KOTA KINABALU: The Court of Appeal yesterday unanimously decided in favour of a Sabah-based company, Makamewah Sdn Bhd, after Suria KLCC Sdn Bhd, a peninsula-based company, failed in its appeal to restrain Makamewah Sdn Bhd from using the name and logo of “Suria” as its trademark.
A three-man panel comprising Justices Datuk Mohd Hishamudin Mohd Yunus, Datuk Azahar Mohamed and Datuk Balia Yusof Haji Wahi, affirmed the High Court’s decision in dismissing a suit initiated by Suria KLCC against Makamewah over the usage of the logo and name of ‘Suria’.
The appellate judges dismissed with costs the appeal by Suria KLCC Sdn Bhd against the High Court’s decision after hearing submissions from counsel Roger Chin, for the appellant, and reply from the respondent’s counsel Shireen Leandra Sikayun.
Judicial Commissioner Stephen Chung in dismissing the suit on May 21, 2012 held that the peninsula-based company had not proven Makamewah’s act and conduct as having amounted to misrepresentation in the course of trade calculated to injure the business or goodwill of Suria KLCC and to cause actual damage to its business.
In his 10-page judgement, Chung among others, pointed out that Suria KLCC did not possess a monopoly or an exclusivity in the use of the word or name of ‘Suria’ because it is a common word and not one which was invented.
He went on to state that the word ‘Suria’ is a common or generic word and is used quite commonly as a name for businesses in Malaysia including such names as Suria FM for a radio station, Suria Beach Resort Pangkor or Suria Beach Resort or Suria Cherating Beach Resort for hotels and beach resorts.
“It is apparent the plaintiff does not have a monopoly or exclusive use of the word or name ‘Suria’ because it is a common word and not an inventive word. Even the plaintiff does not have the right to the exclusive use of the letters ‘KLCC’ as stated in its certificate of registration for trademark,” Chung stressed.
Earlier, in urging the court to dismiss the appeal with costs, Sikayun informed the court that the appellant had failed to adduce any evidence to prove the likelihood of deception and confusion between the appellant’s trade marks and that of the respondent’s amongst the average customers.
She submitted that the appellant’s other shopping malls are named the Alamanda Shopping Centre and the Mesra Mall and ‘SURIA’ was not part of the names.
She pointed out that the appellant is not part of a shopping mall chain in Malaysia that uses ‘SURIA’ as part of its names so as to allow the public to easily identify the respondent’s shopping mall as being part of the appellant’s.
Furthermore, the appellant had not adduced any evidence to prove that the respondent had intended to misappropriate or ride on the appellant’s alleged tremendous goodwill and reputation in the appellant’s trade marks and SURIA KLCC shopping mall.
Suria KLCC in its suit filed in 2009 was seeking among others, damages and an injunction to restrain Makamewah from using the logo and name of “Suria” as it was alleged to have caused loss and damage to its trade, goodwill and reputation.
In its affidavit-in-support, Suria KLCC claimed that on May 7, 2008, the company found Makamewah had started development and construction of a commercial complex which was then advertised, promoted, leased and managed by the defendant using the name ‘Suria Sabah’, and/or a ‘swirl device’ and/or ‘Suria Sabah and a swirl device.
They claimed that Makamewah’s trade marks were identical to that of the plaintiff’s or so nearly resembling the plaintiff’s trade marks that were likely to cause confusion and deception in the course of trade amongst the public.