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Skyworld v Skyworld – A Discourse On Trademark Infringement

In a business context, a company’s name and trademark are often crucial and interlinked to its identity and success. Whilst it is not uncommon for companies to share similarities in their names, it is highly unusual for two companies to share the exact same name. Nonetheless, such a dispute arose between two parties over the use of the name “Skyworld”. In the case of Skyworld Holdings Sdn Bhd & Ors v Skyworld Development Sdn Bhd & Anor [2022] 5 CLJ 74, the Federal Court had the occasion to address the issue of ascertaining whether a degree of similarity of one’s name to a registered trademark, amounted to an infringement.


The Plaintiffs (Respondents in the Federal Court) were in the business of property development and were the registered trademark owners of a mark that included the word ‘Skyworld’ (Mark). They claim that they have used the Mark since 2014.

The Defendants (Appellants in the Federal Court) were amongst others, in the business of tourism and had used the word ‘Skyworld’ on its company name and for corporate, trade, domain and project purposes (Disputed Use).

Premised on the Disputed Use, the Plaintiffs launched a trademark infringement action against the Defendants and its affiliated companies for the use of ‘Skyworld’ which was said to be identical and/or similar to the Mark.

High Court

The High Court ruled in favour of the Defendants and held that the claim for trademark infringement and passing off were unsustainable. In particular, the High Court found that:

(a) The use of the infringing names were not likely to deceive or confuse the public.

(b) On the issue of passing off, Plaintiffs failed to establish that the goodwill of the ‘Skyworld’ name and Mark were well-known.

(c) No likelihood of confusion arose from the use of the name and/or Mark.

Court Of Appeal

Dissatisfied with the High Court’s decision, the Plaintiffs appealed to the Court of Appeal. The Court of Appeal unanimously set aside the High Court’s decision for the following reasons:

(a) Failing to enquire whether the use of the infringing name came within the specification of services covered when the Mark was registered by the Plaintiffs.

(b) Attaching no weight to the evidence adduced by the Plaintiffs pertaining to confusion amongst the public.

(c) Erroneously held that Plaintiff’s goodwill must be ‘well-known’ to sustain passing-off action.

In essence, the Court of Appeal was of the opinion that the High Court had delved into the wrong line of questioning in determining the question of trademark infringement by comparing the parties’ respective businesses as opposed to the list of services the Mark was registered for.

Meanwhile, with regard to the tort of passing off, the Court of Appeal was satisfied that the Plaintiffs had sufficiently attained the requisite goodwill and reputation to make the claim. This was on the basis that the Plaintiffs and Defendants were engaged in a business that was of an ‘allied field’ and that could amount to misrepresentation (the Defendants business also included property development but for tourism purposes) even though the business activities engaged by the respective parties were not in common.

Federal Court

The Defendants subsequently obtained leave to appeal to the Federal Court, where one of the questions was:

“Whether the use of generic words which formed part of a company, corporate, trade or domain name, which such words were also comprised as part of registered trademark of another party (but which were not registered as a word mark or disclaimed), was deemed to be an infringement of such registered trade mark.”

Differences In the Mark – ‘Eyes’ and ‘Ears’

Essentially, with regard to the trademark infringement, the Federal Court stated that the true question was whether the Defendants use of the word ‘Skyworld’ had infringed the Plaintiffs’ Mark. Visually, there was a clear difference between the Plaintiffs’ Mark and the use of the word ‘Skyworld’ by the Defendants. The Plaintiffs’ Mark consisted of a combination of upper and lower cases with a stroke underneath the Mark together with a phrase. Whereas the Defendants’ use of the word ‘Skyworld’ was entirely in upper or lower case.

The only similarity between the two is the audible sound of the word ‘Skyworld’.

Other than that, the Plaintiffs and Defendants were in distinct businesses (Plaintiffs in property development, Defendants in tourism). This distinction coupled with the visual differences between the Plaintiffs’ Mark and the Defendants use of the word, was deemed unlikely to deceive and cause confusion amongst the public.

Similarly, as decided in Ortus Expert White Sdn Bhd v Nor Yanni bt Adom & Anor, the Federal Court held that it was necessary to view the trademark in its entirety. Evidently, this decision suggested a more stringent and narrower approach to be adopted in future expungement or infringement trademark cases.

In the present case – the discrepancy between the earlier Court of Appeal and the Federal Court findings, simply boils down to the perspective that the court prefers to take. Visibly, the Federal Court here rephrased the question to pertain to view the Mark as a whole. Notably, the Federal Court not only used its ‘ears’ (phonetic and oral sound), but its ‘eyes’ (visual) to properly discern if there had indeed been an infringement by the Defendants’ use of the disputed word in every surrounding aspect. The Federal Court also held that there could be an infringement if the Defendants had used the Mark in an unrelated business (so infringement was not limited to just related businesses/direct competition). Nonetheless, the visual differences between the Plaintiffs’ Mark and the Defendants’ use of the word, constituted such a difference that it would not render deception or confusion amongst the public. Considering the facts and issue in totality, the Federal Court ruled that there had not been a trademark infringement by the Defendants against the Plaintiffs’ Mark in any manner.

Regarding the issue on passing off – the Federal Court again disagreed with the Court of Appeal and dismissed this claim as it held that there was a lack of misrepresentation and evidence of harm suffered by the Plaintiffs. As such, the case for the tort of passing out could not be made out.


In summary, this case reiterates the trite principle that a trademark shall be viewed as a whole – not only the visual, phonetic and oral aspects of it but of all the surrounding circumstances, for instance the trade channels used. In this case, one of the determining factors was the distinct business the parties operated in. The only similarity between the Mark and the Defendants use of the word, was merely the phonetic element. This case serves as a reminder to business owners of the potential dangers of using a mark without first exercising due diligence to ascertain whether it is up for grabs. Every action is on a case-by-case basis and the decision can go either way in litigation.

Authored by Lee Hon Jinn, a pupil with the firm’s Intellectual property practice.

17 March 2023

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