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“Everydays – The First 5000 Days” is a digital work by American artist Mike Winkelmann, known as Beeple.
It is a collage of 5,000 individual images, which were made one-per-day over more than thirteen years.
It does not exist in real world!!! It is in the form of a new type of digital asset – a Non-Fungible Token (NFT) – meaning it is authenticated by blockchain, which certifies its originality and ownership.
It is an example of Digital Asset. Intangible Property. :)
Brief Introduction on Trademark Law in Malaysia
a) Common Law of Tort where someone represents that his goods or services are those of someone else.
b) Misrepresentation can be about the name of the products, visual images presented by the products, slogan relating to the products, etc, so long as they have become part of the goodwill or reputation of the product.
c) Unregistered TM infringement.
a) It protects the goodwill of business by preventing competitors/ rivals from passing off theirs goods as those of others.
b) It protects the public interest by ensuring that consumers are not mislead.
c) Remedy for Unregistered Trademark.
Goodwill and reputation is not equivalent.
Goodwill must broader than just commercial activities.
a) Passing Off is a common law tort which is applicable in Malaysia as a form of Intellectual Property right against unauthorized use of a trademark which similar to a registered/ unregistered trademark.
Irvine and Another v Talksport Ltd [2002] 2 All ER 414
A well-known passing off case involved the unauthorized use of the image and deception of endorsement by a radio station.
b) The 3 elements of passing off were discussed in a case of Reckitt & Coleman Ltd v. Borden Inc 1990 1 ALL ER 873 (JIF Lemon case) . The House of Lord explained the classical trinity (three elements) namely;
(1) goodwill established by plaintiff
(2) misrepresentation made by defendant; and
(3) consequent Damage in suit for passing off action.
Reckitt sold lemon juice under the name "Jif Lemon" which came in plastic yellow container that was shaped like a lemon.
Borden, a competitor, started to produce lemon juice in a similar but bigger lemon shape plastic yellow container.
Court of Appeal agreed with Reckitt that Borden liable for Passing Off.
Same as Jif Lemon case.
The get up of LiveWire resembles to the get up Red Bull Energy Drink Can and it is a passing off.
Malaysian High Court had taken into consideration of the following three precedents in establishing passing off:
i) Lord Diplock’s Test which was applied in the case of Seet Chuan Seng & Anor v Tee Yih Jia Food Manufacturing Pte Ltd (1994) 3 CLJ 7
ii) Lord Fraser’s Test which was applied in the cases of Seet Chuan Seng and Maestro Swiss Chocolate Sdn Bhd & Ors v Chocosuisse Union Des Fabricants Suisses De Chocolat (a co-operative society formed under title XXIX of the Swiss Code of Obligations) & Ors and another appeal [2016] 2 CLJ 359
iii) Lord Oliver’s Test which was applied in the Court of Appeal case of Sinma Medical Products (M) Sdn Bhd v Yomeishu Seizo Co Ltd [2004] CLJ 815
The High Court had further explained the requirement of goodwill for the purposes of passing off suit as explained in the case of Star Industrial Co Ltd v Yap Kwee (t/a New Star Industrial Company)[1976] 1 MLJ 149.
Danckwerts J. in Bollinger & Others v. Costa Brara Wine Company Ltd [1959] 3 All ER 800 states:
" Passing off function to prevent unfair trading"
Lord Langdale in Perry v. Truefit [1842] 49 ER 749 states:
" A man is not to sell his own goods under the pretend that they are the
goods of another man; he cannot be permitted to practise such a
deception, nor to use the means which contribute to that end. He cannot
therefore be allowed to use names, marks, letters, or other indicia, by
which he may induce purchasers to believe, that the goods which he is
selling are the manufacture of another person."
1. TM - Statutory Remedy
PO - Common Law Remedy
2. TM- Requires registration
PO - Not Necessary
3. TM - Infringer can be prosecuted under Criminal Law
PO - Relatively harder / chances are slim.
4. TM - Just need to show "confusion"
PO - have to show confusion + deception + injury to the goodwill
2 school of thoughts:
i) Rights of Publicity ( Image Right and Character Right)
ii) Torts of passing off in unregistered trademark infringement
1. US gives full protection to their celebrities / well known person / public figure.
2. The right of publicity prevents the unauthorized commercial use of an individual's name, likeness, or other recognizable aspects of one's persona.
