MALAYSIA COUNTRY REPORT FOR APAA 2015 TRADE MARK COMMITTEE DEVELOPMENTS:- Legislative

(I) (i) MALAYSIA COUNTRY REPORT FOR APAA 2015 TRADE MARK COMMITTEE DEVELOPMENTS:- Legislative There was no recent development or change in the Malaysian Trade Marks Act (ii) Other The ASEAN TMview website is a trade mark search tool developed by ASEAN with the support of the Office for Harmonization in the Internal Market (OHIM). It offers free of charge online access to information on trademark registration and trademark applications in the participating ASEAN countries. Following the successful implementation of ASEAN TMview, the ASEAN TMclass website was launched as an online, multi-lingual, consultation tool offering free-of-charge access to a database of terms accepted by the participating ASEAN IP Offices as suitable to identify goods and services for the purposes of the registration of marks. The ASEAN TMclass is also acollaboration between ASEAN and OHIM. One of the interesting features of the ASEAN TMclass is that its database includes localised terms that are not in the English language but are known in the ASEAN region such as tom yam and nasi lemak. (II) STATISTICS FOR 2015 MONTH APPLICATION REGISTRATION Malaysia Foreign Total Malaysia Foreign Total Jan 1,289 1,328 2,617 1,218 1,849 3,067 Feb 1,124 1,592 2,716 632 1,021 1,653 Mac 1,575 1,708 3,283 974 1,591 2,565 Apr 1,332 1,663 2,995 887 1,560 2,447 May 1,057 1,371 2,428 967 1,601 2,568 Jun 1,284 2,263 3,547 840 1,592 2,432 Jul 1,289 1,832 3,121 573 1,214 1,787 Aug 1,388 1,553 2,941 926 1,489 2,415 TOTAL 10,338 13,310 23,648 7,017 11,917 18,934 (III) DEVELOPMENT IN CASE LAW (i) Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor (Registrar of Trade Marks, intervener) [2015] 4 MLJ 166 (Federal Court) Rotta Research Lobaratorium SpA and Antah Pharma Sdn Bhd ( plaintiffs ) were, respectively the manufacturers and distributors of a drug called Viartril-S used in the treatment of osteoarthritis. The Viatril-S trade mark was registered in Malaysia in 1976. The defendants were involved in the making, distributing and selling of a product called Artril-250 which contained the same drug in Viatril-S

but which was packaged for sale in a get-up deceptively similar to the plaintiffs mark.. The plaintiffs sued all the Defendants for the infringement of their intellectual property rights on Viatril-S. The High Court found that there was confusing similarity between Viatril S mark and the Atril-250 mark after comparing them phonetically and visually. Based on such finding of facts, the High Court held that there was passing off by the defendants of the plaintiffs product and allowed the expungement of the defendant s mark. The Court of Appeal affirmed the decision of the High Court but held that the High Court should not have ordered the expungement of the defendants mark because (a) the Trade Marks Act 1976 ( TMA ) does not prohibit the registration of two or more marks which were identical or so nearly resembling each other and (b)the Registrar of Trade Marks ( Registrar ) had discretion under s 19(3)of the TMA to refuse registration but because he allowed the defendants mark to be registered, the registration was prima facie evidence of the validity of the defendants mark under s 40(1)(f) of the TMA and (c) the High Court ought to have received the evidence of the Registrar before exercising the discretion to order the expungement of the defendants mark based on s 62 of TMA. Both plaintiffs and defendants appealed against the decisions of the Court of Appeal and both appeals were heard jointly before the Federal Court. The two questions of law that were posed to the Federal Court in respect of the two appeals are as follows: a) Whether the evidence of the Registrar who had approved the registration of the defendant s mark after the commencement of the plaintiffs infringement suit is material to proving trade mark infringement, in that the Registrar is the key witness to establishing likelihood of confusion. b) Whether it is pre-requisite to name the Registrar or the Intellectual Property Corporation of Malaysia (MYIPO) as a party in a writ or statement of claim in an application to expunge or rectify the Register of Trade Marks; and if the answer is in the affirmative, whether the several decisions by the High Court ordering the expungement/rectification of the Register of Trade Marks without insisting on the Registrar or MYIPO to be named a party in the suits are now bad in law. The first question is posed by the defendants in the first appeal and the second question is posed by the plaintiffs in the second appeal. The Federal Court answered in the negative for both questions. With regards to the first question, the Federal Court pointed out that the Court of Appeal s decision that the Registrar should be made a party or heard in evidence before a rectification was not in accordance with the statutory provisions under the TMA or its regulations. In addition, such an approach would place the Registrar in an invidious position of participating in the proceedings in favour of one side or the other, and would destroy the neutrality of the Trade Marks Office. With regards to the second question, the Federal Court held the view that there is no necessity to bring in the Registrar as a party to the suit where there is no cause of action against the Registrar. There are no statutory provisions which require the Registrar to be made a party to a rectification and expungement proceedings under the TMA and s45 TMA is silent on this. The Federal Court

