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Malayan Law Journal Reports/2010/Volume 8/Tien Ying Hong Enterprise Sdn Bhd v Beenion Sdn Bhd [2010] 8 MLJ 550 - 7 December 2009
17 pages
[2010] 8 MLJ 550

Tien Ying Hong Enterprise Sdn Bhd v Beenion Sdn Bhd

HIGH COURT (KUALA LUMPUR)
AZHAR MOHAMED J
SUIT NO D6-22-1309 OF 2003
7 December 2009
Trade Marks -- Registered trademark -- Action for infringement -- Defence of parallel importation -- Whether
transaction of importing batteries bearing registered trademark as conducted by defendant fell within
category of parallel importation so as to not breach any trademark law -- Whether defendant had right to
import, sell or advertise for sale batteries bearing trademark without prior permission of plaintiff -- Trade
Marks Act 1976 ss 35 & 38
The plaintiff, was in the business of distributing and selling batteries for watches and clocks, and was at all
material times the registered proprietor of the 'SEIZAIKEN' trademark pursuant to Trademark Registration No
91/0143 under the Trade Marks Act 1976 ('the Act'). As the registered proprietor, the plaintiff had the sole
and exclusive right to sell and distribute the trademark in Malaysia. The defendant, who was also in the
business of trading and selling batteries for watches, had been selling watch batteries under the 'SEIZAIKEN'
trademark without the plaintiff's permission. The plaintiff had never, at any time, appointed the defendant to
be a distributor of the batteries bearing the trademark. On 26 September 2002 the defendant had offered for
sale a consignment of watch batteries bearing the 'SEIZAIKEN' trademark to a company known as Marusho
Inter Pacific using its packaging which was clearly different from the packaging used by the batteries that
were supplied by the plaintiff. The plaintiff alleged that the defendant's use of the 'SEIZAIKEN' trademark
amounted to a trademark infringement and that because of such infringement the plaintiff had suffered loss
and/or damage. This was the plaintiff's claim against the defendant for an injunction, an inquiry as to
damages, an account of profits, interest and costs. The defendant argued that it had imported it batteries
marked with the 'SEIZAIKEN' trademark from a company based in Hong Kong, which in turn obtained the
batteries from Seiko Inc in Japan. The defendant therefore submitted that its mode of importing and
distributing the batteries bearing the trademark fell into the legal description of parallel importation and hence
did not breach any trademark law as stipulated in the Act. The sole issue for determination in this case was
whether the transaction of importing the batteries bearing the 'SEIZAIKEN' trademark as conducted by the
defendant
8 MLJ 550 at 551
fell within the category of parallel importation so as to not breach any trademark law.
Held, allowing the plaintiff's claim:
(1)

Parallel imports refer to goods which are lawfully manufactured overseas but imported and
distributed in Malaysia by a person other than the registered proprietor of the trademark.
Although Malaysian laws do not expressly forbid the importation of parallel goods into Malaysia
there is a very important qualification to parallel importation by virtue of s 35 of the Act, which
provides that only the registered proprietor of the trademark has the exclusive right to the use
of the trademark in relation to those goods. It is clear on principle and on authority that
Malaysian trademark law is territorial in nature. In the present case, the plaintiff as the
registered proprietor of the 'SEIZAIKEN' trademark had the exclusive right to use the trademark
in Malaysia by virtue of s 35 of the Act. Moreover, by virtue of s 38 of the Act no one else

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(2)

had the right to import, sell or advertise for sale batteries bearing the 'SEIZAIKEN' trademark
without the prior permission of the plaintiff. In the circumstances the plaintiff had proven
infringement by the defendant (see paras 12, 14-15 & 30).
The ratio in Winthrop Products Inc & Anor v Sun Ocean (M) Sdn Bhd & Anor [1998] 2 MLJ 317,
the only authority in Malaysia in which the position of parallel imports was explored, did not
apply in any manner whatsoever to the facts of the present case because the plaintiff had no
connection or association with the company based in Hong Kong from which it imported the
batteries or any affiliation with Seiko Inc of Japan. Further there was no proof that the Hong
Kong based company was the authorised distributor of the 'SEIZAIKEN' trademark batteries in
Hong Kong or that Seiko Inc was the only manufacturer of such batteries (see paras 27-28).

