IP in Malaysia: matters of principle

Does expansion of a business amount to passing off? This was one of the questions posed in DeGem Bhd & Anor v De Gem Goldsmith & Jewellery Sdn Bhd & Ors [2013] 3 CLJ 209. The plaintiff is a manufacturer and nationwide retailer of jewellery bearing the trademark ‘DeGem’. The defendants are local businesses, based in Johor Bahru, Malaysia and with a different retail image than the plaintiff’s. The defendants have always used the name ‘De Gem’ in relation to the entire company name together with Chinese characters.