No Chequered Flag Without Use

Janice Sim examines the recent decision of the Federal Court in McLaren International Limited v Lim Yat Meen (Civil Appeal No.: 02(f)-2-2008 (W))

 

 

 

 

BRIEF FACTS

The appellant is the proprietor of the mark "McLaren" in England, a mark which has been long associated with the high octane world of Formula One racing.

 

The respondent is the registered proprietor of the trade mark “McLaren” in Malaysia since 11 April 1992 in respect of “articles of clothing, including boots, shoes and slippers” in Class 25.

 

On 11 August 1999, the appellant applied to register the same trade mark in Malaysia in respect of “articles of clothing, footwear and headgear” in Class 25. The Registrar of Trade Marks objected to the appellant's application on grounds that it contravened section 19(1) of the Trade Marks Act 1976 (“the Act”) in that the mark was identical with the respondent’s registered trade mark or so nearly resembled the respondent’s registered trade mark as was likely to deceive or cause confusion.

 

Subsequently, the appellant applied for an order to expunge the entry of the respondent’s trade mark from the Register of Trade Marks, citing principally sections 45 and 46 of the Act.

 

The appellant sought to expunge the mark from the Register pursuant to section 45 of the Act on grounds that the respondent's trade mark had been entered into the Register without sufficient cause or has remained in the same wrongfully. In order to make such an application, the appellant had to prove that it was a “person aggrieved”. To rely on section 45 of the Act, the appellant sought to prove that by virtue of section 14 of the Act, the respondent’s use of the mark is likely to deceive or cause confusion to the public and section 25(1) of the Act in that the respondent was not the lawful proprietor of the trade mark “McLaren”.

 

By section 46(1) of the Act, the appellant sought to have the respondent’s mark removed from the Register on the ground of non-use of the mark.

 

The appellant in an alternative prayer also sought to vary the entry in the Register by deleting “articles of clothing” from the description of the goods to which the respondent’s trade mark relate.

 

It was an undisputed fact that the respondent’s mark had been used only in respect of men's executive shoes since its registration. The respondent claimed that it has used the mark in respect of such goods vide two of its contract manufacturers. Both these entities were not registered as registered users of the relevant trade mark under section 48 of the Act.

 

 

HIGH COURT

The High Court refused the appellant’s application on ground that the appellant was not a person aggrieved. From its analysis of the judgment of the High Court, the Federal Court opined that the learned High Court judge had arrived at this conclusion based on the finding that the appellant had failed to make out a case on merits.

 

In terms of merits, principally in relation to the prayer under section 45 of the Act, the High Court found that section 37 applied and rendered the registration of the respondent’s trade mark conclusive upon the expiration of seven years from the date of registration.

 

With regards to the prayer under section 46(1) of the Act, the High Court ruled that it was not necessary for the respondent's contract manufacturers to be registered as registered users under section 48.

 

The High Court did not make any ruling in respect of the appellant’s alternative prayer to vary the description of the goods in respect of which the respondent’s mark was registered.

 

 

COURT OF APPEAL

The Court of Appeal dismissed the appellant's appeal on grounds substantially similar to those adopted by the High Court.

 

Like the High Court, the Court of Appeal, did not consider the appellant’s alternative prayer.

 

 

FEDERAL COURT

The appellant was granted leave to appeal to the Federal Court on the following questions:

 

(a) Is a party whose application for registration of a trade mark obstructed by section 19 of the Act by the prior registration of an identical or similar mark on the Register of Trade Marks an “aggrieved person” with the appropriate locus standi within the meaning of that term in sections 45 and 46 of the Act ("Question (a)"); and

(b) Whether in the face of uncontroverted evidence of non-use of a registered mark in relation to some only of the registered goods, such only of the goods may be rectified by their removal or expunged pursuant the entitlements in law under sections 45 and 46 of the Act ("Question (b)").

 

Subsequently, the appellant abandoned its appeal under section 45 and the questions to be answered by the Federal Court turned only on section 46 of the Act.

 

 

Question (a)

The appellant in posing Question (a) sought to obtain an affirmative answer that it is a person aggrieved by virtue of the objection under section 19 to the application for registration of its trade mark.

 

The Federal Court rejected the appellant's contention, thereby rejecting the test adopted by the High Court in Fazaruddin bin Ibrahim v Parkson Corp Sdn Bhd [1997] 2 CLJ 863. The Federal Court held that a person whose application is jeopardized by section 19 cannot, without more, qualify as a person aggrieved as he could be “a mere busybody”.

 

The Federal Court cited with approval the decision in Re Arnold D. Palmer [1987] 2 MLJ 681 where the Singapore High Court held that in order to qualify as a person aggrieved in rectification proceedings, a person must have used his mark as a trade mark or have a genuine and present intention to use his mark as a trade mark in the course of a trade which is similar to the trade of the owner of the registered trade mark which he seeks to expunge from the Register.

 

The Federal Court held that the question as to whether the appellant passed the test of a person aggrieved as laid down in Re Arnold D. Palmer was a question of fact which fell outside the scope of the appeal as the only leave-question posed to the Federal Court in relation to a person aggrieved was Question (a) which the Federal Court had answered in the negative.

 

 

Question (b)

The Federal Court went on to consider the Question (b) notwithstanding that the appellant's failure in respect of Question (a) was sufficient to kill-off the appeal.

 

The Court noted that this question had been posed in respect of the alternative prayer which, although pleaded by the appellant, had not been considered by the High Court and the Court of Appeal.

 

For the purposes of Question (b), the appellant was required to prove that the respondent had not used the mark in good faith for a continuous period of three years up to one month before the section 46(1) application was made.

 

As the respondent had admitted that its registered trade mark was only used in respect of men's executive shoes, the Federal Court stated that it would have allowed the appeal on Question (b) to the extent of the alternative prayer if the appellant had succeeded on the locus standi issue.

 

 

CONCLUSION

The Federal Court has adopted a restrictive approach to the question of a “person aggrieved”. As the law now stands, the fact that an applicant is obstructed by section 19 of the Act from registering his trade mark does not by itself qualify him as a “person aggrieved”. The applicant is required under section 46 to prove that he has used his mark as a trade mark or has a genuine and present intention to use his mark as a trade mark in the course of a trade which is similar to the trade of the owner of the registered trade mark.

 

 

JANICE SIM ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 

 
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