The High Court of Kuala Lumpur has, in a recent decision of its own, considered whether it has the powers to rectify the Trade Mark Register in an action to expunge a trade mark by unlawful proprietors.
In the case of Regent Pumps Pty Ltd Nor v Keylargo Industrial Sdn Bhd (2009) 2 CLJ 303, the applicants were an Australian company that manufactured and exported industrial pumps. The first applicant was the registered proprietor of the trade mark, Opal Pumps since 1999 for pumps and machines being pumps, all included in Class 7, whilst the second applicant was the manufacturer of pumps bearing the trade marks Opal Pumps and Opal.
Keylargo Industrial is a Malaysian company distributing the second applicant’s products bearing the trade mark Opal in Malaysia since 1995. In 1999, Keylargo Industrial registered the trade mark, Opal in its own name in Malaysia in Class 7 and thereafter, ceased to be the distributors for the second applicant.
The following issues were considered by the Honourable Court before deciding whether it had the power to expunge a trade mark from the register:
- Whether the proprietors were the lawful proprietors of the mark and were aggrieved;
- Whether the respondent’s registration was fraudulent;
- Whether consent was given by the registered proprietor to the respondent before registration of the mark by the respondent;
- Whether the applicant had abandoned its goodwill in Malaysia;
- Whether the mark offended section 14(a) Trade Marks Act 1976; and
- Whether the court can exercise its discretionary powers under section 45(1)(a) of Trade Mark Act 2976.
The High Court in allowing the applicant’s expungement claim held that since the second applicant was the first user of the mark in Malaysia, the first user is the lawful proprietor. The second applicant became an aggrieved person when the respondent attempted to register the mark as it own. Keylargo Industrial’s act of registering a mark owned by the second applicant amounted to fraud. Further to this, there was no consent given by the applicants to Keylargo Industrial to register the mark, as the respondent failed to show proof.
Therefore based on the above reasoning, the Honourable Court allowed the applicants to rectify the register to expunge the respondent’s mark from the Trade Mark Register pursuant to Section 45(1)(a) of the Trade Marks Act 1976.