KASS International

KASS International was founded on 15 April 1999 by P. Kandiah, a legal expert in Malaysia who has been practicing in the area of Intellectual Property Law since 1987. Previously known as Kandiah & Associates, the firm changed its name in 2003.

Traditionally the practice of intellectual property law in Malaysia was part of the legal practice of a general law firm, where IP work consisted of filing trademark applications and patent applications from overseas patent and trademark right holders. However with the growing need for technical persons to handle patent drafting, advising on patent infringement, conducting prior art search and other technical aspects of patent filing and prosecution, P.Kandiah saw fit to establish a fully integrated, highly-focused intellectual property firm.

Services

• Rights concerned with intellectual creations
  • Patent Rights
  • Utility Innovation/Model Rights
  • Design Rights for Articles
  • Copyrights
  • Layout Designs of Integrated Circuits Rights
  • Trade Secrets/Confidential Information/Know-how
  • New Plant Varieties

• Rights concerned with business reputation/goodwill
  • Trademarks
  • Service Marks
  • Trade Names/Business Names
  • Domain Names
  • Common Law Rights

• Utilization of IP Rights
  • Licensing/Joint-Venture Arrangements
  • Valuation of IP Rights
  • Sourcing/Sales of Technology
  • Developing New Products/Processes in Association with Clients
  • Litigation Support and Management
  • Analysis of Third Party IP Rights and Freedom to Operate Opinions

• Skill Development for Human Resources in IP Issues
  • Public Talks
  • In-House Talks
  • Tailor-Made Training Programmes
  • Advice to Senior Management on the Strategic Use of IP Assets

Notable Cases Handled by KASS

Premier Products Co. Ltd. & Another vs Zamrud Fibre Industries (M) Sdn. Bhd. & Anor

P. Kandiah was the counsel for the defendants in the landmark patent case of Premier Products Co. Ltd. & Another vs Zamrud Fibre Industries (M) Sdn. Bhd. & Anor [1994] 4 CLJ. The issues which were tried are as follows:

• whether the first plaintiff is the legal owner of Malaysian Patent No. MY-102409-A;
• whether the second plaintiff is a licensee of the first plaintiff;
• whether the second plaintiff is entitled to bring a patent infringement action against the defendants;
• whether the invention in the patent is invented by the first plaintiff; and
• whether the defendants have infringed the patent.

It was held that:

• the first plaintiff is not the legal owner of Malaysian Patent No. MY-102409-A;
• the second plaintiff is not a licensee of the first plaintiff;
• the second plaintiff is not entitled to bring a patent infringement action against the defendants;
• the invention in the patent is not invented by the first plaintiff; and
• the defendants did not infringe the patent.

Emmer Zecna vs Ermenegildo Zegna

KASS International acted as IP Consultants and Advisor to Emmer Zecna in a trademark dispute against Ermenegildo Zegna.

The High Court of Malaya in Kuala Lumpur in Civil Suit No. D8-22-1863-2002 on 8 March 2008 held at the end of a full trial, that the trademark Emmer Zecna does not infringe the registered trademark Ermenegildo Zegna in respect of the use of the mark in Class 25 for menswear. It further held that there was also no passing off of the Plaintiff’s trademark and business by the Defendant.

Ermenegildo Zegna is a trademark originating from Italy and is known for its expensive and desginer clothing, in particular menswear. Emmer Zecna is a Malaysian trademark used on low priced menswear.

The High Court Judge, in his judgment, concurred with the Defendant’s contention that:

• the marks Emmer Zecna and Ermenegildo Zegna, compared as a whole, are distinguishable;
• consumers of expensive products will not make a purchase without inspection of the trademark or brand-tag on the goods;
• customers who purchase clothing cannot be likened to grocery shoppers who are rushing to choose goods of a shelf filled with various trademarks;
• the goods are not purchased over the phone so oral confusion is not so relevant;
• the huge price difference between the Plaintiff’s and Defendant’s products is important as it means that the goods are not in direct competition;
• literacy level is high in Malaysia and consumers are more demanding, discerning and observant than before and thus are able to distinguish the marks;
• it is common knowledge that local businesses choose foreign sounding brands for better sales and to penetrate the market quickly;
• confusion involving discount cards, alteration of trousers and picking up of clothes by a third party are “mere administrative confusion” and not “actual instances of confusion”. The confusion in this case was de minimis and coincidental;
• the imperfect recollection test is to be applied having regard to the sort of people who would buy the products and the circumstances in which they buy;
• the survey evidence adduced by the Plaintiff cannot be relied on due to the following grounds:
  • the questions posed to interviewees were mostly leading questions which were one-sided and biased, leaving not much room for the interviewees to think and produce their own answers
  • there was no true recording of the interview, thus the answers of the interviewees were not recorded in verbatim
  • the interviewees were not called to Court, thus the evidence was all hearsay evidence and prejudicial to the Defendant as the Defendant had no opportunity to cross-examine the witnesses first hand
• the Plaintiff has limited goodwill as it only has two outlets in Malaysia, both of which attracts tourists and “upper bracket income” consumers, thus a majority of Malaysians are not aware of the existence of the Plaintiff’s mark;
• there were no mistaken purchases by consumers and the alleged confusion does not amount to misrepresentation;
• the Court has to consider practicalities of the commercial market today where there are many trademarks which peacefully co-exist in Malaysia, such as MISTER and SISTER (for condoms) and POWER and SUPERPOWER (for shoes).

The Plaintiff’s action for infringement of trademark and the tort of passing off was dismissed with costs.

Recognition

• Acknowledged by Managing Intellectual Property(Managing IP) as one of the top IP firms in Malaysia from 2005–2009

• P. Kandiah has been identified by the Asialaw Leading Lawyers survey (2007–2009) as one of the most highly-acclaimed legal experts in the Intellectual Property field in the Asia-Pacific region

• KASS International has been noted as having "One of the jurisdiction's few genuine patent drafters" and being "progressive in terms of management" by the Managing IP handbook, 2009

• Listed as one of the top IP firms in Malaysia by Chambers & Partners, UK