further held that neither the court nor the Registrar had discretion to allow a mark wrongfully registered to continue to remain on the Register. Once the grounds for revocation or removal of a mark had been made out, the mark had to be expunged from the Register. Accordingly, the plaintiffs appeal is allowed with costs while the defendants appeal is dismissed with costs. In addition, the order of the Court of Appeal that the defendants product was registrable as a trade mark under s 10 of the TMA was set aside by the Federal Court. (ii) Oishi Group Public Co Ltd v Liwayway Marketing Corp [2015] 9 MLJ 538 The plaintiff, a Thai-based company in the business of manufacturing various types of non-alcoholic drinks under the brand OISHI, was unsuccessful in registering OISHI as its trade mark under Class 32 in Malaysia. The application was rejected because the defendant, a Philippines-based company, was already the registered proprietor of the mark Oishi in Class 30 and Class 43 on the Register of Trade Marks ( the register ). The plaintiff s instant application, pursuant to ss 45(1)(a) and 46(1) of the Trade Marks Act 1976 ( TMA ), was to expunge the defendant s marks on the ground it had not used them in good faith for a continuous period of not less than three years up to one month before the instant application was filed. The plaintiff also tendered evidence of a market survey it caused to be carried out on 260 retail outlets in the Klang Valley, Johor and Penang showing that none of those outlets had any products with the brand Oishi. The High Court found that the plaintiff had shown a genuine interest to use the mark OISHI and was therefore a person aggrieved under ss 45 and 46 of the TMA. The Court also found that the plaintiff had established a prima facie case of non-use on the defendant s part based on the plaintiff s survey report which had complied with the minimum requirements set out in Imperial Group Plc v Philip Morris Ltd & Anor [1984] RPC 293. On the other hand, the defendant had failed in rebuttal to prove that there had been use of its Oishi mark in Malaysia in the relevant period of time. The mere showing of the mark noted on cash invoices of a third party, and not of the registered proprietor or registered user, was not use of the mark within the meaning of the TMA. The use must be physical use of the mark or in relation to the goods by the registered proprietor or registered user. The Defendant s had failed to fulfil the criteria of registration in the TMA as the name Oishi was not distinctive and is likely to deceive or cause confusion. It is also the surname used by several prominent Japanese personalities and it has a dictionary meaning of good taste and thus made direct reference to the character or quality of the Defendant s goods and services. As such, the defendant could not rely on the conclusiveness of the register under s37 of the TMA. In respect to the defence of special circumstances of non-use under s46(4) of the TMA, the Court held that the reason the defendant gave for its non-use namely, that it had applied for halal certification was not due to an abnormal external event but was a commercial choice as it purportedly wanted to expand into the halal market. The plaintiff s application to expunge the defendant s trade mark was allowed with cost.

(iii) St John Ambulans Malaysia v PJ Uniform Sdn Bhd [2015] 1 AMCR 614 The plaintiff is a non-profit charitable statutory body which provides humanitarian and charitable services and is the registered owner of the St John Ambulans Malaysia emblem ( the SJAM emblem ) which it uses for identification and promotion of its public profile. The defendant is a private limited company which is involved in the manufacture, sale, supply and retail of uniform clothing using the brand name, Professor. The defendant had sold T-shirts bearing an emblem which closely resembled the plaintiff s SJAM emblem and subsequent to a complaint being lodged, the defendant s retail premises were raided by the Ministry and 159 T-Shirts bearing the said emblem were seized. The Plaintiff filed a suit against the defendant for trade mark infringement and passing off of the SJAM emblem. The defendant challenged the plaintiff s locus standi to commence the suit by reason that the plaintiff acted illegally and ultra vires in breach of the objects of the SJAM Act. The defendant argued that in order for the plaintiff to maintain the infringement action, the Plaintiff has to show that it is trading and secondly, the plaintiff is not entitled to enforce the registered trade mark because the plaintiff has been statutorily incorporated as a charitable and humanitarian organisation. The defendant further added that the plaintiff is not a profit-making entity and hence it cannot be considered as an entity connected in the course of trade. The Court rejected the defendant s challenge on the locus standi point as it was not a pleaded issue. Furthermore, the defendant s definition of in the course of trade as requiring the registered proprietor to be undertaking a commercial business was regarded by the Court to be narrowly construed. The Court held that the meaning of in the course of trade should be liberally interpreted to encompass the provision of any form of services rendered including that by noncommercial business or undertakings. Otherwise, it is inexplicable as to why and how other emblems, logos or marks of charitable and/or non-profit making organisations such as the World Wildlife Fund and even the Bar Council Malaysia have been registered as registered trade marks. With regards to the plaintiff s passing off claim, the defendant had also insisted that the Plaintiff is incapable to be having goodwill by reason that the plaintiff is not at all material times engaged in commercial business. Similarly, the Court held that goodwill in the course of business has to be liberally construed to include non-commercial business or undertaking. The case of British Diabetic Association v Diabetic Society Ltd and Ors [1995] 4 All ER 812 was quoted by the Court to show that the notion of trade in passing off action is given a wide context and that included activities of charitable organisations. In the premises, the Court allowed the plaintiff s claims of trade mark infringement and passing off against the defendant. (iv) Ta Tong Trading Sdn Bhd v Syarikat Perusahaan Jooi Bersaudara Sdn Bhd & Anor [2015] 2 AMCR 447 The first respondent is the registered proprietor of the trade marks "asadi" since 1983 and "ASADI" since 1987, both in Class 25 ("the ASADI trade marks"). The appellant subsequently filed a trade mark application for "osaki" for goods in Class 25 ( OSAKI mark). The first respondent consequently filed an opposition against the appellant's OSAKI mark. The registrar accordingly allowed the first