Plaintif menjalankan perniagaan mengedar dan menjual bateri jam tangan dan jam, dan pada setiap masa
material pengguna berdaftar tanda dagang 'SEIZAIKEN' berikutan Pendaftaran Tanda Dagang No 91/0143
di bawah Akta Cap Dagangan 1976 ('Akta'). Sebagai pengguna berdaftar, plaintif memiliki hak persendirian
dan eksklusif untuk menjual dan mengedar tanda dagang tersebut di Malaysia. Defendan, yang juga dalam
perniagaan menjual bateri jam tangan, telah menjual bateri jam tangan di bawah tanda dagang 'SEIZAIKEN'
tanpa kebenaran plaintif. Plaintif tidak pernah melantik defendan menjadi pengedar bateri tersebut dengan
tanda dagang itu. Pada 26 September 2002 defendan telah menawarkan penjualan konsainmen bateri jam
tangan dengan tanda dagang 'SEIZAIKEN' kepada syarikat Marusho Inter Pacific menggunakan bungkusan
yang sangat berbeza daripada
8 MLJ 550 at 552
bungkusan yang digunakan plaintif untuk membekalkan baterinya. Plaintif mendakwa bahawa penggunaan
tanda dagang 'SEIZAIKEN' oleh defendan merupakan pelanggaran tanda dagang dan disebabkan
pelanggaran tersebut plaintif mengalami kehilangan dan/atau kerugian. Ini merupakan tuntutan plaintif
terhadap defendan bagi suatu injunksi, suatu siasatan kerugian, penaksiran keuntungan, faedah dan kos.
Defendan berhujah bahawa ia telah mengimport baterinya yang bertanda dagang 'SEIZAIKEN' daripada
sebuah syarikat di Hong Kong, yang rupa-rupanya mendapatkan bateri tersebut daripada Seiko Inc di Jepun.
Oleh itu, defendan menghujah bahawa caranya mengimport dan mengedar bateri yang bertanda dagang
tersebut adalah diskripsi undang-undang pengimportan selari dan oleh itu, tidak melanggar mana-mana
undang-undang tanda dagang yang diperuntukkan dalam Akta tersebut. Satu-satunya isu yang perlu
dipertimbangkan dalam kes ini ialah sama ada transaksi mengimport bateri bertanda dagang 'SEIZAIKEN'
seperti yang dijalankan oleh defendan terdiri dalam kategori pengimportan selari dan tidak melanggar
mana-mana undang-undang tanda dagang.
Diputuskan, membenarkan tuntutan plaintif:
(1)

(2)

Import selari merujuk kepada barangan yang dihasilkan secara sah di luar negara tetapi
diimport dan diedar di Malaysia oleh orang lain selain daripada pengguna berdaftar tanda
dagang tersebut. Walaupun undang-undang Malaysia tidak secara nyata menghalang
pengimportan barangan yang selari ke Malaysia, terdapat syarat penting untuk pengimportan
selari menurut s 35 Akta, yang memperuntukkan hanya pengguna berdaftar tanda dagang
mempunyai hak eksklusif untuk menggunakan tanda dagang bagi barangan tersebut. Adalah
jelas atas prinsip dan autoriti bahawa undang-undang tanda dagang Malaysia adalah bersifat
kewilayahan. Dalam kes ini, plaintif sebagai pengguna berdaftar tanda dagang 'SEIZAIKEN'
mempunyai hak eksklusif untuk menggunakan tanda dagang itu di Malaysia berikutan s 35
Akta. Lagi pula, menurut s 38 Akta, tiada siapa mempunyai hak untuk mengimport, menjual
atau mengiklankan untuk penjualan bateri yang bertanda dagang 'SEIZAIKEN' tanpa
kebenaran plaintif. Dalam keadaan-keadaan ini, plaintif telah membuktikan pelanggaran oleh
defendan (lihat perenggan 12, 14-15 & 30).
Ratio di dalam kes Winthrop products Inc & Anor v Sun Ocean (M) Sdn Bhd & Anor [1998] 2
MLJ 317, satu-satunya autoriti di Malaysia yang membincangkan kedudukan import selari,
tidak terpakai langsung kepada fakta-fakta kes ini kerana plaintif tiada hubungan atau kaitan
dengan syarikat di Hong Kong yang mana bateri tersebut diimport atau sebarang kaitan

