Confused About Japanese and Chinese Wine

In Sinma Medical Products Sdn Bhd v Yomeishu Seizo Co Ltd & Ors [2004] 4 MLJ 358, the Court of Appeal of Malaysia affirmed the decision of the High Court that Sinma was guilty of passing off and infringement of the Yomeishu’s registered trade mark of 3 kanji characters in respect of a herbal medicinal wine.

Kanji characters are Japanese writing based on Chinese characters. The Japanese phonetic sound of the 3 kanji characters is “Yo Mei Shu” and the wine was promoted among the Chinese community using the phonetic pronunciation of the characters in the major Chinese dialects used in Malaysia, including its Mandarin pronunciation: “Yang Ming Jiu”. Sinma imported medicinal wine from China and its get-up had a combination of the same 3 kanji characters with the prefix of 2 kanji characters that made up the word “Chinese.” Hence, Sinma’s wine could be referred to as “Chinese Yang Ming Jiu” (in Mandarin) or “Chinese Yomeishu” (in Japanese).

An interesting aspect of the case, which was brought to the fore at first instance in the High Court, was the difficulty Yomeishu had in proving that there was ‘passing off’ of Sinma’s wine as Yomeishu’s. Passing off can be simply described as somebody representing their goods (or services) as the goods (or services) of somebody else.

…Yomeishu sought to demonstrate the phonetic confusion between the two wines…

The 3 essential elements to proving passing off is: ‘reputation‘ – the goods must enjoy a reputation among the public, ‘misrepresentation‘ – the public must be confused between your goods and the other person’s goods, and finally ‘damage‘ – this confusion has resulted in you experiencing damage.

The hurdle that Yomeishu had to overcome was that the get-up of the respective products was markedly different, and therefore, there was difficulty in proving visual confusion.

The ingenius manner of overcoming this obstacle was that Yomeishu therefore sought to demonstrate the phonetic confusion between Yomeishu’s wine and Sinma’s wine.

The Yomeishu wine was sold to the Chinese community mainly through medicinal shops. The Chinese buyers would go up to the shopkeeper and ask for a small glass of Yomeishu, or request for a bottle of Yomeishu, in their various dialects.

So making use of this fact, Yomeishu carried out a radio campaign over the Chinese radio networks and it was done in the 3 main Chinese dialects: Mandarin, Cantonese and Hokkien. Yomeishu’s wine was referred to the listeners using the phonetic sound for the product in each of the said 3 dialects.

The listeners were told that the first 100 listeners who brought in an empty bottle or box of the medicinal wine, “Yang Ming Jiu”, “Yong Meng Chow” or “Yeoh Miah Chiew” i.e using the phonetic pronunciation of the kanji characters in Mandarin, Cantonese and Hokkien respectively, could exchange it for a free bottle of the product.

The results: 121 listeners, all Chinese, responded to the promotion. 110 with empty boxes or bottles of Yomeishu’s wine and 10 with Sinma’s wine. One person brought in an empty bottle of Yomeishu’s wine and one of Sinma’s wine.

In one swoop, this radio campaign established two facts. First, that a substantial and significant majority of Malaysian Chinese consumers related to the product of Yomeishu with the sound of the combination of the 3 characters in the Chinese dialect. This clinched the first element of ‘reputation’. Second, it also clearly showed confusion among a significant percentage of the consumers, therefore proving ‘misrepresentation’. The High Court judge held that there was passing off, and this was affirmed by the Court of Appeal.

This Yomeishu case confirms that a trade mark can enjoy protection even when pronounced in different languages or dialects. A mark consisting of merely kanji, Chinese or even jawi characters can enjoy trade mark protection if the public has come to associate that phonetic pronounciation with the product or service that the mark is registered in respect of.

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