California - In Malaysia, the Kuala Lumpur High Court recently upheld a trademark infringement claim over archived jewelry items on a community website. The plaintiff alleged that the defendant had infringed on its JACMOLI trademark by failing to delete from the archives of its website www.ytlcommunity.com, several articles featuring the plaintiff and the plaintiff's JacMoli boutique and trademark. The plaintiff is the registered owner for the JACMOLI trademark in relation to jewelry products in Class 14 in Malaysia.
The articles were written back when the plaintiff was a tenant at the defendant's Starhill Gallery Shopping Centre. Not surprisingly, the defendant is denying any infringement on the JACMOLI trademark or that it passed off its goods or business as that of the plaintiff in any way. In its defense, the defendant is contending that the articles at issue on the YTL website are merely archives and are only used as a record of past events or historical facts pertaining to its Starhill Gallery Shopping Centre, and that the articles were originally published to promote the plaintiff when the plaintiff was a tenant at the shopping centre.
In its decision, the court ruled in favor of the plaintiff on the basis that it had established its claim for trademark infringement and its claim that the defendant passed off its business to be related to the plaintiff or plaintiff's trademark, therefore awarding the plaintiff damages. The court also dismissed the defendant's counterclaim and is requesting it pay for court costs.