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dengan Seiko Inc di Jepun. Malah, tiada bukti bahawa syarikat Hong Kong tersebut adalah
pengedar sah bateri tanda dagang 'SEIZAIKEN' di Hong Kong atau bahawa Seiko Inc
merupakan satu-satunya pengeluar bateri tersebut (lihat perenggan 27-28).
8 MLJ 550 at 553
Notes
For cases on action for infringement, see 12 Mallal's Digest (4th Ed, 2005 Reissue) paras 2125-2126.
Cases referred to
Lim Yew Sing v Hummel International Sports & Leisure A/S [1996] 3 MLJ 7, CA (refd)
Winthrop Products Inc & Anor v Sun Ocean (M) Sdn Bhd & Anor [1988] 2 MLJ 317, HC (not folld)
Legislation referred to
The Trade Marks Act 1976

ss 35,

38, 40(1)(d)

Barry Goh Meng Yew (Iza Ng Yeoh & Kit) for the plaintiff.
Ismail bin Mohamed Arifin (Ram Reza & Muhammad) for the defendant.
Azhar Mohamed J
[1] This action raises a point of law concerning parallel importation in international trade. It has to do with the
legitimacy of parallel imports in the area of trademark protection.
[2] The plaintiff's cause of action in this suit is trademark infringement of the plaintiff's rights to the trademark
'SEIZAIKEN' pursuant to Trademark Registration No 91/01413 under the Trade Marks Act 1976 ('the Act') in
respect of batteries in class 9.
THE PLAINTIFF'S CASE
[3] In brief, the plaintiff's case is as follows. The plaintiff has the business of distributing and selling batteries
for watches and clocks as well as watches and clock parts. The plaintiff is and has been the registered
proprietor of the trademark 'SEIZAIKEN' pursuant to Trademark Registration No 91/01413 in class 9 under
the Act in respect of batteries in class 9. Indeed, that registration subsists to the present day. As a result,
thereof, the plaintiff is the sole and exclusive company in Malaysia that entitles them to sell and distribute
batteries under the trademark SEIZAKEN, and where no other person or company including Seiko
Instruments Inc and Star (Far East) Ltd is entitled to sell or distribute such batteries in Malaysia. The plaintiff
never gave permission to the defendant to sell or distribute for sale the batteries having the said trademark
SEIZAKEN. The defendant operates a business trading and selling watches, clocks and batteries for
watches and clocks.
8 MLJ 550 at 554
[4] The defendant has been from a date unknown to the plaintiff selling watch batteries in Malaysia under the
mark SEIZAKEN (the said infringing use) without the license of the plaintiff, the said batteries also have no
connection in the course of trade with the plaintiff. The plaintiff never appointed the defendant at any time to
be a distributor of the batteries bearing the trademark SEIZAKEN. The said infringing use by the defendant is
in the nature of the use of a mark that is identical with the said trademark as it is likely to deceive or cause
confusion in the course of trade in relation to the very same goods. The use of the mark by the defendant
likely is to be taken either as being use as a trademark, and/or as importing a reference made by the
defendant purportedly having the right either as registered proprietor or registered user to use the said
trademark or to goods, which the defendant is connected in the course of trade.

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[5] On 26 September 2002 and 27 September 2002, the defendant offered for sale a consignment of watch
batteries bearing the mark SEIZAKEN to Marusho Inter Pacific of Suite 26.00, 26th Floor, Menara IMC, No 8,
Jalan Sultan Ismail, 50250 Kuala Lumpur. The packaging used by the batteries that were supplied to
Marusho Inter Pacific by the defendant were clearly different from the packaging used by the batteries that
were supplied by the plaintiff and therefore the batteries sold by the defendant to Marusho Inter Pacific were
not supplied by the plaintiff.
[6] Because of such infringement by the defendant, the plaintiff has suffered loss and/or damage. In the
circumstances, the plaintiff claims against the defendant for an injunction, an inquiry as to damages, an
account of profits, interest and costs.
THE DEFENDANT'S CONTENTION
[7] Learned counsel for the defendant in his submission only raised one issue. The main thrust of his
argument is simply this. The defendant imported its batteries marked with 'SEIZAIKEN' from Star (Far East)
Ltd, a company based in Hong Kong, which in turn obtained the batteries from Seiko Instrument Inc in
Japan, the lawful manufacturer. He said that the SEIZAKEN batteries were genuine and not imitation or
'pirated' products. Emphasising this point, learned counsel argued that the defendant has therefore
established that the conduct and the mode of importing and distributing the SEIZAKEN batteries as
transacted by the defendant fall into the legal description of 'parallel import'. He referred to Halsbury's Laws
of Malaysia Vol 22 (2007 Reissue) (Intellectual Property) para 520.600, which states:
8 MLJ 550 at 555
Parallel imports means strictly the importation and sale by others of goods originating from the owner of industrial
property rights in parallel with his own importation of such goods, whether carried out by himself or through authorized
agents, but is used more generally to describe the importation and sale by third persons of goods obtained in another
country which originate from an internationally known company or group.

