310 Cu rrent Law Jou rnal [2016] 9 CLJ

AL BAIK FAST FOOD DISTRIBUTION CO SAE v. A

EL BAIK FOOD SYSTEMS CO SA & ANOTHER APPEAL
COURT OF APPEAL, PUTRAJAYA
HAMID SULTAN ABU BACKER JCA
PRASAD SANDOSHAM ABRAHAM JCA
B
ASMABI MOHAMAD JCA
[CIVIL APPEALS NO: W-02(IPCV)(A)-401-03-2015 &
W-02(IPCV)(A)-1653-10-2015]
11 AUGUST 2016

INTELLECTUAL PROPERTY: Trade marks – Registered trade mark – C

Expungement and removal of – Application for – Rightful owner of trade mark –
Whether established – Non-use of trade mark by Saudi company – Saudi company
had never operated business in Malaysia in relation to trade marks while Egyptian
company operating business in Malaysia using said trade mark – Whether Egyptian
company acquired distinctive goodwill and reputation – McLaren’s test – Whether D
threshold requirement of aggrieved person satisfied – Saudi company failed to show
it had genuine and present intention to use marks in course of trade in Malaysia
– Whether Saudi company’s trade mark ought to be expunged or removed – Trade
Marks Act 1976, ss. 45 & 46
A company in Egypt (‘the Egyptian company) was operating a restaurant E
business under the ‘ALBAIK’ trade mark while a company based in Saudi
Arabia (‘the Saudi company’) has a restaurant business in Jeddah under the
same mark. Two appeals arose herein. Appeal 401 was an appeal by the
Egyptian Company in respect of the judgment of the trial judge allowing an
application made by the Saudi company pursuant to s. 45 of the Trade Marks F
Act 1976 (‘TMA 1976’) to expunge the registered trade marks on grounds
that: (i) the Egyptian company was not the rightful owner or had registered
it in bad faith, contrary to s. 25(1) of TMA 1976; and (ii) the Egyptian
company trade marks were confusingly similar to that of the Saudi Company
and this would cause confusion to the trade and public in Malaysia, contrary G
to s. 14(a) to (g) and/or s. 19(1)(a) and/or (b) of TMA 1976. It was the
contention of the Saudi company that its trade marks were well known in
Malaysia and around the world and that the Egyptian company was not
entitled to register the trade marks in Malaysia. However, the Egyptian
company alleged that the Saudi company had never operated any restaurant
H
business in Malaysia related to the trade marks in issue, notwithstanding that
it had registered its trade marks in Saudi Arabia in 1987 and subsequently
had registered the trade marks as ‘ELBAIK’ in 1997 in Malaysia. It was only
sometime in the year 2008 that the Saudi company had filed an application
to register in Malaysia as ‘ALBAIK.’ However, the Egyptian company had
registered its trade marks ALBAIK in Egypt and subsequently registered the I
trade marks in Malaysia in 2005 and was operating its restaurant business
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 311

