• Sika sought to stop Nippon Paint from using a container with a get-up similar to its SikaLatex 118 product.
• The court dismissed Sika’s claims for trademark infringement, passing off and unlawful interference with trade, but partially allowed its copyright infringement claim.
• The court disagreed with Sika’s contention that its yellow jerrycans, with a red cap and the numeral ‘118’, had acquired the necessary level of distinctiveness.

For many years, Sika AG has been using yellow jerrycans with a red cap and the numeral ‘118’ printed on it to distribute its emulsion products. In October 2021 Sika and its two affiliated companies (collectively ‘Sika’) filed suit in the Kuala Lumpur Intellectual Property High Court to stop a well-known paint manufacturer, Nippon Paint (Malaysia) Sdn Bhd, from using a container with a similar colour scheme and the numeral ‘118’. Sika alleged trademark infringement, passing off and unlawful interference with trade. It also included a claim for infringement of copyright allegedly subsisting in (a) its product description and (b) product data sheet.
After a two-year fight, the court dismissed Sika’s claims against Nippon Paint for trademark infringement, passing off and unlawful interference with trade, with costs. However, it partially allowed Sika’s claim for copyright infringement.

Background
In addition to its house mark SIKA, Sika has also secured a registered trademark for SIKALATEX. Its polymer emulsion products were sold by reference to its well-known house mark – namely, the word ‘Sika’ written in a stylised manner within in a red triangle. Sika’s polymer emulsion also bore the registered trademark SIKALATEX, together with the numeral ‘118’. Nippon Paint distributed a similar line of products bearing its distinctive house mark NIPPON PAINT and the element ‘LATEX 118’. The get-ups of the competing products are shown below:

In its defence, Nippon Paint claimed that ‘118’ is a numeral known for its auspicious meaning in the Chinese language and that it was commonly used in the industry. The word ‘latex’ is descriptive of the product in question, being a milky white product. It therefore filed counterclaims against Sika for invalidation of its SIKALATEX mark and unlawful interference with Nippon Paint’s trade. The matter came before Justice Azlan Sulaiman for trial in August 2023.

Decision
After carefully scrutinising the evidence adduced from both Sika and Nippon Paint along with the submissions made by the parties’ counsel, the learned judge dismissed Sika’s claims for trademark infringement, passing off, copyright of the product description and unlawful interference with trade. Further, the court dismissed Nippon Paint’s counterclaims for invalidation of Sika’s SIKALATEX mark and unlawful interference with Nippon Paint’s trade. On the other hand, the court allowed Sika’s claim for infringement of copyright subsisting in the product data sheet. In essence, the court found that ‘118’ is not part of Sika’s SIKALATEX registered trademark. The SIKALATEX mark was not similar with Nippon Paint’s LATEX 118 sign since ‘Sika’ was the distinguishing feature. As such, there was no likelihood of confusion and, therefore, Nippon Paint did not infringe Sika’s trademark rights subsisting in the SIKALATEX registered mark. The court further found that Sika had failed to prove the elements of passing off against Nippon Paint. In essence, the court disagreed with Sika’s contention that its yellow jerrycans, with a red cap and the numeral ‘118’, had acquired the necessary level of distinctiveness.
As for copyright infringement, the court took an interesting approach and divided Sika’s claims into two portions: the claim for copyright in Sika’s product data sheet and the claim for copyright in Sika’s product description, which is usually displayed on the SikaLatex 118 products. The court found that Sika had successfully proven the elements of copyright ownership in the product data sheet and copyright infringement of the product data sheet by Nippon Paint. However, the court found that Sika did not have copyright ownership of the product description, as it was not original in character. While the court found that Nippon Paint had infringed Sika’s copyright in the product data sheet, it did not consider that this, alone, constituted an unlawful interference with trade.

Comment
This is yet another illustrative case showing that the courts are slow in granting exclusive rights in the use of a particular colour or common numeral. Unless there is cogent evidence that the colour (and not the house mark) has attained the status of an indicia of origin, the court will not assist a claimant relying on the colour alone for a claim of passing off. The task is made even more onerous if the product is always sold by reference to a very famous house mark.

Teo Bong Kwang
Partner

Kathreena Korotana
Associate