[8] He then referred to s 40(1)(d) of the Act. This is what it says:

(1)

Notwithstanding anything contained in this Act the following acts do not constitute an infringement of a
trademark -(d)
in relation to goods connected in the course of trade with the registered proprietor or a
registered user of the trademark if as to those goods or bulk of which they form part, the
registered proprietor or the registered user in conforming to the permitted use has applied the
trademark and has not subsequently removed it.

[9] Further, on this point, learned counsel also referred to Halsbury's Laws of Malaysia Vol 22 (Intellectual
Property) para 520.578 note 9, which read:
The Trade Marks Act 1976 section 40(1)(d) also makes it clear that parallel imports are not prohibited under this Act.
See also Winthrop Products Inc & Anor v Sun Ocean (M) Sdn Bhd & Anor [1988] 2 MLJ 317.

[10] As a final point, learned counsel argued that the transaction of importing and distributing the batteries
bearing SEIZAIKEN trademark as conducted by the defendant falls within the category of parallel importation
and hence does not breach any trademark law as stipulated in the Act. Hence, the plaintiff's claim must be
dismissed with costs.
FINDINGS OF THE COURT
[11] I now turn to consider the one and only contention put forth by learned counsel for the defendant. I could
not agree with it. Having regard to the irrefutable factual matrix in the present case, in my view, the defence

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of parallel importation fails. My reasons now follow.

[12] Generally speaking, parallel imports refer to goods, which are lawfully manufactured overseas but
imported and distributed in Malaysia by a person other than the registered proprietor of the trademark.
Parallel imports benefit consumers as the goods may be sold at lower prices in the domestic market due, for
examples, to fluctuations in currencies, market strategy, trade policy and distribution costs. Parallel imports
are sometime referred to as 'grey
8 MLJ 550 at 556
market' goods because even though they are legitimately manufactured and marketed abroad, problems
time and again crop up, such as the case at hand, whether the goods maybe legitimately imported and
distributed in Malaysia.
[13] Here I will mention one point. It is important to distinguish between parallel imports and 'pirated' goods;
the former are legitimately manufactured genuine goods whilst the latter are imitation or counterfeit goods. In
this context, it goes without saying that our laws prohibit the importation or dealing with counterfeit or 'pirated'
goods.
[14] On the other hand, it seems to me that our laws do not expressly forbid the importation of parallel goods
into Malaysia; it is a lawful international business. Nevertheless, there is this very important qualification to
be made. Not all parallel imports are permitted under the Act for the reason that by virtue of s 35 of the Act
the registered proprietor of the trademark has the exclusive right to the use of the trademark in relation to
those goods. It seems to me clear on principle and on authority that our trademark law is territorial in nature.
That this principle has been firmly laid down can be seen in our Court of Appeal in Lim Yew Sing v Hummel
International Sports & Leisure A/S [1996] 3 MLJ 7.
[15] In the context of the present case, as the registered owner of the trademark since 6 September 1991,
the plaintiff has been the owner of the trademark in Malaysia for 18 years. As registered owner of the
trademark 'SEIZAIKEN', the plaintiff has the exclusive right to use the trademark in Malaysia by virtue of s
35 of the Act. This means that no one else has the right to import, sell or advertise for sale batteries bearing
the trademark 'SEIZAIKEN' in Malaysia without the prior permission of the plaintiff as the registered owner of
the same by virtue of s 38 of the Act (see: The Annotated Statutes of Malaysia (2005 Reissue) MLJ at pp
69 and 70).
[16] It is undisputed and in fact admitted by the defendant that it has imported from Hong Kong in Malaysia
batteries bearing the mark 'SEIZAIKEN'. Those batteries came from another source that could not have
originated from the plaintiff. The plaintiff has never authorised nor gave any rights to the defendant or the
supplier in Hong Kong or the lawful manufacturer to import, distribute or sell batteries bearing the
'SEIZAIKEN' in Malaysia.
[17] Which brings me to the argument of learned counsel for the defendant to the effect that the transaction
of importing the batteries bearing SEIZAIKEN trademark as conducted by the defendant falls within the
category of parallel importation and hence does not breach any trademark law.
8 MLJ 550 at 557
[18] In the first place, I find it useful to refer Trade Marks Law in Malaysia, Cases and Commentary by Dr Ida
Madieha bt Abdul Ghani Azmi, where in commenting s 40(1)(d) of the Act, the learned author summarises
the principle as follows:
With regard to subsection (d), the element of consent must exist. This provision indirectly covers parallel imports, as
this is where the issue of implicit consent appears.

