MY High Court rules Lex biscuits infringes trademark of Munchy's Lexus brand

The Federal Court has ruled that Huasin Food Industries has infringed on the trademark of Munchy Food Industries for its Lexus-branded biscuits. Munchy Food has held the trademark for Lexus since 23 January 1998, 17 years before Huasin Food had even commenced the use of its trademark, the written judgement said.

The three-member court bench was led by Justice Mohd Zawawi Salleh and included Justice Harmindar Singh Dhaliwal and Justice Hasnah Mohammed Hashim. All three judges were in agreement in their decision meted out on 5 October that Munchy Food held exclusive rights to the trademark.

"I am satisfied that the Plaintiff (Munchy Food) has exclusivity over the registered trademark and will not create a monopoly by the Plantiff (Munchy Food) of the biscuits," Hasnah Mohammed Hashim said.

"Munchy Food need not seek as an option before commencing an action for trademark infringement and/or passing-off to vary its registered trademark as remedy under any circumstances especially if the trademark of Huasin Food is not registered," he added.

The dispute between both parties dates back to 2015 when Munchy Food first received a complaint from its customer who had wrongly associated Lexus-branded biscuit with the Lex-branded one produced by Huasin Food. According to the written judgement, Huasin Food used a combined mark comprising of stylised "Lex" in a circular design with a curved stalk of wheat from its cream sandwich biscuit products.

On 25 September 2015, Huasin Food applied to the Registrar of Trade Marks to register its Lex mark. Munchy Food then filed an opposition to the former's trademark application and subsequently brought an action in the High Court for trademark infringement. Munchy Food previously claimed that Huasin Food had infringed its registered trademark under section 38 (1) (a) of the Trade Marks Act (TMA) 1976 by using the trademark Lex, which Munchy Food said is "deceptively similar" to its trademark in relation to its products which include biscuits and/or cream sandwich.

Meanwhile, Huasin Food filed a counterclaim pursuant to section 45 (1) (a) TMA for a court order to remove the Lexus registered mark from the register based on the grounds that the public is likely to be deceived and/or confused between Munchy Food's and Toyota's Lexus mark. Huasin Food added that Munchy Food's Lexus mark is not distinctive of the latter's biscuits.

The High Court ruled that Huasin Food's Lex-branded biscuits had infringed Munchy Food's trademark for its Lexus biscuit, adding that the Lex-branded biscuits could pass of as the Lexus-branded biscuit by Munchy Food. The High Court also dismissed Huasin Food's counterclaim against Munchy Food.

Meanwhile, the Court of Appeal had ruled in Huasin Food's favour and said the High Court failed to consider whether on the totality of evidence, it should allow marks in dispute to co-exist and dismiss Munchy Food's claim as well as the counterclaim.

"In addition, the issues such as deception, confusion, imperfect or recollection, must be dealt with the evidence of literacy level of the consumers purchasing the product," the written judgement said. The Court of Appeal also offered both parties a chance to settle the dispute based on the trademark co-existence provision.

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