and lastly (5) mark used has imported a reference to the registered mark. ATC s Mark is unregistered 35 ; hence the Respondent is not a registered user or proprietor of any mark under Malaysia Trade Marks Act Moot Problem, Section 38, Malaysian Trade Marks Act Moot Problem, Leo Pharmaceutical Products Ltd A/S v Kotra Pharma Sdn Bhd [2009] 5 MLJ 703 at Question 1 of Clarifications. 10

24 A likelihood of confusion is sufficient to fulfil the second element. A customer will not make a detailed examination 36 to the product, and the test of imperfect recollection 37 will be used to assess the likelihood of confusion. In determining the likelihood of confusion, the marks must be looked as a whole. 38 This includes the similarities in the colour, and the main idea of the mark, 39 that is the lion, is the essential point 40. It is the submission of the Claimant that since it is directly in competition with one another, the likelihood of confusion is higher. 41 There are five (5) qualities of ATC s Mark that resemble the Claimant s lion logo, that is firstly, the colour of the mark; 42 second, the box of the mark which uses round edges; third, the animal used in both logos are lion; fourth, the placing of the words are both at the bottom part of the mark; and lastly, both marks have the word SYMBOL OF QUALITY on it. 43 The ATC s Mark has been used in the course of trade 44 and both marks are directly competing with one another, 45 as it is in the same class of goods and services pursuant to class 30 of Nice classification. 46 Considering the surrounding circumstances of the mark, particularly the colour and layout of 36 Ak Koh Enterprise v A1 Best One Food Industries [2015] 9 MLJ 715 at Re Sandow Ltd's Application (1914) 31 RPC Re Pianotist Co's Application ('Pianola') [1906] RPC 774; Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 2 MLJ 63; Shaifubaharim bin Mohd v EM Exhibition (M) Sdn Bhd [2012] 9 MLJ 84; TC Pharmaceutical Industries Co Ltd v Koay Sai Leat [2016] 8 MLJ 779 at Mem Company Incorporated v Cussons (International) Limited [1974] RPC 7; TC Pharmaceutical Industries Co Ltd v Koay Sai Leat [2016] 8 MLJ 779 at Ak Koh enterprise v A1 Best One Food Industries [2015] 9 MLJ 715 at Ak Koh enterprise v A1 Best One Food Industries [2015] 9 MLJ 715 at 28; Leo Pharmaceutical Products Ltd A/S v Kotra Pharma Sdn Bhd [2009] 5 MLJ 703 at Question 7 of the Clarifications. 43 Moot Problem, 3, Question 8 of Clarifications. 45 Question 23 of the Clarifications. 46 Classification of Goods and Services, retrieved from 11

25 the mark, it could import a reference that it is related to the Claimant s mark. Hence, the Respondent has infringed Section 38 of Trade Marks Act by using ATC s mark on their goods. B. The tort of passing off has been committed by the Respondent The parties in this matter have fulfilled the three (3) requirements 47 to establish passing off, which are (1) there is a goodwill and reputation (2) there is a misrepresentation and (3) the claimant had suffered damage from the sale of the Respondent s tea products. 1) The Claimant has sufficient goodwill and reputation to initiate passing off A goodwill is the benefit of a good name and it must be able to have a force which cause the consumer to purchase the goods. 48 The goodwill is not on the mark but rather on the consumer of the product. 49 It is evident that the Claimant has developed a strong consumer base in Malaysia through its business in Malaysia for the past years 50 and CTC CEYLON s headquarters was established in Kuala Lumpur to support their Southeast Asian Market pursuant to the positive response in Malaysia. The Claimant also carries out their businesses outside of Malaysia Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at The Commissioners of Inland Revenue v Mueller & Co s Margarine Ltd [1901] AC Mutiara Rini Sdn Bhd v The Corum View Hotel Sdn Bhd [2016] 7 MLJ 771 at 19; Compagnie Generale Des Eaux v Compagnie Generale Des Eaux Sdn Bhd [1996] MLJU Moot Problem, Question 9 of Clarifications. 12

26 2) The Respondent has falsely misrepresented their goods as the Claimant s due to its similarities The essential element for passing off is there must be a false representation that could cause confusion to ordinary consumers. 52 The imperfect recollection test 53 must be applied to determine the likelihood of confusion instead of comparing the marks side by side. Seeing the marks in totality, it possesses similar characteristics so to cause confusion to the general public. The marks used by CTC CEYLON and SAILOR s CEYLON are similar. Firstly, the marks are of the same colour. Secondly, it uses the same round edge for the box. Thirdly, the marks contain lion as the dominant feature. Fourthly, the phrase SYMBOL OF QUALITY is apparent on both marks. Lastly, the words and phrases for both marks were placed at the bottom of the mark. 3) Damage has been suffered by the Claimant The damage need not be actual damage, and the possibility for the goodwill of business to be damaged 54 is sufficient to establish this element. The Claimant has indeed suffered a drop by thirty percent (30%) in 2013 and further drop by fifteen percent (15%) in Yong Sze Fun & Anor v Syarikat Zamani Hj Tamin Sdn Bhd [2012] 1 MLJ De Cordova v Vicks Chemical Co (1951) 68 RPC Leo Pharmaceutical Products Ltd A/S v Kotra Pharma Sdn Bhd [2009] 5 MLJ Question 10 of Clarifications. 13

27 Although the fact is silent as to the cause of the drop in sales, it is safe to infer that the drop in the year 2013 has been contributed by the emergence of the Respondent s products. This is because Sailor s Ceylon were distributed in November 2012, 56 and the sale for the Claimant s product occur in the year 2013, the following year. Due to this, the court may consider that this is a damage to the goodwill 57 and distinctiveness 58 of the Claimant s mark. Having fulfilled all of the requirements to initiate a claim of passing off, it is submitted that the Respondent has passed off their goods as the Claimant s through the use of ATC s logo on their tea products which is similar to SLTB s Lion Logo. 56 Moot Problem, Seet Chuan Seng & Anor v Tee Yih Jia Foods Manufacturing Pte Ltd [1994] 2 MLJ 770; TC Pharmaceutical Industries Co Ltd v Koay Sai Leat [2016] 8 MLJ 779 at Mutiara Rini Sdn Bhd v The Corum View Hotel Sdn Bhd [2016] 7 MLJ

28 PRAYERS FOR RELIEF The Claimant plead for this tribunal to adjudge and declare that: 1. The applicable law to be applied to the merits of the dispute is Malaysian law; 2. The Respondent breached clause 4.2 of the Distibution Agreement hence making them liable for damages; 3. The use of the word CEYLON by the Respondent is misleading hence a declaration from the tribunal that the Respondent to stop using the name SAILOR S CEYLON if their tea products that were not produced in Sri Lanka; and 4. That the Respondent has infringed the Claimant s trademark protected under the Trade Marks Act 1976 and in the alternatives, has committed the tort of passing off. Respectfully submitted, CHELSEA TEA COMPANY, THE CLAIMANT 15 th JULY