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IP NEWS: Court Orders Destruction of Counterfeit MK Products

Wednesday, 21 July 2010 00:00

Case No. 1397/2002 first decided before the First Hall Civil Court by Judge Joseph Azzopardi on the 13th June 2005,  and subsequently reocnfirmed by the Court of Appeal on the 1st February, 2008 in the names:  Adv. Dr. Michael Tanti Dougall as a special mandatory of the foreign company MK Electric Limited of Novar House (UK) -vs -  Master Electric Co. Limited. Tanti-Dougall & Associates, Advocates represented MK Electric Limited in the relative proceedings


MK Electric Limited imported MK products to Malta, which are an international known brand in connection with electrical products, having been so distributed in Malta for many years, and having had its trademark iegistered in Malta.Indeed, the MK lettering had been registered since 1984, and this for electrical plugs, electrical sockets, switches, seitchboxes, junction boxes, circuit breakers, fuse boxes and transformers.

Consequently, due to the great expenses the company has incurred through research, the capacity to invent, and through a lot of advertising, the company has gained a good going concern and a good reputation both in the foreign market and in the local market in connection with the MK products.

On the 28th August 2002, the Comptroller of Customs was suspicious that the MK RCCB switches products which were about to be released on the market were not genuine products. In fact, after the plaintiff company carried out its preliminary verifications, on the 27th August 2002, the Company presented its submissions, so that the counterfeit MK products would not be released on the market, and that ultimately they would be destroyed.

The Defendants argued that MiKa Trademark was in fact registered with the Trademarks Department under Class 9. Moreover, MiKa is totally different from MK.

The Court quoted from Kerly: Law of Trade Marks and Trade Names, which states that: two marks, when place side by side may exhibit many ad various differences, yet the same idea left on the mind may be the same.The question is not whether if a person is looking at two trademarks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed trademark in the absence of the other trademark was, and in view of the general recollection of the other trademark was, would be liable to be deceived, and to think that the trademark before him is the same as the other, of which he has the general recollection.”

In this case, the Court upheld the plaintiff`s request and agreed that the consumer could be confused when purchasing products of MiKa thinking that they were MK products. Moreover, when the two products were placed near each other, the Court was convinced that a possibility of confusion could easily arise.

Consequently, the Court ordered that the Comptroller of Customs would destroy the products within one month, and that all the expenses would be borne by the defendants.

The defendants filed an appeal, which was subsequently decided on the 1st February 2008, since they felt that the first Court did not appreciate the differences between the two marks.

The Court of Appeal, composed of The Hon. Judge Vincent Degaetano, The Hon. Judge Tonio Mallia and The Hon. J. Magri noted that when it observed an MK product next to the MiKa product, it observed that the “i” and the “a” were so minute, that a lens was required to see them. The Court of Appeal stated that as soon as it saw the MiKa product, one for surely thinks that it is an “MK” product.

Th  The Court of Appeal quoted from “Intellectual Property” by David Bainbridge, (Longman 5th Edition 2001, Page 603), whereby the phrase “likelihood of confusion” was examined in the case before the European Court of Justice in Sabel BC versus Puma AG, Rudolf Dassler Sport, which was decided in 1998. The European Court continued to decide such cases according to the principles established therein that is: The likelihood of confusion must be appreciated globally, taking account of all relevant factors; the matter must be judged through they eyes of the average customer, of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant – but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind (the concept of imperfect recollection); the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; the visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impression created by the amrks bearing in mind their distinctive and dominant components; a lesser degree of similarity between the marks may be offset by a greater similarity between the goods or services and vice versa; there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character either per se, or because of the use that has been made of it.”

The Court of Appeal observed that the circuit breakers in question were produced nearly the exact copy of the label that is produced by the Plaintiff. The way how, which is surely with a malicious intent, the defendant company “hid” the letter “i” and “a” is a clear indication for the Court of directly copying the plaintiff`s label. It is true that the plaintiff does not have the letters “M” and “K” for their exclusive use, when they are used separately, but the way the defendant company has reproduced together these two letters does not leave any doubt, in the mind of the consumer, that the product that it is purchasing is attributable to the plaintiff company, which enjoys a good reputation in the market. The mark under scrutiny so much resembles that of the plaintiff company that the consumer could easily believe that the product that he is purchasing is actually an MK product, and consequently, it is endowed with all the guarantees that MK products have to offer, including the guarantee of quality, safety and perfection for which MK is renowned for. Whosever sees the circuit breaker that is being imported by the defendant company could easily believe that it has the same qualities that the genuine products have.

The Court cited a case “PFIZER Ltd bersus Eurofood Link (UK) Ltd. The claimant was licensed to used the registered trade makr “Viagra” registered in respect of pharmaceutical and vererinary preparations and substances sold under that name were used to treat impotence in males known as erectile dysfunction. The defendant intended to market a drink called “Viagrene” to be sued as a mixer such as tonic water. The advertising for the drink was reminiscent of the claimant`s product such that people might think they were buying a drink that would enhance their love life. Granting summary judgement to the claimant for trade mark infringement and passing off, it was held that regard must be held to the interdependence and similarity of the trademarks and the similarity of goods, in accordance with jurisprudence of the European Court of Justice. Infringement under section 10 (2) was found even though the goods were in some respects dissimilar.”

The Court of Appeal confirmed the First Judgement and ordered the destruction of the MiKa Products seized by customs.