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Italian fashion house loses Malaysian trade mark case

Peter Ollier, Hong Kong

Italian luxury fashion house Ermenegildo Zegna has lost the latest round of a six-year trade mark infringement and passing off battle against Malaysian rival Emmer Zecna

The High Court in Kuala Lumpur reached a verdict on March 8 but has only recently released its judgment. Ermenegildo Zegna appealed on April 2.

Ermenegildo Zegna has been selling menswear in Malaysia since 1989 through different franchises. In 1997 and 1999 TCL Marketing began selling clothing under the Emmer Zecna brand and applied to register Emmer Zecna and device as a trade mark in two classes. These marks are still being opposed.

TCL Marketing claims that the name Emmer Zecna is based on a modification of the local Malay names Emma and Zainal.

Judge Datuk Ramly Haji Ali found that the Emmer Zecna and Ermenegildo Zegna marks are not confusingly similar in appearance or sound. He also noted that Emmer Zecna is targeting middle class consumers and not the high-end customers of Ermenegildo Zegna, which reduces the possibility of confusion. Ermenegildo Zegna had argued that consumers are being misled into thinking that Emmer Zecna is a Malaysian subsidiary of Ermenegildo Zegna.

The judge stated that consumers in Malaysia are highly literate and can discern between similar marks already in the Malaysian market, such as Panasonic and Pensonic for electrical goods and adax and Dax for clothing.

The judge also stated that Malaysian businesses have to choose foreign sounding brand names, because “a local sounding trade mark will not be accepted in western markets”.

“The judge took into account the globalization of Malay business and how a lot of local businesses choose foreign sounding brands to penetrate overseas,” said Geetha Kandiah, a lawyer with KASS International in Kuala Lumpur. KASS International is representing TCL Marketing, the defendant in the case.

In July 2007 Malaysia established a system of IP specialist courts and this case was transferred to the IP High Court in Malaysia last year. Geetha told Managing IP that the new system of IP courts should ensure that similar cases will now be dealt with more quickly.

Although the decision is on appeal, Geetha said that the two parties are negotiating an out-of-court settlement.

Sreenevasan Advocates & Solicitors is acting for Ermenegildo Zegna in the case. Both the law firm and Ermenegildo Zegna declined to comment on the ruling.