1 July 2021

Tort – Passing Off – Unregistered Trademark – Celebrity – Goodwill – Locus Standi - Whether the Appellant or his company owns goodwill which gives locus standi to commence suit

Mohammad Hafiz bin Hamidun v. Kamdar Sdn Berhad   
[2021] MLJU 816, Federal Court

- see the grounds of judgment here

Facts Mohammad Hafiz bin Hamidun (“Appellant”) is a popular Nasyid singer and song composer meanwhile Kamdar Sdn Berhad (“Respondent)” is a company primarily engaged in the business of selling fabrics. Besides being an artist, the Appellant is also involved in the business of selling fabrics through the company Haje Sdn Bhd (“HSB”) (formerly known as Mikraj Concept Sdn Bhd). In February 2017, the Appellant received messages from his fans/followers on social media asking him whether certain goods sold by the Respondent with the label “Hafiz Hamidun” were actually his. Following this, the Appellant initiated an action against the Respondent for the tort of passing off on the premise that “Hafiz Hamidun”, words which are his own name, is an unregistered trademark which he uses for his own fashion and apparel line. In response, the Respondent argued that the goodwill in the label “Hafiz Hamidun” belonged to HSB instead of the Appellant. Thus, the Appellant lacked the locus standi[1]to commence the suit. The High Court allowed the Appellant’s claim. However this was reversed in the Court of Appeal. Hence, this appeal.

Issue Whether the Appellant or HSB owns the goodwill in the label “Hafiz Hamidun” which gives locus standi to commence the suit under the common law of passing off.

Held In allowing the appeal, the Federal Court held that in a common law claim of passing off involving the business indicium of a celebrity (whether his/her actual name, stage name, moniker or image of the person in question, etc.), and provided that goodwill is factually established, either the celebrity in question or any of his licensees (or any such related entity) has the locus standi to commence an action for tort of passing off against the misappropriating third party. As such, the unregistered trademark “Hafiz Hamidun” is identified with the Appellant as he uses it and has accumulated goodwill in it.

ZUL RAFIQUE & partners
{1 July 2021}

[1] The right or capacity to bring an action

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