In the past two days, the cyberspace has been spiced up by our local renowned brand, "Sambal Nyet Berapi."
The owner of "Sambal Nyet Berapi," Khairul Aming, claims that their trademark has been copied. According to Khairul, they have already instructed their lawyer to send a Letter of Demand (LOD) to the purported infringer, citing grounds of IP Infringement and passing off. He mentioned that they have made 8 claims in the LOD for the purported infringer to comply, failing which they will pursue further legal action.
Since the LOD is not available to us, we are unable to speculate on the exact grounds or claims made by Khairul. However, based on the information available on the internet so far, perhaps we can explore what fellow entrepreneurs can do when they encounter similar situations.
Possible Causes of Action
In situations like this, brand owners typically have two potential causes of action:
Trademark Infringement
Passing Off
What is Trademark Infringement?
Trademark infringement is a legal action brought by a trademark owner when someone infringes on their registered trademark.
First, you need to have a registered trademark. However, merely having a registered trademark is not sufficient; the registration needs to accurately and comprehensively cover all your products and services.
Then, according to Section 54 of the Malaysian Trademarks Act 2019 (TMA), in summary, it is a trademark infringement if a person:
uses a trademark which is
identical or similar to a registered trademark,
goods or services which are identical / similar to those that the trademark is registered,
resulting in the likelihood of confusion on the part of the public
The consequences of trademark infringement can be both civil and criminal. Pursuant to Section 56 of TMA, in a civil action, the trademark owner may be entitled to:
Injunction
Damages
Account of profits
Other relief that the Court deems appropriate
On the other hand, trademark infringement is also a criminal offence. Upon conviction, the infringer shall be liable for a fine not exceeding RM 1million or imprisonment for a term not exceeding 5 years or to both, according to Section 99 of the TMA.
Then what is passing off?
Passing off is a common law action initiated by the IP owner for misrepresentation by the infringer. Beyond trademarks, it can also encompass the product get-up, including trademark, packaging, or the overall look and feel of a product.
To succeed in a passing off-action, the owner must establish:-
Goodwill on the get-up, which may include a trademark.
Misrepresentation by the infringer.
Damages suffered by the owner as a result of the misrepresentation.
If the action is successful, the owner may claim damages or other equitable relief from the infringer.
Trademark Infringement vs. Passing Off: What’s the difference
(1) To succeed in trademark infringement, a registered trademark is required; whereas passing off doesn't necessitate a registered trademark.
(2) In trademark infringement, a certificate of registration is sufficient to prove ownership. However, for passing off, evidence is required to establish goodwill for your brand, which may be less convenient and carries a higher burden of proof.
(3) Trademark infringement is limited to the representation of the mark in the registration. In contrast, passing off may extend to elements such as trademark, get-up, product packaging, or the overall look and feel.
A Closer Look At Sambal Nyet Berapi’s Situation
A glance at Khairul's video and MYIPO's database reveals a successful registration of "Sambal Nyet Berapi" in Class 16 (primarily for printing materials and packaging). However, the Class 30 application (covering sambals and other food products) is still pending.
Nevertheless, just because the Class 30 trademark is still pending, doesn’t mean Khairul has no right at all. For instance, he mentioned that his lawyer has included both the causes of action trademark infringement and passing-off in the LOD. If needed, both trademark infringement and passing-off may be included in the same legal action.
If we delve into the element of trademark infringement under Section 54 of the TMA, in addition to the similarity of the marks, the owner also has to prove that the similarity results in a likelihood of confusion on the part of the public.
Therefore, compiling evidence of goodwill, infringement activities, confusion among the public or customers, and loss suffered by Khairul are crucial in cases like this.
At this point, it's still premature to draw conclusions on the prospect of the case, as legal proceedings ultimately revolve around the evaluation of evidence by both parties.
Key Takeaways from Khairul’s Stand
Two critical lessons emerge from Khairul's proactive approach—timely trademark registration (initiated in 2021) and assertive action against infringements. The story of "Sambal Nyet Berapi" serves as a spicy reminder to entrepreneurs: Register early, and don't hesitate to protect what's rightfully yours.
Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from professionals.
© 2023 by IP Gennesis Sdn Bhd.
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