4 February, 2019
The recent High Court case of Ortus Expert White Sdn Bhd v Nor Yanni binti Adom[1] concerns the beauty products sold by the plaintiff (“Ortus Expert White”), bearing the trade mark “Royal Expert White” which was registered in the Register of Trade Marks for goods in Class 3 (“Ortus Expert White’s registered trade mark”). The first defendant, who had entered into a dealership agreement with Ortus Expert White, sold a skin whitening cream bearing the trade mark “Real Expert White”. Ortus Expert White initiated an action against the defendants (“Nor Yanni”) for breach of the dealership agreement, trade mark infringement and passing-off.
This article will focus on the following issue: Whether Nor Yanni can rely on section 14(1)(a) and section 14(1)(b) of the Trade Marks Act 1976 (“TMA”) when there is no counterclaim by Nor Yanni under section 45(1)(a) of the TMA to expunge /remove the registered trade mark from the Register of Trade Mark.
In the course of the proceedings, Nor Yanni submitted that according to the Health Ministry’s press release, the “Royal Expert Whitening Cream” imported by Ortus Expert Cosmetics Sdn Bhd contained mercury which is harmful to human health (“the Ministry’s Press Release”).
Based on the Ministry’s Press Release, Nor Yanni contended that Ortus Expert White’s registered trade mark should not have been registered by the Registrar of Trade Marks as the use of the same would be contrary to law, that is, Regulation 18A of the Control of Drugs and Cosmetics Regulations 1984 (as stated under section 14(1)(a) of the TMA) and is not entitled to protection by the court (as stated under section 14(1)(b) of the TMA).
The Learned High Court Judge rejected Nor Yanni’s argument based on the following reasoning:
Nor Yanni is precluded from relying on the Ministry’s Press Release. This is because the Ministry’s Press Release concerned Ortus Expert Cosmetics Sdn Bhd and not Ortus Expert White. Based on the trite principle of separate legal entity, Ortus Expert White is a legal entity which is different from Ortus Expert Cosmetics Sdn Bhd. Further, Nor Yanni failed to adduce evidence to prove that Ortus Expert White has been investigated, prosecuted and/or convicted of any offence under the Control of Drugs and Cosmetics Regulations 1984 regarding Ortus Expert White’s beauty products.
Section 14(1)(a) and (b) of the TMA provide for certain conditions for the registration of a trade mark. If a trade mark has been duly registered and is subsequently proven that the registered trade mark does not comply with these sections, an aggrieved party may seek to expunge the said mark from the Register under section 45(1)(a) of the TMA. As Nor Yanni did not counterclaim to expunge Ortus Expert White’s registered trade mark under section 45(1)(a) of the TMA, Nor Yanni cannot rely upon section 14(1)(a) and (b) of the TMA.
A registered trade mark is a form of intellectual property which confers rights on its owner under section 35(1) of the TMA. A registered trade mark and the statutory rights attached to the registered trade mark are different from the goods and services which bear the registered trade mark. Even if it is assumed that Ortus Expert White’s beauty products have contents which are contrary to the Control of Drugs and Cosmetics Regulations 1984 or any other law, the manufacture, distribution, supply, sale and use of Ortus Expert White’s beauty products may be prohibited but such a fact in itself does not mean that the use of Ortus Expert White’s registered trade mark is contrary to the law under section 14(1)(a) of the TMA. Nor does this mean that Ortus Expert White’s registered trade mark is not entitled to protection by the Court under section 14(1)(b) of the TMA.
Based on the High Court Judge’s reasoning, it is apparent that there is a distinction between the use of a registered trade mark and the contents of goods bearing the registered trade mark.
The contents of goods, whether it is contrary to any laws or not, have no bearing on the use and/or viability of a registered trade mark. Further, a defendant in a trade mark infringement action cannot rely upon section 14(1)(a) and (b) of the TMA unless a counterclaim to expunge a plaintiff’s registered trade mark is initiated
For further information, please contact:
Yap Khai Jiani, Shearn Delamore & Co
yapkhaijian@shearndelamore.com
[1] [2018] MLJU 1782