3. It gives a well known individual the exclusive right to license the use of their identity for commercial promotion.
4. No picture of celebrity can be taken except in public area.
5. Celebrity enjoy full privileges and protection over their name and image. They can make profit and licensee to others from their name.
6. No need to register Trademark but if registered, it is a double protection for celebrities.
a) In early lockdown period at 2020, an unemployed school teacher in Chile, Yohana Agurto, who have difficulties in raising her 4 children got the brilliant idea to sell home made organic honey by using name and character of Mel Gibson in "Braveheart" film.
b) She got the brilliant idea because the word "honey" in Spanish means "MIEL".
c) Mel Gibson sent a cease and desist letter to Yohana and asked her to stop using name and or likeness and or biography Mel Gibson to sell the honey product.
d) Mel Gibson did not prevent Yohana from selling honey but he wants his image be removed and Yohana is permitted to use the name "MIEL GIBSON" together with the tagline/ slogan " A honey for braveheart".
- In US, celebrity can sue those who use celebrity image or character in business without celebrity consent.
- This is to avoid confusion and deception among fans and public.
- Not to mislead that there is an endorsement from celebrity over the goods sold.
1) The general principle is "no 'image right' or "no character right" recognized under UK law (No Publicity Right).
2) In UK, there is no standalone right of personality by which a celebrity can protect his likeness. Instead, unauthorized use of that person's image must be challenged under other existing regimes such as passing off, trade mark infringement, copyright, data protection, breach of confidence or advertising regulations.
****Rihanna v Topshop [2013] EWHC 2310 (Ch)****
The Court of Appeal found that Rihanna had overcome the ‘two critical hurdles’ in a claim for passing off:
1)The application of the name or image to the goods has the consequence that they misrepresent the source of the goods.
2)the misrepresentation must be material so as to have an effect upon the customer’s buying decision.
This is a case to show that UK did not recognize Publicity Right.
It is brought before court as privacy protection suit.
OK! magazine was awarded 2 million pounds as damages but both litigants reported to suffer high legal costs amounting 8 million pounds.
UK requires Plaintiff to fulfill the trinity classic elements. Without misrepresentation element, passing off cannot be established.
-Unlike USA, there is no right of publicity (no image & character right) in Australia.
-A celebrity may seek protection under the Trade Marks Act 1995 if the celebrity has registered a trade mark.
-Elle Macpherson has eight registered trade marks of her name and signature for use in television, media and clothing which provides an additional ground on which to remedy any unlawful use. This is limited to Ms Macpherson's name and signature and not her image.
2 different approaches recognized:
a) Paul Hogan' s case - recognized image & character right without explicit misrepresentation. (seems to follow US).
In the Koala Dundee case, he successfully sued a business that was selling koala toys dressed in a Crocodile Dundee costume in an unlicensed manner.
In Pacific Dunlop case, he successfully sued Pacific Dunlop over a “Dunlop” brand TV commercial that recreated the famous scene from the “Crocodile Dundee” film involving a mugging,substituting the knife referenced with references to leather shoe.
In Grill'd's case, the burger chain company used a variation on the line "That's not a knife ... that's a knife" from the 1986 movie on the sleeve of their cutlery. However, Grill'd had reached settlement with him on making charity to his organization.
b) Kieren Perkins, Olympic swimmer case - uses Trinity Classic Principle. (Follow UK).
He successfully sued Telstra for the unauthorised use of his image in an advertisement.
The advertisement used a photograph of Perkins wearing a swimming cap bearing the Telstra logo, accompanied by a statement promoting its services.
The court held that the use of the photograph together with the statement inferred that Perkins preferred Telstra's service to that of Optus( rival company) when in fact he had not made a statement about his preference.
No endorsement from Perkins. (a deception by Telstra).
Perkins' status as a celebrity known by the public as an endorser of a variety of products assisted the court to find that Telstra's conduct was misleading and deceptive.
No precedent has been set before the case of Hafiz Hamidun in the year 2021.
