3 August, 2019
The recent High Court case of Hup Seng Perusahaan Makanan (M) Sdn Bhd v Lam Soon Edible Oils Sdn Bhd[1] concerns an appeal by the plaintiff against the decision of the Trade Marks Registrar. The plaintiff (“Hup Seng”) is the registered proprietor of the trade mark “NATURELL” in class 30. The first Defendant (“Lam Soon”) is the applicant of the trade mark “
” in class 30 (“Lam Soon’s mark”).
Hup Seng opposed against the registration of Lam Soon’s mark before the Trade Marks Registrar but the Trade Marks Registrar dismissed Hup Seng’s opposition. Dissatisfied with the decision of the Trade Marks Registrar, Hup Seng appealed against the Registrar’s decision to the High Court.
One of the grounds of appeal raised by Hup Seng and discussed by the High Court which is worthwhile to be highlighted is whether the Trade Marks Registrar has jurisdiction to deal with issues relating to passing-off in an opposition proceeding.
The Trade Marks Registrar in its grounds of decision for the opposition proceeding stated that the Registrar has no jurisdiction to deal with issues relating to passing-off as her function is merely to decide on the registration of trade marks.
The Trade Marks Registrar went further and stated that a passing-off action under common law is for the court to decide. Prior to this case, it was held in the High Court case of BRG Brilliant Rubber Goods (M) Sdn Bhd v Santa Barbara Polo & Racquet Club Management Inc (Pendaftar Cap Dagangan Malaysia, Interested Party)[2] that whether there is a case for passing-off is for the court to decide and the plaintiff ought to commence an action of passing-off in the High Court.
Such a position has now been clarified in this case. The High Court held that the Trade Marks Registrar has jurisdiction to deal with common law of passing-off in opposition proceedings pursuant to section 14(1)(a) of the Trade Marks Act 1976.
For ease of understanding, section 14(1)(a) of the Trade Marks Act 1976 is one of the possible grounds relied upon by opponents in opposition proceedings to prevent registration of the opposed mark. In particular, the second limb of section 14(1)(a) of the Trade Marks Act 1976 provides that a mark shall not be registered if its use would be contrary to law [Emphasis ours].
While this is not discussed in length in the High Court judgement, the High Court seems to have taken the position that “law” in section 14(1)(a) of the Trade Marks Act 1976 would include the common law of passing-off. As such, the issue of whether the use of the opposed mark by the applicant would constitute passing-off would fall within the ambit of section 14(1)(a) of the Trade Marks Act 1976 and hence would be relevant for the consideration of the Registrar in opposition proceedings.
For further information, please contact:
Ameet Kaur Purba, Partner, Shearn Delamore & Co
ameet@shearndelamore.com
[1] [2019] MLJU 422.
[2] [2017] 7 MLJ 244.