[19] The above summary captures the essence of the point that I want to make. The reading of the provision
therefore made it possible for a valid registered trademark owner in Malaysia to put a stop to parallel imports
of the goods bearing a similar trademark from overseas. Therefore, in the context of our present case,
parallel imports of the batteries bearing SEZAIKEN trademark are permitted under the Act, if and only if the

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plaintiff must be taken to have consented to their importation, distribution and sale in Malaysia. To make this
point clear, I should refer to WR Cornish in Intellectual Property: Patents, Copyright, Trade Marks and Allied
Rights (1st Ed). The learned author at p 569 makes clear the issue of implicit consent in relation to parallel
imports in the context of trademarks in international trade as follows:
Like other rights discussed in this book, trademarks have been used as a means of dividing the national markets for the
goods of connected enterprises. But the legal techniques have been more complicated, because trademarks fulfill a
different function from intellectual property in a strict sense. At least in many states, the owner of a trademark has not
been able to use his rights to repel the importation of goods, which he has originally marketed elsewhere. For this,
there is an obvious reason: the mark does not cease accurately to indicate that the goods originate from him merely
because they cross a national frontier. Certainly, in British law this principal is clear.
If the trademark is in different legal hands, the national owner in the country of import could say that the mark had not
been applied in order to indicate a connection with him, but rather with the owner in the country of first marketing. But if
the legal entities were in fact economically connected-because each was owned by a common parent company, or they
were both licensees or distribution agents with a common source -- to say so might seem no more than a pretext for
dividing markets. Accordingly, in some European countries, the courts have refused to allow the local trademark owner
in such cases to preclude parallel imports of 'connected' goods.
In the United Kingdom, where the question has to be worked out in relation both to common law and to statutory rights,
the Court of Appeal has decided part of the issue in the same sense. The Revlon group of companies operated in
Europe through two subsidiaries, one of which was the owner and the other the registered user of the British mark
'Revlon Flex' for (inter alia) shampoo. When the parent company distributed 'Revlon Flex' shampoo in the United States
and a parallel
8 MLJ 550 at 558
importer brought it into Britain for sale, the European subsidiaries were unable to establish that the sales amounted to
either passing off or infringement of the registered mark. The reputation relevant to passing off was that built up by the
multi-national group, the British public being unaware of which member company made or produced the goods and
where they were manufactured. Accordingly, there was no misrepresentation in selling shampoo originally put out by
the American parent.
As far, as concerns the registered mark, there is no infringement where the British proprietor or user has applied the
mark to other goods, or has at any time consented to its use. In the view of Buckley and Bridge L.J J the European
subsidiaries could not be treated as having actually applied the mark to the goods in question, but they must be taken
to have consented to its use in relation to them. This implication was spelled out of two factors: the parent company's
legal power to impose its will upon all subsidiaries, and the deployment of the mark as a house mark for the whole
mark.

[20] The last paragraph deserves a critical reading. Returning to our present case, concerning the case
Winthrop Products Inc & Anor v Sun Ocean (M) Sdn Bhd & Anor [1988] 2 MLJ 317, the learned author, Dr
Ida Madieha bt Abdul Ghani Azmi in her book, which I have referred to earlier, highlighted some very
important principles and they are as follows:
It was held in this case that since both the Panadol from the plaintiff and that from the defendant were from the same
manufacturing company, there was no infringement of trademark or passing off. What happened here was only an
infringement of the restriction of sale in particular geographical area. Since there was no such restriction in the
agreement entered into between the plaintiff and the manufacturer, the plaintiff had no right to restrict the defendant
from selling the Panadol that it had imported from elsewhere.

