Facts of the case / Background of the case
- Plaintiff contended that he is a widely known, influential celebrity and has numerous fans not only in Malaysia but on international level who is known by the name of “Hafiz Hamidun”. Apart from being a singer and/or music composer who has produced various music albums and has in fact won various music awards using the name “Hafiz Hamidun”, plaintiff also was being listed on The World’s 500 Most Influential Muslim (The Muslim 500) in the year 2015 and 2016 as an influential Muslim celebrity in the world. Plaintiff is also a director and major shareholder of 80% of the total issued shares of Haje Sdn. Bhd. (“HSB”), which was previously known as Mikraj Concept Sdn. Bhd. HSB conducts the business of manufacturing and trading of clothes, apparel, garments and related clothing accessories.
- Defendant on the other hand, is a company that was established in 1972 and had since conducted its business using the “KAMDAR” trademark that sells various fabrics through retail and wholesale stores.
- In this case, Plaintiff claimed that the Defendant has sold products using the Plaintiff’s name without the Plaintiff’s authorization. So this arises the issue whether the Plaintiff can claim that the Defendant has committed the tort of passing off the Defendant’s fabrics for Baju Melayu that has been printed, labeled and marketed under the Plaintiff’s name as fabrics which have been manufactured by, endorsed by or related to the Plaintiff.
- The Plaintiff contended that he had earned a valuable goodwill and reputation in the brand name “Hafiz Hamidun” not only in the music industry but also in the fabric industry in Malaysia as he had been selling and promoting his clothing or fashion line under HSB using the brand name “Hafiz Hamidun” since 2014.
- The Defendant resisting the Plaintiff’s claim and argued that the brand name “Hafiz Hamidun” had been owned by HSB and not the Plaintiff himself.
- Given there is no statutory trade mark registration, who is the common law owner of the goodwill in the brand name “Hafiz Hamidun” for fabrics or apparel sold by HSB. Does it belong to Plaintiff or HSB?
Federal Court has restored the High Court decision and ruled that Plaintiff has the goodwill in business regarding Plaintiff’s Name. Due to Plaintiff’s fame as a Nasyid singer, Plaintiff has substantial or significant goodwill in the business regarding Plaintiff’s Name (Plaintiff’s Goodwill) when Plaintiff’s name is used in relation to Plaintiff’s Goods. The Court cited the case of The Commissioners of Inland Revenue v Muller & Co’s Margarine Ltd when the Plaintiff’s goods are marketed and sold based on the Plaintiff’s Name, the Plaintiff’s Name constitutes an “attractive force which brings in custom”. Plaintiff’s Goodwill is clearly shown in the messages from Plaintiff’s fans.
This Federal Court case could be one of the many landmark cases when it revolves around the same issue as Hafiz Hamidun’s. Even though there is no statutory trademark registration that has been made previously by Plaintiff, since Plaintiff has passed the goodwill test as in the Muller case, the verdict is made in Plaintiff’s favor.