Welcome to our latest Intellectual Property Case Law Update. In this edition, we break down several high-impact rulings from late 2025 and early 2026 that are shaping the legal landscape for businesses in Malaysia and beyond. From the importance of rapid enforcement to the complexities of digital trademark use, these summaries provide essential strategic insights to help you protect your brand and innovations.

Kingtime International Ltd v Petronas Carigali Sdn Bhd

Case Facts:

  • Kingtime owns patents for a ‘Mobile Offshore Production Unit’ (MOPU), which is used in the Sepat oil field
  • Petrofac, the contractor, designed, supplied, manufactured, and installed the MOPU in accordance with the patented structure, elements and methods
  • PCSB, the employer, accepted the completed unit from Petrofac, put the unit into service, operating it offshore, authorised active control over design and exploited the patented design
  • In the first suit, Kingtime won the earlier lawsuit against Petrofac for patent infringement. Later, they sued PCSB for using the same infringing unit

The Issue:

  • In the second suit, however, the High Court disagreed with the first ruling, declaring the patents invalid and finding no infringement by PCSB.
  • Kingtime appealed

The Decision:

  • The Court of Appeal overturned the High Court’s decision
  • They ruled that PCSB did infringe the patents by taking delivery and using the MOPU Sepat

The Principle:

  • Privity of Interest: Even though PCSB wasn’t a “party” in the first case, they were “privies” because they were deeply involved in the design, engineering, and inspection of the MOPU under their contract with Petrofac
  • Res Judicata: Because they were privies, the first judgment against Petrofac became binding on PCSB. They could not “re-litigate” the validity of the patents

The Takeaway:

  • Courts cannot strike down an entire patent just because one or two main “independent” claims are invalid. A judge must examine every single dependent claim separately to see if they contain unique, valid features.
  • Employers who exercise high levels of control over a contractor’s technical work can be held as “privies”, preventing them from trying to fight the same battle twice
  • Suing the manufacturer (Petrofac) and the customer (PCSB) are separate causes of action; winning against one does not prevent you from suing the other for their specific use of the technology

Zydus Wellness Ltd v Pendaftar Cap Dagangan [2025] 8 MLJ 678

The Facts:

  • Zydus Wellness applied to register the words “SUGAR FREE” as a trademark for health supplements and food products (Class 5 and Class 29)

The Issue:

  • The Registrar of Trademarks refused the applications, arguing the mark was not eligible for registration under Section 10 of the Trade Marks Act 1976.
  • Zydus challenged this refusal in the High Court, arguing that “SUGAR FREE” was a “skilful allusion” to their goods rather than a direct description

The Decision:

  • The High Court dismissed the appeal and upheld the Registrar’s refusal
  • The court ruled that “SUGAR FREE” is not an invented word but a simple combination of two common English words meaning “without sugar”
  • The mark failed to meet the legal criteria because it was descriptive and lacked distinctiveness.

The Principle:

  • A mark cannot be registered if it directly describes the character or quality of the goods.

The Takeaway:

  • Descriptive terms used in everyday language should remain free for all traders to use

Kiyomura Co Ltd v Daisho Japan Co Ltd

The Facts:

  • The plaintiff, Kiyomura Co., Ltd., operates the famous “Sushizanmai” chain in Japan.
  • The defendant, Daisho Japan, is a Japanese export company that supports its group affiliate, Super Sushi Sdn Bhd, which operates “Sushi Zanmai” restaurants in Malaysia and Singapore.
  • Kiyomura sued Daisho Japan, alleging that displaying the “Sushi Zanmai” marks on Daisho’s Japanese-language corporate website infringed Kiyomura’s Japanese trademark rights
  • The website was written in Japanese and introduced the Daisho Group’s business, including a brief mention and link to the Malaysian “Sushi Zanmai” English website

The Decision:

  • The Tokyo District Court initially found infringement, reasoning that because the site was in Japanese, it targeted Japanese consumers and harmed the trademark’s source-identifying function in Japan
  • The Intellectual Property High Court (IPHC) overturned the decision, dismissing all infringement claims.
  • The court found that the website was an advertisement for ingredient export services aimed at Japanese traders, not an advertisement for restaurant services aimed at Japanese diners

The Principle:

  • Use is determined by whether the website is intended to target consumers in that specific jurisdiction
  • Courts will look for a ‘targeting’ signal, such as:
    • Language & Currency
    • User Intention
    • Inquiry Content

The Takeaway:

  • Trademark rights remain independent and territorial. A company operating offshore can use its mark on a website without infringing foreign rights if they do not actively target those foreign consumers

Pirelli & C SpA v Chip Hwa Sdn Bhd [2026] 1 MLJ 45

The Facts:

  • Pirelli (the Italian tyre giant) and Chip Hwa (an Alor Setar-based clothing manufacturer).
  • Pirelli sued to invalidate and revoke a trademark featuring the word “PIRELLI” (with an elongated “P” and a horse/knight logo) that Chip Hwa had registered in 1986 for children’s clothing.
  • Evidence showed that Pirelli was aware of Chip Hwa’s mark as early as 1993, yet it took no legal action for 27 years until filing a lawsuit in 2020.
  • The case was initially fought over jurisdiction, with the court ruling that it should remain in the specialised IP Court in Kuala Lumpur because infringing goods were found in a KL hypermarket.

The Decision:

  • The Court of Appeal unanimously dismissed Pirelli’s appeal, upholding the earlier High Court decision to protect Chip Hwa’s registration.
  • The court found that Pirelli’s claims for trademark infringement and passing off were meritless due to the extreme delay in bringing the action.

The Precedent:

  • This is the principle of “sleeping on one’s rights.” In Malaysian IP law, if a trademark owner is aware of a potential infringement but fails to object or take action for an inordinate period, they are legally barred (estopped) from later challenging that use.

The Takeaway:

  • Brand owners must monitor the MyIPO Official Journal and the market to act immediately upon discovery of a conflicting mark.

Contact Us

Navigating the complexities of Intellectual Property law requires a proactive strategy and expert guidance. Whether you need to audit your current IP portfolio or require assistance with enforcement and registration, our team at Quality Oracle is here to help you stay ahead.

For more information or to schedule a consultation, please visit our website at www.qualityoracle.com.