A here. Since it was not in dispute that the Saudi company did not use its trade
marks in Malaysia to operate its business, the Egyptian company made the
application to remove the Saudi company’s trade marks pursuant to
s. 46(1)(a) and/or (b) of TMA 1976 on the grounds of non-use of ‘ALBAIK’
trade mark. The grounds relied upon was that (i) the Egyptian company was
B an aggrieved person; (ii) Saudi company had registered the marks in bad
faith; (iii) Saudi company did not use ‘ALBAIK’ trade marks which were
registered in Malaysia contrary to s. 46(1)(a) of TMA 1976; and (iv) the mark
was not used for a continuous period of not less than three years plus one
month in relation to the registered goods or services. The trial judge allowed
C
the Egyptian company’s application and hence, the Saudi company appealed
against the said decision via Appeal 1653. A situation arose herein where the
decision of the High Court allowing a s. 45 application by the Saudi company
and s. 46 application by the Egyptian company had led to both the Saudi and
Egyptian companies’ trade marks being not protected under the Trade Marks
Act 1976.
D
Held (allowing Appeal 401; dismissing Appeal 1653)
Per Hamid Sultan Abu Backer JCA delivering the judgment of the court:
(1) Section 45 application relates to expunging, etc. of a registered trade
mark on the basis it was entered without sufficient cause etc while s. 46
E relates to removal of a registered trade mark on the grounds of non-use
etc. Both sections require the applicant to be an aggrieved person.
(para 64)
(2) The Saudi company had not satisfied the threshold requirement of an
aggrieved person. Who is an aggrieved person is a question of fact. In
F
the instant case, the Saudi company had never operated any business in
relation to the trade marks in issue in Malaysia. Thus, there could not
be confusion of the Saudi company goods or services in Malaysia etc. for
any reasonable tribunal probably appraised with the facts of the case as
well as the wealth of jurisprudence in this area of law to come to a
G conclusion that ‘he is an aggrieved person’ entitled to the relief.
(para 57)
(3) There was merit in the Egyptian company’s assertion based on the fact
that it was trading using its trade marks in Malaysia for a considerable
time as opposed to the Saudi company to say that it had acquired
H distinctive goodwill and reputation in its mark in Malaysia. Further, the
Saudi company, notwithstanding the fact that they had registered their
trade marks as early as 1987, had failed to take any action promptly
against the appellant, thereby the concept such as ‘guilty of estoppels,
acquiescence, laches or abandon of the mark’ would kick in. In
I consequence, the trial court ought to have dismissed the Saudi
company’s application under s. 45 of TMA 1976 at limine or should
312 Cu rrent Law Jou rnal [2016] 9 CLJ

have upon the application of the relevant party entertained an A

application to vary to avoid confusion, if it was just to do so. Thus,
Appeal 401 was allowed. (para 57)
(4) The Egyptian company had registered its trade marks not only in
Malaysia but also other countries and was operating businesses in
B
Malaysia using the trade marks. The same could not be said in respect
of the Saudi company. The term ‘aggrieved person’ was related to
finding of facts, to provide locus to maintain the action. The decisions
of the courts did not require a high threshold to establish at the first
instance that the Egyptian company was an aggrieved person. (para 72)
C
(5) Applying the McLaren’s test, the Egyptian company was already using
its trade mark and was attempting to remove a similar trade mark which
the trial judge had taken cognisance to say that the Egyptian company
was indeed an aggrieved person. The Saudi company had failed to show
that it had used the marks or had genuine and present intention to use
D
the marks in the course of trade in Malaysia, taking into consideration
that the relevant marks were registered as early as 1997 as well as 2008.
Use of trade marks in relation to goods must necessarily mean use on
or in relation to the goods. (para 72)
(6) Taking a holistic view of the facts of the case and the fact that the Saudi E
company had not used its trade marks for purpose of trade at all, the trial
judge was correct in allowing the Egyptian company’s application.
Thus, the Saudi company’s Appeal 1653 was dismissed. (paras 72-73)
Bahasa Malaysia Headnotes
Sebuah syarikat di Mesir (‘syarikat Mesir’) mengendalikan satu perniagaan F
restoran di bawah cap dagangan ‘ALBAIK’ sementara sebuah syarikat dari
Arab Saudi (‘syarikat Saudi’) menjalankan perniagaan restoran di Jeddah di
bawah cap yang sama. Dua rayuan berbangkit di sini. Rayuan 401 adalah
rayuan oleh syarikat Mesir berasaskan penghakiman hakim bicara yang
membenarkan permohonan oleh syarikat Saudi menurut s. 45 Akta Cap G
Dagangan 1976 (‘ACP 1976’) untuk membatalkan cap dagangan yang
didaftar atas alasan: (i) syarikat Mesir bukan pemilik sah atau telah mendaftar
dengan niat jahat, bertentangan dengan s. 25(1) ACP 1976 dan (ii) cap
dagangan syarikat Mesir mempunyai persamaan dengan cap dagangan
syarikat Saudi dan ini akan menimbulkan kekeliruan pada dagangan dan H
pihak awam di Malaysia, bertentangan dengan s. 14(a) ke (g) dan/atau
s. 19(1)(a) dan/atau (b) ACP 1976. Syarikat Saudi menghujahkan bahawa cap
dagangannya dikenali ramai di Malaysia dan di seluruh dunia dan bahawa
syarikat Mesir tidak mempunyai hak mendaftarkan cap dagangan tersebut di
Malaysia. Walau bagaimanapun, syarikat Mesir mendakwa bahawa syarikat
I
Saudi tidak pernah menjalankan perniagaan restoran di Malaysia
berhubungan dengan cap dagangan tersebut, meskipun ia telah mendaftarkan
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 313

