12 May 2021
The Trademarks Act 2019 (“TMA”) came into force on 27 December 2019 and to date many provisions of the Act remain untested in court. One of the important provisions is section 47 of the TMA which provides for the invalidation of a registered trademark. Notably, section 47 of the TMA retains the requirement of “aggrieved person” of its precursor ( section 45 of the repealed Trade Marks Act 1976).
The High Court recently shed some light on the requirement of “aggrieved persons” in its decision in Qi Sheng Sdn Bhd v Foong Yit Meng. In this case, the plaintiffs applied to invalidate the first defendant’s trademark registrations under Registration Nos. 05000826 and 2016007852 under section 47 of the TMA.
The High Court held that the question of whether the plaintiffs are “aggrieved persons” under section 47 of the TMA must be answered in the affirmative before the Court can consider the substantive grounds for invalidation. If the answer to the question is in the negative, the Court will dismiss the application for invalidation in limine without evaluating the merits.
His Lordship went on to refer to the case of Re Arnold D Palmer [1987] 2 MLJ 681, and the decisions of the Federal Court in McLaren International Ltd v Lim Yat Meen [2009] 4 CLJ 749 and Mesuma Sports Sdn Bhd v Majlis Sukan Negara (Pendaftar Cap Dagangan Malaysia, interested party) [2015] 6 MLJ 46. Based on these authorities, the High Court noted that one must have a genuine and present intention to use his mark as a trademark in the course of a trade which is the same as or similar to the registered trademark in question, in order to be an “aggrieved person”. Further, the High Court held that the person seeking to invalidate a registered trademark must not fall within the category of busy-bodies.
Applying the legal principles to the facts therein, the Court found that the plaintiffs were not aggrieved persons under section 47 of the TMA. Hence, there was no necessity for the Court to consider the substantive grounds raised by the plaintiffs.
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