[21] This is an important point because it seems to me that the case Winthrop Products Inc & Anor v Sun
Ocean (M) Sdn Bhd & Anor is the only authority in Malaysia in which the position of parallel imports was
explored. There, the court held that the defense of parallel importation applied against an action of trademark
infringement. However, a very important fact that cannot be overlooked in that case is that the same
corporate group was manufacturing tablets under the Panadol trademark in the United Kingdom and in
Malaysia under subsidiaries of the same in that case is that the corporate group. The defendant imported
Panadol branded tablets from the United Kingdom subsidiary of that same corporate group. The first plaintiff
was the Malaysian subsidiary of the same corporate group. That is why the Malaysian subsidiary was
deemed to have impliedly consented to the importation of the tablets by the defendant from its United
Kingdom related
8 MLJ 550 at 559
company, because the defendant was in effect buying from the plaintiff in the United Kingdom those tablets.

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VC George J in the Winthrop's case:

'Panadol' is the trademark under which the well-known analgesic is sold. It is what is known as an invented word mark.
In the United States of America, the owner of the trademark is Sterling Drug Inc. In the United Kingdom, it is owned by
Sterling Winthrop Group Ltd. In Malaysia, it is owned by the first plaintiff Winthrop Products Inc, a company
incorporated under the laws of the state of Delaware, USA. Winthrop Products Inc has registered-user rights of the
mark in the United Kingdom. The second plaintiff is registered in Malaysia as the sole registered user of the mark. All
these corporations are related corporations. A look behind the corporate veil revealed that these corporations are all
members of a group of companies that function on a worldwide basis with a turnover of some US$2 billion per annum.
The parent company is Sterling Drug Inc of the USA. The worldwide activities of the group are carried out by
sub-groups, each functioning in different geographical areas.

[22] Further down at the same page the learned judge added:
It would appear that the ownership (or substantial ownership) of the various corporations in the group, certainly that of
the Malaysian, British and American companies that were specifically referred to here before, can be traced to Sterling
Drug Inc.

[23] Moreover, the learned judge said further at p 319:

The plaintiffs' complaint against the defendants is that the second defendant imported into Malaysia the blue pack
Panadol which they had obtained from the British domestic market and that they had sold such Panadol in the
Malaysian market through, inter alia, the first defendant. For the plaintiffs, it is contended that such importation and sale
of the blue pack Panadol in Malaysia infringes the first plaintiff's proprietorship and the second plaintiff's user rights in
the 'Panadol' trademark.
It is also contended that the defendants have by putting the blue pack Panadol in the Malaysian market practiced a
deception on the Malaysian public that amounts to a passing off the blue pack Panadol as being that of the plaintiff's.

[24] At p 321, the learned judge explained:

The position that obtained was that Winthrop Products Inc, the first plaintiffs, having a registered-user right in respect of
the mark in the United Kingdom and ownership in the mark in Malaysia, could manufacture and sell the product
Panadol in the United Kingdom and in Malaysia. Under trademark law, there was
8 MLJ 550 at 560
nothing to stop them from exporting their product from the United Kingdom to, say, Malaysia and vice versa. There
was, and is, nothing in trade mark law to stop them, or for that matter any trader, from exporting Panadol made in the
United Kingdom by either Winthrop Products Inc or by the Sterling Winthrop Group Ltd other than any contractual
restrictions that there may have been imposed. There were no such contractual restrictions.
The leading English case on so-called parallel importation is Revlon Inc & Ors v Cripps & Lee Ltd [1980] FSR 85 where
the facts are not dissimilar to the facts in the instant case as can be seen from the judgment of Dillon J commencing at
p 90 of the report.