A cap dagangan itu di Arab Saudi pada tahun 1987 dan seterusnya
mendaftarkan cap dagangan ‘ELBAIK’ pada tahun 1997 di Malaysia. Hanya
pada tahun 2008 syarikat Saudi telah memfailkan permohonan untuk
mendaftarkan di Malaysia sebagai ‘ALBAIK’. Walau bagaimanapun, syarikat
Mesir telah mendaftarkan cap dagangannya ALBAIK di Mesir dan seterusnya
B mendaftarkan cap dagangan itu di Malaysia pada tahun 2005 dan
mengendalikan sebuah restoran di sini. Oleh kerana tidak dipertikaikan
bahawa syarikat Saudi tidak menggunakan cap dagangan itu di Malaysia
dalam pengendalian perniagaannya, syarikat Mesir membuat permohonan
untuk membuang cap dagangan syarikat Saudi menurut s. 46(1)(a) dan/atau
C
(b) ACP 1976 atas alasan tiada penggunaan cap dagangan ‘ALBAIK’. Alasan-
alasan yang dibangkitkan adalah (i) syarikat Mesir adalah pihak yang
terkilan; (ii) syarikat Saudi telah mendaftarkan cap dengan niat jahat
(iii) syarikat Saudi tidak menggunakan cap dagangan ‘ALBAIK’ yang
didaftarkan di Malaysia bertentangan dengan s. 46(1)(a) ACP 1976 dan
(iv) cap itu tidak digunakan untuk satu tempoh berterusan tidak kurang
D
daripada tiga tahun tambah satu bulan berhubungan dengan barangan atau
perkhidmatan berdaftar. Hakim bicara membenarkan permohonan syarikat
Mesir dan oleh itu, syarikat Saudi merayu terhadap keputusan tersebut
melalui Rayuan 1653. Satu situasi timbul di mana keputusan Mahkamah
Tinggi membenarkan permohonan s. 45 oleh syarikat Saudi dan permohonan
E s. 46 oleh syarikat Mesir mengakibatkan kedua-dua cap dagangan syarikat
Saudi dan syarikat Mesir tidak dilindungi di bawah Akta Cap Dagangan
1976.
Diputuskan (membenarkan Rayuan 401; menolak Rayuan 1653)
Oleh Hamid Sultan Abu Backer HMR menyampaikan penghakiman
F
mahkamah:
(1) Permohonan s. 45 untuk membatalkan cap dagangan yang didaftar atas
alasan bahawa ia telah didaftarkan tanpa kausa yang memadai sementara
s. 46 bagi pembatalkan cap dagangan yang didaftar atas alasan tiada
G
penggunaan. Kedua-dua seksyen mengkehendaki pemohon menjadi
pihak yang terkilan.
(2) Syarikat Saudi tidak mematuhi kehendak yang diperlukan oleh
seseorang yang terkilan. Siapa orang yang terkilan adalah persoalan
fakta. Dalam kes ini, syarikat Saudi tidak pernah mengendalikan
H apa-apa perniagaan berkaitan cap dagangan yang dikeluarkan di
Malaysia. Oleh itu, tidak timbul kekeliruan barangan atau perkhidmatan
syarikat Saudi di Malaysia untuk mana-mana tribunal munasabah yang
mentaksir fakta kes dan jurisprudens berkenaan undang-undang ini untuk
mencapai kesimpulan bahawa ‘dia adalah pihak yang terkilan’ yang
I
berhak mendapatkan relif.
314 Cu rrent Law Jou rnal [2016] 9 CLJ

