Recently, there has been much controversy surrounding our Malaysian-made whiskey, TIMAH. It was stated that TIMAH sounds like FATIMAH and that they are confusingly similar and would cause public confusion and provocation.
Now, is TIMAH considered similar with FATIMAH from a trademark's perspective?
The Law on Similarity of Trademarks
How do we decide whether two trademarks are similar to each other? By calculating the number of common letters? By pronunciation? By appearance? Is changing a little on the trademark considered similar to the earlier one?
The truth is the Malaysian Trademarks Act 2019 ("Trademarks Act") does not provide a fixed formula in calculating the percentage of similarity between two trademarks.
For example, in deciding registrability of a trademark, Section 24(2)(b) of the Trademarks Act provides that the Registrar shall refuse to register a trademark if there exists a likelihood of confusion on the part of the public where the trademark is similar to an earlier trademark and is to be registered for goods or services identical with or similar to the earlier trademark.
On the other hand, on infringement of trademark, Section 54(2)(b) stipulates that a person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public.
As we can see from the above provisions, when comes to the comparison of trademarks, there are 3 major elements to be considered:-
Similarity of the trademarks
Likelihood of confusion
The goods and services
Section 9 of the Trademarks Act provides that, in determining the likelihood of confusion, the Registrar or the Court may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with an earlier or registered trademark.
Since there are not many details provided by Section 9, it may be helpful to look into how it is being interpreted in the UK and Singapore.
According to the UK’s 16th edition of the Kerly’s Law on Trade Marks and Trade Names as well as the Singaporean decision of Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd, some factors to be assessed on whether there is a likelihood of confusion are including:-
(a) the degree of similarity between the signs - The Registrar shall look at the degree of visual, aural or conceptual similarity between them, i.e. the substantive similarity;
(b) specification of goods or services - The Registrar shall take into account the nature of the goods and services in issue and should be confined to the substance;
(c) nature and kind of users / the relevant public - The matter must be considered through the eyes and perception of the average consumers of that particular goods or services in issue;
(d) the mark to be considered as a whole - Besides substantive similarity, the Registrar shall look at the distinctive and dominant components of the sign.
These factors have also been considered in Malaysia's case of Elba Group v Pendaftar Cap Dagangan dan Paten Malaysia [1998] 4 MLJ 105.
Are TIMAH and FATIMAH Confusingly Similar?
Our humble view is, they are not.
Based on the foregoing, there are many factors to be considered in deciding whether two trademarks are similar. It is wrong to conclude the similarity solely on the basis that they share common elements --- "TIMAH".
When comparing as a whole, the TIMAH trademark is distinctive of FATIMAH in the sense that they are conceptually dissimilar, because the whiskey “TIMAH” is named after the meaning of ‘TIN’ in English which is very different from FATIMAH.
Furthermore, considering the habit of pronunciation, the initial pronunciation of "Fa" is another distinguishing factor to differentiate FATIMAH from TIMAH. This is because most people have the tendency of slurring the ends of words or dropping their voices at the ends of words. For example, in one UK case, In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264, the Court found that the word "Tripcastroid" and "Castrol" were dissimilar. The Judge observed that,
"...But the tenancy of persons using the English language is often slurred at the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction,"
In light of the above, we believe that the public is unlikely to read TIMAH as an equivalence of FATIMAH, and there is no likelihood of confusion.
Written by,
IP Legal Intern
LL.B (HONS), CLP
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 the professionals.
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