“Person Aggrieved”: A stricter test in Malaysia

The Court of Appeal in Malaysia has had occasion to recently consider the issue of what constitutes a person aggrieved in the context of the expungement of a trade mark from the Register. This is of importance as section 45 of the Trade Marks Act (“the Act”) provides that an application to rectify the Register can only be done by “a person aggrieved”.

In the case of McLaren International v Lim Yat Meen [2007] 7 MLJ 581 the Plaintiff was a company incorporated in the United Kingdom and is associated with Formula 1 racing for the past 37 years. The plaintiff in 1999 applied for a trademark in relation to “articles of clothing, footwear and headgear”.

The defendant is the registered proprietor of the trademark “MCLAREN” in Malaysia under trademark 92/02266 and the defendant had applied for the registration of the mark on April, 11th 1992 and the Certificate of Registration was duly issued on October, 15th 1995. The defendant contended that in 1992 it decided to venture into the footwear industry and coined the word “MCLAREN” independently.

The defendant claimed he was not aware of the plaintiff or its purported ownership of the mark “McLaren when coining the brand “MCLAREN” for his range of shoes in 1992. Furthermore the word “McLaren” was virtually unheard of in Malaysia even in connection with F1 racing as there was no broadcast of F1 racing to the Malaysian public prior to 1993.

On locus standi the plaintiff contended that the mere filing of its trademark in 1999 qualified it as an aggrieved person. However the Court held the liberal approach where a person whose application for registration is obstructed will have the locus standi is to be eschewed for a stricter approach of “substantial grievance” before qualifying.

The Court held that an aggrieved person must show that he is in some way prejudiced by the wrongful entry and found that here the plaintiff was not prejudiced as when the defendant had registered the mark the plaintiff had no business in Malaysia which also resulted in any loss to the plaintiff being speculative.

The test therefore adopted by the Court of Appeal is therefore a strict test wherein the applicant for rectification must show that the impugned mark had affected his business as opposed to the mere fact that he had filed a competing trademark application.