In the recent case Ferrari SpA v. Sunrise Mark Sdn Bhd [2025] MLRHU 1329, the Malaysian High Court upheld the Trademarks Registrar’s decision that the iconic “Rearing Horse” mark, owned by the world-renowned luxury car brand Ferrari, is not confusingly similar to a mark owned by the Malaysian company Sunrise-Mark Sdn Bhd (“Sunrise”), which features two rearing horses facing each other, along with the verbal elements “W” and “WEE POWER”. The Court arrived at its decision after considering the overall impression of the marks as well as the distinct industries in which they operate.
Key Takeaways from the Case
- Famous marks are not absolute barriers. A well-known mark does not automatically prevent the registration of another mark with similar semantic content, provided that the marks, as a whole, are not confusingly similar.
- Marks must be compared as a whole. When assessing the likelihood of confusion, the entire mark should be considered, including elements that have been subjected to disclaimers.
- Personal names may be distinctive. A name that is proven to be a person’s name is generally considered inherently distinctive and can function as a trademark, even if it has other meanings, as demonstrated by “WEE” in this case.
- Industry differences matter. Marks used in different industries are less likely to cause confusion, as the parties do not share the same trade channels or target customers.
Important Caution
While the above takeaways provide useful guidance, businesses should be aware that adopting a mark closely similar to a well-known or famous mark, always carries a risk of challenge, even if operating in a different industry. Such disputes can result in lengthy and costly proceedings, regardless of the outcome.
Additionally, it is important to note that not all personal names are registrable under the Trademarks Act 2019, even if they are legitimately the applicant’s own name.
Disclaimer
The information in this article is provided for general informational purposes only and should not be treated as a substitute for professional advice. This case was not handled by our firm, and the discussion is based solely on published case law. Each matter should be assessed on its own facts and circumstances. For guidance on trademark or intellectual property matters, please consult your lawyer, IP agent, or contact us for further assistance.