Malaysia Trademarks – What constitutes ‘Actual Use?’

In the Malaysian case of Godrej Sara Lee Ltd v Siah Teong Teck & Anor (Part 2) [2007] 7 MLJ 164, the High Court dealt with the issue of non-use of a trademark and its removal from the Register.

The Applicant in this case who was a manufacturer of consumer goods sought to apply for the registration of the trademark “GOODNIGHT” in relation to mosquito repellant mats and coils, insecticides and insect repellants. However, the Registry objected to the application on the ground that there was an existing “GOODNIGHT” mark on the Register No 98/00228 that was filed by the Respondent.

The Applicant then filed a motion to have the Respondent’s mark removed on the grounds of non-use pursuant to section 46 of the Trade Marks Act. The Applicant claimed that up to one month before the date of this application a continuous period of not less than three years had elapsed during which Trade Mark No.98/00228 was not used in good faith by the Respondent.

Regarding the issue of non-use, because the motion was filed on 5 February 2007, the relevant three year period was held to be between 5 January 2004 and 5 January 2007. Based on the burden of proof, the Court held that the Applicant must show a prima facie case of non-use. Once that was done the burden fell upon the registered proprietor to show evidence of use during the material period of time.

The Respondent claimed there was use by a company – Sri Dapat Sdn. Bhd. – by virtue of their application for approval to the Pesticides Board. However the Court held that merely seeking approval and obtaining the same did not amount to use of the mark in the course of trade, as there had to be actual use of the mark in relation to the goods, which was not shown in the evidence. In any event there was no evidence that the said Sri Dapat was a registered user for use to be attributed to the Respondent.

As to the exception to non-use, the Court held that two conditions needed to be fulfilled which are (i) the special circumstances must be peculiar and abnormal and must be external in nature, and (ii) the non-use must be as a result of those circumstances. In this case, the Respondent’s claim that Sri Dapat was contract manufacturing for other parties such as Shell and Reckitt was firstly a commercial decision taken independently and not a commercial factor. Furthermore even if it was a special circumstance there was no evidence that the agreements were the reason for non-use as the Respondent was manufacturing other brands of the product.

Finally the Court held that the element of discretion was not available to the Court in this section as based on the facts it is shown that the trade mark had not been used in the relevant period of time, and so it ought to be removed from the register.