(3) Terdapat merit dalam dakwaan syarikat Mesir berdasarkan fakta bahawa A
ia berdagang menggunakan cap dagangan di Malaysia untuk satu masa
yang agak lama berbanding syarikat Saudi untuk menyatakan bahawa ia
telah memperoleh nama baik dan reputasi tersendiri dalam capnya di
Malaysia. Tambahan lagi, meskipun terdapat fakta bahawa syarikat
Saudi telah mendaftarkan cap dagangannya seawal 1987, mereka gagal B
mengambil tindakan segera terhadap perayu, oleh itu konsep ‘guilty of
estoppels, acquiescence, laches or abandon of the mark’ diguna pakai.
Akibatnya, mahkamah bicara harus menolak permohonan syarikat
Saudi di bawah s. 45 ACP 1976 secara limine atau harus atas
permohonan pihak yang berkenaan melayan permohonan untuk C
membezakan bagi mengelakkan kekeliruan, jika ia adil berbuat
demikian. Oleh itu, Rayuan 401 dibenarkan.
(4) Syarikat Mesir telah mendaftarkan cap dagangannya bukan hanya di
Malaysia tetapi juga di negara lain dan mengendalikan perniagaan di
Malaysia menggunakan cap dagangan itu. Ini tidak dilakukan syarikat D
Saudi. Terma ‘seseorang yang terkilan’ adalah berhubungan dengan
dapatan fakta, untuk memberi locus bagi mengekalkan tindakan.
Keputusan mahkamah-mahkamah tidak memerlukan kehendak yang
tinggi bagi membuktikan bahawa syarikat Mesir adalah pihak yang
terkilan. E
(5) Mengguna pakai ujian McLaren, syarikat Mesir menggunakan cap
dagangannya dan cuba untuk membatalkan cap dagangan yang sama
yang mana hakim perbicaraan telah mengambil pengetahuan dan
menyatakan bahawa syarikat Mesir adalah seseorang yang terkilan.
Syarikat Saudi gagal menunjukkan bahawa ia telah menggunakan cap F
atau mempunyai niat yang tulen dan sedia ada untuk menggunakan cap
itu dalam pengendalian perdagangan di Malaysia, mengambil kira
cap-cap relevan telah didaftarkan seawal 1997 dan 2008. Penggunaan
cap dagangan berhubungan dengan barangan harus bermaksud
penggunaan atau berkaitan dengan barangan itu. G
(6) Mengambil pandangan holistik fakta kes dan fakta bahawa syarikat
Saudi tidak menggunakan cap dagangannya untuk tujuan perdagangan,
hakim bicara betul dalam membenarkan permohonan syarikat Mesir.
Oleh itu, Rayuan 1653 oleh syarikat Saudi ditolak.
Case(s) referred to: H
AL Baik Fast Food Distribution Co S.A.E. v. EL Baik Food Systems Co, S.A. [2016]
7 CLJ 552 HC (refd)
Aristoc Ltd v. Rysta Ltd & Anor (1945) 62 RPC 65 (refd)
Auvi Pte Ltd v. Seah Siew Tee And Another [1991] 2 SLR(R) 786 (refd)
Awaluddin Sham Bokhari v. Public Prosecutor [2016] 2 AMR 20 (refd)
I
Bourne v. Swan & Edgar Ltd [1903] 1 Ch 211 (refd)
Cadbury Schweppes Pty Ltd & Ors v. Pub Squash Co Pty Ltd [1981] RPC 429 (refd)
Compagnie Generale Des Eaux v. Compagnie Generale Des Eaux Sdn Bhd [1992] 4 CLJ
1979; [1992] 2 CLJ (Rep) 311 HC (refd)
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 315

A Consitex SA v. TCL Marketing Sdn Bhd [2008] 8 CLJ 444 HC (refd)

