IS A COMPETITOR “PASSING OFF” THEIR PRODUCTS AS YOURS?

Imagine spending years establishing a reputable brand, only to discover a rival business selling products in packaging that looks nearly identical to yours, mimicking your colour palette, typography, and trade dress. What if you have not yet secured a registered trademark?

In Malaysia, you do not need a registered trademark to protect your brand’s hard-earned reputation. Under the common law, the Tort of Passing Off provides an effective legal remedy to stop copycats from trading off your goodwill and confusing the buying public.

Passing Off vs. Trademark Infringement: What is the Difference?

Both mechanisms protect business identity, but they originate from distinct legal foundations:

The “Classic Trinity”: The Three Mandatory Legal Elements

In the foundational English House of Lords authority of Reckitt & Colman Products Ltd v. Borden Inc [1990] 1 AER 873 (the famous Jif Lemon case), the courts established what is known as the Classic Trinity.

In Malaysia, the Federal Court in Ortus Expert White Sdn Bhd v. Nor Yanni Bt Adom & Anor [2022] 2 MLJ 67 reaffirmed that to succeed in passing off, a plaintiff must establish three elements on a balance of probabilities:

For a brand owner, establishing all three prongs is essential. Conversely, for a defendant, breaking any one leg of the Classic Trinity is the primary strategy to defeat a passing off lawsuit.

The Federal Court Landmark: Ortus Expert White v. Nor Yanni [2022]

A textbook illustration of passing off occurred in Ortus Expert White:

• The Dispute: The plaintiff manufactured skincare products marketed under the brand and get-up “Royal Expert White”. After their distribution contract was terminated, the defendants launched a competing cosmetic line called “Real Expert White” using nearly identical packaging, font style, and colour layout.
• Goodwill Exists Independently of Registration: The Federal Court held that the plaintiff had established substantial goodwill through continuous trading and consumer recognition. Goodwill is a question of fact that does not depend on a trademark certificate.
• The Test of “Imperfect Recollection”: The apex court stressed that the test for misrepresentation is NOT a microscopic side-by-side comparison in a courtroom. Instead, the court evaluates the overall impression created in the mind of an ordinary consumer with imperfect recollection. Despite the subtle textual difference between “Royal” and “Real”, the overall get-up created deception.
• Damage Inferred: Once deceptive misrepresentation is proven, damage to the plaintiff’s business (loss of sales and brand dilution) will be inferred by the court.

Everyday Malaysian Examples

Passing off disputes in Malaysia frequently involve household FMCG goods, such as:

• Tamin Soya Sauce: Famous litigation over distinctive bottle shapes and label colours;
• Munchy’s “Lexus” Biscuits: Actions protecting iconic cream-sandwich cracker packaging and trade dress.

Conclusion

Nobody has the right to represent another’s goods as their own. While registering your trademark under the Trade Marks Act 2019 is always recommended for maximum statutory security, the common law Tort of Passing Off ensures that unregistered businesses and novel product get-ups remain robustly shielded against deceptive imitators.

Disclaimer: This article is for informational purposes only and does not constitute formal legal advice. For assistance with passing off claims, trademark disputes, or intellectual property protection in Malaysia, please contact Hasrina Hakimi Advocates & Solicitors.