Malaysian Courts hold that first use of a trademark an important factor in expungement proceedings

The Malaysian High Court, in Yong Sze Fan & Anor v Sharifah bt Mohd Tamin & 4 Ors [2008] 5 AMR 163 had an opportunity to consider an application for an order that a trademark registered by the Malaysian Trademark Registry be expunged (cancelled) from the Register under the provisions of the Malaysian Trade Marks Act 1976.

The Applicants here claimed that they were the first users of the registered trademark TAMIN and thereby they claimed that the 1st Respondent’s trademark registration TAMIN was therefore wrongfully registered in the Malaysian Trademark Registry. In support of their application, the Applicants adduced evidence of the first use of their mark which they claimed was since 1990 as well as their extensive sales and promotion of products using the said mark in Malaysia.

Locus standi

Under section 45 of the Trade Marks Act 1976 the Applicants first had to prove that they have the necessary locus standi to be an aggrieved party. Essentially the Applicants would have to prove that they would be adversely affected by the continued presence of the trademark on the Register. Unfortunately for the Applicants, the learned Judge was of the opinion that insufficient evidence was led on this issue and that the pleadings dod not also sufficient show how the Applicants were aggrieved parties. This in itself was fatal to the application.

Merits of the case

However going into the merits of the case, the Court also considered the grounds that were set forth by the Applicants as to why the Respondents’ trademark should be expunged, which were: –

The word TAMIN is not the name of an individual, company or firm represented in a special or particular manner.

The mark offends section 19 of the Trade Marks Act 1976.

The mark offends section 25 of the Trade Marks Act 1976.

The specification of goods in the Register is a class heading.

The mark offends the provisions of section 14 of the Trade Marks Act 1976.

The Court considered all the grounds above and rejected them based on the evidence adduced by the parties.

Furthermore the Court found that the Respondents had adduced unrebutted evidence of their use of the TAMIN mark in Malaysia since 1951 and had also adduced evidence of their extensive use and sales of goods bearing the mark in Malaysia.

This gave rise to the learned Judge dismissing the Applicants application to expunge the Respondents’ trademark, as the evidence showed the Respondents’ had first use of the mark in Malaysia.

Burden of Proof

A point to note in this case is that the learned Judge in dismissing the Applicants’ application stressed the importance of the burden of proof in such an application. The learned Judge held that the burden of showing that “the entry is an entry wrongfully entered/remaining on the Register” falls on the Applicants. This is based on the basic and trite principle that ‘he who asserts should proof’. Based on the evidence adduced by the Applicants, the learned Judge concluded that the Applicants had not discharged this burden.

The learned Judge went a step further to say that even assuming the Applicants had succeeded in proving any of their grounds sought for, this does not necessarily imply that the court would grant the prayers that they are seeking for, i.e. the removal of the trademark from the Register. He stressed that the court always retains discretion as to whether the mark should be expunged and certain factors are to be considered in the exercise of this discretion.

The learned Judge took cognizance of the decision of Goff J in the PHANTOM Trade Mark [1978] RPC 245, where he said as follows:

“If I had reached a different conclusion and had come to view that the entries were initially wrong and ought not to have made, nevertheless it is clear that the court has a discretion on an application for rectification, an even where the initial entry was contrary to an express prohibition in the statute, the court once it has been made, may, having regard to all the circumstances, permit it to remain. In the present case I would have thought that reasons advanced by Colt for exercising that discretion in favour of allowing the entry to stand are such that if it were necessary we ought so to exercise our discretion. He relied first upon the good faith of Colt; their genuine interest in the mark; that the use of the mark continued to this day; that the parties have to rely on the practice of the Registrar, which Colt did; that there was no evidence that there was anybody deceived or likely so to be; that it was not in the public interest to rectify the register; and that Chrysler had now completely lost interest in the whole matter. For these reasons had had I exercise the conclusion that the entry was bad, for my part I would, in the exercise of discretion allow it to stand”

Discretion of the Court

An further point raised by the Court was that in every application the judge above all has the discretion to decide on the removal of a trademark based on the evidence adduced by both parties. It is therefore imperative for a party seeking to retain or remove a mark from the trademark registry to always have the necessary evidence, especially as to the party’s use of the mark. This is as a party’s use would have a considerable influence or be one of the major determining factors in deciding on an application for expungement under section 45 of the Trade Marks Act 1976.

As an illustration of the above principle, the learned Judge referred to the decision in Syarikat Zamani Hj Tamin Sdn Bhd & Anor v Yong Sze Fun & Anor (at page 298) where it was stated: –

“It is trite law that the first to use the mark in Malaysia would prevail. Otherwise it would result in an anomaly in the law in the sense that the first an original use is defeated by a subsequent user”

The discretion was therefore applied in favour of the Respondent due their first use of the trademark and also the Respondents’ continued use of the trademark to date. The Judge held that the Respondents use of the trademark would not cause confusion and deception in the market.

This therefore, is an important decision setting some principles that the Intellectual Property Court in Malaysia will follow as regards the law to be applied expungement of trademarks.