Godrej Sara Lee Ltd v. Siah Teong Teck & Anor (No. 2) [2008] 7 CLJ 24 HC (refd)
Hu Kim Ai & Anor v. Liew Yew Thoong [2004] 5 CLJ 515 HC (refd)
Imperial Group Plc v. Philip Morris Ltd [1984] RPC 293 (refd)
In Re Appollinaris Company’s Trade Marks [1891] 2 Ch 186 (refd)
In the Matter of An Application by the Pianotist Company Ltd for the Registration of A
B Trade Mark [1906] 23 RPC 774 (refd)
JS Steadtler & Anor v. Lee & Sons Enterprise Sdn Bhd [1993] 1 AMR 365 (refd)
Kassim Sulong & Anor As The Liquidators Of 10 Companies v. Guthrie Estates Holdings
Ltd & Ors [1994] 3 CLJ 186 HC (refd)
Keep Good Feel Corp Sdn Bhd & Anor v. Pharma World (M) Sdn Bhd & Ors [2009]
1 LNS 843 HC (refd)
C
Lam Soon Edible Sdn Bhd v. Hup Seng Perusahaan Makanan (M) Sdn Bhd [2010]
5 CLJ 975 HC (refd)
LB (Lian Bee) Confectionery Sdn Bhd v. QAF Ltd [2012] 3 CLJ 661 FC (refd)
Liwayway Marketing Corporation v. Oishi Group Company Limited [2016] 1 LNS 400
CA (refd)
D
Lloyd’s v. Lloyd’s (Southampton) Ltd (1912) 29 RPC 433 (refd)
McCurry Restaurant (KL) Sdn Bhd v. McDonald’s Corporation [2009] 3 CLJ 540 CA
(refd)
McLaren International Ltd v. Lim Yat Meen [2009] 4 CLJ 749 FC (refd)
Mesuma Sports Sdn Bhd v. Majlis Sukan Negara Malaysia, Pendaftar Cap Dagangan
Malaysia (Interested Party) [2015] 9 CLJ 125 FC (refd)
E Oishi Group Public Company Ltd v. Liwayway Marketing Corporation [2015]
2 CLJ 1121 HC (refd)
Prestige Housewares (India) Ltd v. Prestige [2000] PTC 513 (Mad) (refd)
Re Arnold D Palmer In The Matter Of Trade Mark Registration No 63249 [1986] 1 LNS
11 HC (refd)
Staywell Hospitality Group Pty Ltd v. Starwood Hotels & Resorts Worldwide, Inc And
F Another [2013] SGCA 65 (refd)
Tahansan Sdn Bhd v. Tay Bok Choon [1984] 2 CLJ 224; [1984] 1 CLJ (Rep) 383 FC
(refd)
TG Balaji Chettiar v. Hindustan Lever Ltd AIR 1967 Mad 148 (refd)
Tohtonku Sdn Bhd v. Superace (M) Sdn Bhd [1992] 2 CLJ 1153; [1992] 1 CLJ (Rep)
344 SC (refd)
G Wells Fargo Trade Mark [1977] RPC 94 503 (refd)
William Jacks & Co (M) Sdn Bhd v. Chemquip (M) Sdn Bhd & Anor [1991]
2 CLJ 1309; [1991] 1 CLJ (Rep) 492 SC (refd)
Wooly Bull Enterprises Pte Ltd v. Reynolds [2001] FCA 261 (refd)
Yomeishu Seizo Co Ltd & Ors v. Sinma Medical Products (M) Sdn Bhd [1996]
2 BLJ 142 HC (refd)
H Yong Teng Hing B/S Hong Kong Trading Co & Anor v. Walton International Ltd [2012]
6 CLJ 337 FC (refd)
Legislation referred to:
Rules of Court 2012, O. 87
Trade Marks Act 1976, ss. 14(1)(a), (b), (c), (d), (e), (f), (g), 19(1)(a), (b), 20, 25(1),
I 35, 38, 40, 44, 45(1)(a), 46(1)(a), (b), 80
Trade Marks Regulations 1997, regs. 11, 12
Trade Marks Act 1999 [India], ss. 57, 47
316 Cu rrent Law Jou rnal [2016] 9 CLJ