However, in 2006 there is a case initiated by a celebrity, Wardina Safiyyah against Mydin for using her image in Mydin' s billboard and advertisement even though her contract has expired.
She filed summon for breach of contract although the case can be brought under passing off.
And both parties had reached settlement outside the court.
The plaintiff, an artist, incorporated Mikraj Concept Sdn Bhd (‘MCSB’) which was later renamed as Haje Sdn Bhd (‘HSB’) for the purposes of carrying out the plaintiff’s trade in fabrics.
The Defendant (Kamdar) was a company which mainly engaged in the business of selling fabrics.
Sometime in February 2017, the Plaintiff received messages from his fans and followers on social media asking him whether certain goods sold by the Defendant with the label ‘Hafiz Hamidun’ were actually under his.
The plaintiff maintained that ‘Hafiz Hamidun’, which words were his own name, was an unregistered trademark which the plaintiff used, for among other purposes, his own fabrics line.
The plaintiff asserted that by selling products with the same label, the defendant passed off the unregistered trademark of ‘Hafiz Hamidun’.
The defendant stopped using the words ‘Hafiz Hamidun’ after receiving C & D letter from the plaintiff to demand that they cease using the label ‘Hafiz Hamidun’ on their products and the defendant instead replaced it with ‘Afiz Amidun’. Aggrieved from the Defendant’s action, the plaintiff sued the defendant for tort of passing off.
1. Whether court should lift HSB’s corporate veil?
2. Can this suit be filed based on Plaintiff’s Name?
3. Does Plaintiff have goodwill in business regarding Plaintiff’s Name?
4. Whether Defendant has misrepresented Defendant’s Goods by using Plaintiff’s Name and Defendant’s Price Signboard?
5. Has Plaintiff proven likelihood of damage caused by Defendant’s Misrepresentation?
6)Whether Defendant may rely on KAMDAR Trade Mark and/or KAMDAR goods?
i) The Plaintiff earned valuable goodwill and reputation in the brand name ‘Hafiz Hamidun’ as per his assertion.
(ii) The Defendant misrepresented and/or caused to be misrepresented and caused the likelihood of confusion to its customers that the defendant’s fabrics were produced and/or endorsed by the plaintiff, and/or products resulting from a collaboration between the plaintiff and the defendant.
(iii) The Plaintiff had established a probability or likelihood of damage to his goodwill in the brand name ‘Hafiz Hamidun’, as required for a passing off action.
The appellant submitted that the High Court Judge had erred in;
(i) Failing to consider that it was HSB that was using the brand name ‘Hafiz Hamidun’. Therefore, the goodwill was owned by HSB not the plaintiff.
(ii) By holding that the plaintiff was the alter ego of the company and the goodwill in the brand name ‘Hafiz Hamidun’ belonged to the plaintiff.
The plaintiff/ respondent submitted that:
(i) The plaintiff was the alter ego of HSB by reason of him owning 80% of the shares issued and being a founding director;
(ii) The goodwill attached to the name and/or brand name ‘Hafiz Hamidun’ used to promote and sell HSB’s goods was owned by the plaintiff.;
(iii) The plaintiff earned a substantial or significant goodwill in the name and/ or brand ‘Hafiz Hamidun’ as a singer and the goods sold by HSB was promoted and/or sold using the name and/or brand ‘Hafiz Hamidun’ as an ‘attractive force which brings in custom’;
(iv) There is a special circumstances to lift HSB’s corporate veil to prevent the defendant from evading liability for the tort of passing off.
The judgment in the High Court reversed on a technical point.
Hafiz did not have locus standi to maintain his claim as the goodwill was actually established by HSB not Hafiz.
a) Whether the label ‘Hafiz Hamidun’ had goodwill which could be passed off?
b) Who was the correct party with standing to bring the passing off claim?
1)Goodwill as an intangible asset is not strictly attached to any particular individual or group of persons.
2)It exists in the trade or in the goods or services.
3)Celebrities can own their goodwill.
4)Goodwill generated by their personal achievement not fan base.
5)Passing off was developed to remedy the misappropriation or deceptive use of celebrity's goodwill for commercial gain.