[25] Further down at p 322, the learned judge stated the principle as follows:
I will with respect and gratefully echo (a fortiori) Templeman LJ and say that where a parent company (or a group of
companies) chooses to manufacture and sell wholly or partly through subsidiary companies in different parts of the
world products which bear the same trademark, neither the parent or any member of the group nor any subsidiary can
complain in Malaysia if those products are sold and resold under that trademark. A purchaser of the analgesic Panadol
manufactured and or sold by a Sterling company and sold under the 'Panadol' trademark whether in the United
Kingdom or in Malaysia or in any other part of the world is at least entitled to assume that he will not be sued by a
Sterling company in Malaysia or in the United Kingdom or anywhere else merely because of the place of manufacture
of the product which he has acquired under the trademark 'Panadol'. The legal ownership of the trademark 'Panadol'
enables the proprietor to protect in Malaysia the reputation and goodwill of the owner and of the group of which the
owner is a member by ensuring that no goods are sold with the mark unless they are produced and labelled by a
Sterling company. The legal ownership of the mark does not go further and enables the owner or registered user to
ensure that products manufactured elsewhere (eg in the UK or in the USA) are not sold within the territory of Malaysia.
Neither common law nor the statute law of Malaysia allows this. The object of s 52(3)(a) of the Ordinance of 1950 is to
prevent the owner of the trademark claiming infringement in respect of a product which he has produced and to which
he has attached the trademark. In the circumstances of the Sterling group (as in the circumstances of the Revlon group
in the Revlon case) applying the approach of Cross LJ in GE Trade Mark [1970] RPC 339, user by the parent or any
one of its subsidiaries may be considered a user by the proprietor. In my judgment, neither of the plaintiffs may

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complain of or object to the putting into the market in the United Kingdom or elsewhere of products by their related
companies of the similar product bearing the same trade mark and that thereafter they can be said to have impliedly
consented to their doing so that the holder from time to time of the goods acquires the absolute ownership of the goods
including the right to sell the goods in any part of the world in the same condition in which they were disposed of.
Accordingly, both the plaintiffs in the instant case have impliedly consented to the use of the trademark by the
manufacturers of the blue
8 MLJ 550 at 561
pack Panadol in the United Kingdom, which had found its way into the ownership of the defendants.

[26] Finally, the learned judge concluded at p 323:

The same situation obtained here. The products sold by the defendants are what the defendants say they are -- blue
box Panadol manufactured, named, labeled and put into circulation by a Sterling company. The plaintiffs' case fails on
both counts. The action is dismissed with costs.

[27] But then, the facts in the Winthrop's case are in sharp contrast with the facts of the present case. The
plaintiff herein is unrelated to Star (Far East) Ltd and to Seiko Instruments Inc of Japan. Indeed, it was never
alleged nor put to PW2 by learned defendant's counsel in cross-examination of PW2 that there was ever any
such connection or association. DW1 himself admitted that the plaintiff has no affiliation with Seiko. That is
why, by the fact alone the ratio in the Winthrop's case does not apply in any manner whatsoever to the facts
of the present case.
[28] In any event, the defendant has failed to prove that the batteries that it imported and sold in Malaysia
were actually procured from Star (Far East) Ltd of Hong Kong. There is no admissible evidence to prove that
that Star (Far East) Ltd of Hong Kong was the authorised distributor of SEIZAIKEN batteries in Hong Kong.
Furthermore, the defendant had failed to prove that Seiko Instruments Inc of Japan manufactured those
batteries so imported and distributed and that Seiko Instruments Inc was the only manufacturer of such
batteries.
[29] Going beyond that, in my judgment, it makes no difference at all whether the batteries imported,
distributed and sold domestically by the defendant were genuine products made by Seiko Instruments Inc of
Japan. After all, Seiko Instruments Inc itself does not have the right to sell batteries under the trademark
'SEIZAIKEN' in Malaysia because the plaintiff is the registered owner of the trademark in Malaysia, and only
the plaintiff has the right to import, distribute and sell in Malaysia batteries bearing the trademark
'SEIZAIKEN' since 6 March 1991.
[30] In the result, for the reasons already given, clearly, the defendant violated s 38 of the Act and the
plaintiff has unmistakably proven infringement by the defendant. It cannot be disputed that the mark applied
to the batteries imported, distributed and sold by the defendant is identical to the trademark 'SEIZAIKEN'.
8 MLJ 550 at 562
[31] That being the case, I allow the plaintiff's claim. Hence, I grant an order in terms of encl 1 (the plaintiff's
statement of claim) para 8, prayers (a), (b), (c) and (d).
Plaintiff's claim allowed.

Reported by Kohila Nesan