Other source(s) referred to: A

P Narayanan, Trade Marks and Passing Off, 6th edn, pp 7, 8
For the appellant - Steven Cheok Hou Cher, Ng Kim Poh & Nicole Chong; M/s Christopher
& Lee Ong
For the respondent - Indran Shanmuganathan, Loi Choi Yoke, Kok Pok Chin & Ong Hong
Keit; M/s PC Kok & Co B
[Editor’s note: For the High Court judgment, please see AL Baik Fast Food Distribution Co
S.A.E. v. EL Baik Food Systems Co, S.A [2016] 7 CLJ 552 (overruled in part).]
Reported by Suhainah Wahiduddin

C
JUDGMENT
Hamid Sultan Abu Backer JCA:
[1] The appellant/defendant in appeal No. W-02(IPCV)(A)-401-03-2015
(“401”) is an Egyptian Company and the respondent is a Saudi Company.
The appellant/defendant in Appeal No. W-02(IPCV)(A)-1653-10-2015 D
(“1653”) is the Saudi Company and the respondent is the Egyptian
Company. In appeal No. ‘401’, the application was made under s. 45 of the
Trade Marks Act 1976 (TMA 1976). In appeal No. ‘1653’, the application
was made under s. 46 of the TMA 1976.
E
[2] In appeal No. 401, Saudi Company managed to expunge the Egyptian
Company’s trade mark. In Appeal No. 1653, Egyptian Company managed
to remove the Saudi Company’s trade marks from the Register. In essence,
both trade marks are expunged. The learned trial judge had meticulously
explained the trade marks of the Saudi Company as well as the Egyptian
Company in two separate judgments. We will not repeat it save where it is F
necessary. This judgment must be read together with the two judgments of
the learned trial judge one reported in AL Baik Fast Food Distribution Co
S.A.E. v. EL Baik Food Systems Co, S.A. [2016] 7 CLJ 552; [2016] 9 MLJ 466
for the appeal No. ‘1653’ and the other one is not reported yet. We will deal
with both the appeals in this judgment to save repetition of the facts. The G
judgment will consist of two parts. One is for Appeal No. ‘401’ and the other
is for Appeal No. ‘1653’.
Appeal No. ‘401’
[3] The Egyptian Company appeals in respect of the judgment of the H
learned trial judge who allowed the Saudi Company’s application pursuant
to s. 45 of the TMA 1976 to expunge the registered trade marks on the
grounds:
(a) The Egyptian Company is not the rightful owner or has registered it in
bad faith, contrary to s. 25(1) of the TMA 1976; I
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 317

