Can a celebrity’s name be used on clothing labels not sold by the celebrity?
Case:
MOHAMMAD HAFIZ HAMIDUN v. KAMDAR SDN BERHAD [2021] 1 LNS 590
Brief Facts:
- Hafiz Hamidun (“ Hafiz”) is a popular Nasyid singer and song composer. In addition to his role as an artist, he is also in the business of selling fabrics such as Baju Melayu and Kurtas online and in boutiques.
- To carry out his trade in fabrics, En. Hafiz incorporated Haje Sdn Bhd (“HSB”).
- Hafiz Hamidun is an unregistered trademark which En. Hafiz uses for his own fabrics line.
- Kamdar Sdn Bhd (“Kamdar”) is a company primarily engaged in the business of selling fabrics. At the material time, Kamdar had 29 stores throughout various locations in Malaysia.
- Sometime in February 2017, En. Hafiz received messages from his fans on his social media asking him whether certain goods with the label ‘Hafiz Hamidun’ were his.
- Upon discovering this, En. Hafiz instructed his solicitors to write to Kamdar to demand that they stop using the label ‘Hafiz Hamidun’ on their products but Kamdar did not respond.
- However, Kamdar stopped using the words ‘Hafiz Hamidun’ and instead replaced it with ‘Afiz Amidun’.
- Hafiz claimed that in sound, style and substance the new label is the same as the old label.
- Hafiz filed a suit against Kamdar in the High Court and the High Court found in favour of En. Hafiz.
- The High Court determined on evidence that the name ‘Hafiz Hamidun’ was so inextricably linked to En. Hafiz and instrumental to his business that he had personally established goodwill in that label.
- Even if goodwill was established in HSB, the corporate veil between the two (En. Hafiz and HSB) ought to be lifted in the interest of justice to reveal that En. Hafiz is HSB’s alter ego and that ownership still effectively lies with En. Hafiz.
- The Court of Appeal reversed the decision of the High Court on what is a technical point in law. The Court of Appeal found that En. Hafiz did not have locus standi to maintain his claim against Kamdar as the Court opined that the claim was for HSB to prosecute.
En. Hafiz appealed to the Federal Court.
FEDERAL COURT DECISION – APPEAL ALLOWED!
- The Federal Court set aside the judgement and order of the Court of Appeal and reinstated the order of the High Court.
- In common law claim of passing off involving the business indicium of a celebrity, and provided that goodwill is factually established, either the celebrity in question or any of his licensees has the locus standi to commence an action in passing off against the misappropriating third parties.
- The Federal Court affirmed that En. Hafiz is the owner of the goodwill in ‘Hafiz Hamidun.’
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