6)A claimant must show misrepresentation had occurred as it is not sufficient to prove only the claimant's name or image was used.
7)Goodwill is not equal to reputation as something that is reputable and popular may not necessarily have goodwill.
8)Goodwill is propriety whereas for reputation is not.
9)Goodwill always /must attached to a business or trade.
10)Goodwill resides in a trade or goods or services or in the name, description or any other insignia, mark or distinguishing feature relevant to those goods or services.
11)Goodwill is flexible and malleable asset.
12)The name of Hafiz Hamidun was identified with Hafiz as he had used it and therefore had accumulated goodwill therein.
13)It is a common practice for the celebrities to license their goodwill to company.
14) Kamdar is the 3rd Party outsider.
i)The Defendant’s submissions, to the extent that it attempted to make a technical distinction between the plaintiff and HSB, without regard to the overwhelming evidence in the goodwill established in ‘Hafiz Hamidun’, must therefore be rejected.
ii)A celebrity had locus standi to maintain an action in passing off even if some other business uses his or her name. The goodwill in the name ‘Hafiz Hamidun’ belonged to the plaintiff and not HSB, in that, the unregistered trademark was identified with the plaintiff.
1) It is established that Malaysian Courts will follow UK's approach in safeguarding celebrity's right.
2) Contrary with US, Right of Publicity or The"Image Right" or Character right" of a person is not recognized in Malaysia.
3) Celebrities will face the risk of their image being used for unscrupulous commercial purpose . Better to register trademark if celebrities/ well known person / instafamous / media social influencer believe they have the goodwill.
4) If no misrepresentation, it is insufficient to make out a claim of passing off.
5) Element for misrepresentation is important to succeed in a claim.
6) Malaysian courts tend to follow English Court rather than Australian Court in term of proving damages:
a) Australia - Actual Damages must exist.
b) England - Likelihood damages only.
7) Federal Court also extends the protection principle beyond celebrities - etc well known people, politicians, instafamous, influencer.
"a common law claim of passing off involving the business indicium of a celebrity (whether his/her actual name, stage name, moniker or image of the person in question etc.)" Page 819 of judgment.
8) Federal Court also differentiate between having goodwill & reputation. Having good reputation does not mean the celebrity is having a goodwill.
9) Having goodwill means the celebrity have the reputation.
10) Not all celebrities possess goodwill over their name.
11) This case has to be differentiate between celebrities who sign a contract to produce or sell product by using their name or become a paid ambassador for a product using the celebrities name.
12. Having many fans and followers did not mean a celebrity/ instafamous/ social media influencer have a goodwill.
#1984 Olympics –Kodak sponsors TV broadcast, even though Fuji is official sponsor of Olympic Games.
#1998 FIFA World Cup -Nike sponsor teams, even though Adidas is official sponsor.
#2010 FIFA world cup –Dutch brewer gave away orange clothes to supporters even though Budweiser official sponsor.
#2012 Olympics –Nike looked to circumvent the restrictions by using the name of the LONDON in its ‘Find Your Greatness’ campaign featuring athletic ‘Londoners’ performing in alternative Londons (London in Ohio, East London in South Africa, Little London in Jamaica, etc). The campaign ran in 25 countries and the showcase coincided with the opening ceremony of the 2012 Olympics – where Adidas was the official sponsor.
Pepsi rides on Coca Cola over 2014 World Cup
We in Malaysia still does not have test case regarding ambush marketing. By looking to the tendency of court to follow UK's approach, the Plaintiff needs to show "misrepresentation" in ambush marketing. This will cause hurdle for Plaintiff.
We need a legislation regarding ambush marketing because it is unethical tactic by companies who are not willing to sponsor but want to ride on the event.
It is a modest way to draw attention to their products without having to make huge investments for the same.
I personally hope that Malaysia will adopt more lenient approach in proving "misrepresentation" in Ambush Marketing or set a specific legislation on ambush marketing.
Conclusion
i) It is advisable for celebrities in Malaysia to register for their own trademark.
ii) It is easier to protect rights under TMA 2019 rather than pursuing under the claim of passing off for the infringement of their unregistered trademark.
www.sifutrademark.com
www.zaplaw.com.my