respondent's opposition and refused the appellant's trade mark application. Hence, the instant appeal by the appellant pursuant to s 28(5) and (6) of the Trade Marks Act 1976 ("TMA"), seeking to reverse the decision of the registrar. The appellant raised several preliminary objections against the respondent on the admissibility of the evidence that were relied upon by the respondent. The first respondent s sales and marketing manager brought the disputed physical products and price tags ( further evidence ) to the hearing proceedings and submitted them before the registrar. The appellant sought to invalidate the further evidence on the grounds that they were not done in compliance with the TMA and its Regulations. The appellant also argued that the further evidence constituted new and fresh evidence which were not raised earlier during the opposition proceedings and/or are not compliant with TMA and its Regulations. The High Court dismissed the appellant s objections and held that s64 of the TMA permits the registrar to have the discretion to take evidence viva voce in lieu of or in addition to evidence tendered by statutory declaration. The Court also held that pursuant to s64 of the TMA, both the registrar and the Court have wide discretionary powers to admit evidence. Having considered both marks visually and phonetically, the appellant s OSAKI mark and the first respondent s ASADI trade marks were found by the Court to have striking resemblance with the same font size and both in lower case. The placement of the vowels and consonants in the OSAKI mark is identical and contain the same amount of syllables as with the ASADI trade marks. This thus creates a confusing resemblance which will likely cause confusion and deceive the public at large. Taking into account the circumstances of use and the surrounding similarities, the OSAKI mark was clearly adopted to deceive and as such, the OSAKI mark was regarded by the Court to have failed to satisfy s14(1) of the TMA and was therefore not entitled to registration. (v) Tan Kim Hock Tong Seng Food Industry Sdn Bhd v Tan Kim Hock Product Centre Sdn Bhd & Anor [2015[ 2 AMCR 461 The applicant manufactures, processes, distributes and sells amongst others dodol products (a local delicacy made of coconut). The applicant duly obtained registration of a trade mark which consists of a logo "T" in red with a white coconut tree in it and in the middle of the coconut tree is a logo "S"; and of the words "CAP POKOK KELAPA" (meaning Coconut Brand ). The first intervener on the other hand was established to sell and market the dodol products which were manufactured by the applicant. The applicant subsequently discovered that there were dodol products bearing confusingly similar trade marks as that of the applicant's being sold at the first intervener ("the infringing products"). The applicant consequently filed an ex parte application for a trade description order ("TDO") under s9(1) and (2) of the Trade Descriptions Act 2011 that the infringing products be declared as bearing a false trade mark. The TDO was duly granted. The interveners appealed to set aside the TDO. It was argued by the interveners that there is abandonment of the registered trade mark by the applicant as there was no use of the words CAP POKOK KELAPA although the logo of the mark was used in the applicant s product. The Court pointed out that the applicant has been using the registered mark with slight and acceptable modification and as such, there can be no intention to abandon the registered trade mark. The Court observed that with or without the

words CAP POKOK KELAPA, the dominant feature of the mark is the coconut tree logo which is used on the applicant s dodol products. The non-use of the words CAP POKOK KELAPA does not affect the identity of the applicant s registered mark. The interveners also attempted to bring up the issue of joint-ownership of several unregistered marks but it was dismissed by the Court as it is not relevant to the issue of TDO which deals only with registered marks. The interveners further argued that there was a failure to make full and frank disclosure on the part of the applicants for the application of the TDO. In reply to the interveners argument, the Court stressed that the facts that are required to be disclosed by the applicant haveto be material to the TDO. Having considered the evidence, the Court concluded that the applicant has disclosed sufficient material facts for the application of the TDO. The interveners prayers to overturn the TDO were subsequently dismissed by the Court. Prepared By: Su Siew Ling (siewling.su@zicolaw.com) Stanley Lee Wai Jin (lee.stanley@zicolaw.com) APAA Malaysia Group