A (b) The Egyptian Company trade marks are confusingly similar to that of
the Saudi Company and this will cause confusion to the trade and public
in Malaysia, contrary to s. 14(1)(a) to (g) and/or s. 19(1)(a) and/or (b)
of the TMA 1976.
[4] It was the contention of the Saudi Company that (i) its trade marks are
B
well known in Malaysia or around the world; (ii) the Egyptian Company is
not entitled to register the trade marks in Malaysia.
[5] The Saudi Company’s prayers in brief read as follows:
(a) Declaration that the Plaintiff (Saudi Company) is the lawful owner
C of Trade Mark which consist the word “AL BAIK” and the device
of a chicken, when it is used in the food products and restaurant
services;
(b) 1st Defendant’s (Egyptian Company) trade mark registration
No. 05013291 filed in Class 29 and 05013292 filed in Class 16 was
D
wrongly registered without sufficient cause and/or wrongly remains
on the register. Those trade mark registrations to be cancelled,
expunged and removed from Trade Mark register,
(c) The 2nd Defendant, Pendaftar Cap Dagangan Malaysia to rectify
the register by cancelling and expunging the 1st Defendant’s trade
mark and to gazette this action in the Government gazette.
E
(d) Costs to be paid by 1st Defendant to Plaintiff.
[6] The memorandum of appeal of the Egyptian Company reads as
follows:
1. The learned Judge erred in law in placing reliance on all affidavits
F affirmed by one Lim Eng Leong, the deponent for all of the
Plaintiff’s Affidavits in relation to Suit No. 24IP-17-04/2014, when
he in fact is not an employee, franchisee or licensee of the Plaintiff,
and does not possess personal knowledge or facts deposed in his
affidavits, thus is not in the position to affirm any affidavits on
behalf of the Plaintiff on contentious facts.
G
2. The learned Judge erred in fact and in law in holding that the First
Defendant’s trade mark is wrongly registered, without sufficient
cause and/or wrongly remaining on the Register.
3. The learned Judge erred in fact in holding that the Plaintiff had
H expanded use of its marks to other countries where in reality, the
Plaintiff only has a restaurant business and outlets in Saudi Arabia
only and in no other countries.
4. The learned Judge erred in fact and in law in considering the
Plaintiff’s trade mark as only consisting of the words “AL BAIK”
and the device of a smiling chicken, and omitted to consider the fact
I that up till 2007, the Plaintiff only registered a few trade marks
consisting of the words “EL BAIK” and it was only in 2007 when
318 Cu rrent Law Jou rnal [2016] 9 CLJ

the Plaintiff first registered trade marks consisting of the words A

“AL BAIK”, whereas the First Defendant had registered and used
its “AL BAIK” trade mark since 2005.
5. The learned Judge erred in fact and in law in not taking into
consideration the First Defendant’s first and earlier use of the First
Defendant’s mark in Malaysia. B
6. The learned Judge erred in fact and in law in not considering the
facts that the First Defendant had acquired distinctive goodwill and
reputation in its mark in Malaysia.
7. The learned Judge erred in fact and in law in holding that the
Plaintiff is an aggrieved person under the Trade Marks Act 1976. C

8. The learned Judge erred in fact and in law in holding that the
Plaintiff had registered its “AL BAIK” trade marks in Malaysia since
1997 when the Plaintiff had actually registered its “EL BAIK” trade
mark since 1997 and only registered the “AL BAIK” trade mark in
2007. D
9. The learned Judge erred in fact and in law in holding that the
Plaintiff’s mark is well-known in Malaysia.
10. The learned Judge erred in fact and in law in holding that the
pilgrims from Malaysia would invariable connect the “AL BAIK”
trade mark with the Plaintiff, where there was a lack of evidence to E
this effect.
11. The learned Judge erred in fact and in law in holding that the
registration of the First Defendant’s trade mark is confusingly
similar to the mark of the Plaintiff making it likely to cause
confusion to the public and thus contravenes Section 14(1)(a) of the F
Trade Marks Act 1976.
Preliminary Issues
[7] The learned trial judge had allowed the application, notwithstanding
the Saudi Company’s case was fraught with technicalities and assertion of
hearsay materials and the threshold elements to succeed in an application G
under s. 45 was not satisfied. Based largely on hearsay evidence as well as
assertion of the Saudi Company’s trade marks agent, one by the name of Lim
Eng Leong, who is not an employee of the Saudi Company, the learned trial
judge concluded as follows:
H
[25] Even though there is no evidence of actual use of the plaintiff’s mark
in Malaysia, from the affidavits before me, I am of the considered opinion
that the Plaintiff’s marks, which had been registered since 1987 in Saudi
Arabia and in other countries is a well known mark amongst those who
have visited Saudi Arabia and the holy land, Mecca. Pilgrims from
Malaysia would invariably connect the “AL BAIK” trade mark with the I
Plaintiff, the owner based in Saudi Arabia.
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 319

A [26] Therefore, for the First Defendant to register an almost identical

trade mark, bearing “AL BAIK” with the smiling chicken device is likely
to cause confusion to the public and this contravenes s. 14(1)(a) of the
TMA 1976.
[27] In the premise, the Plaintiff’s application is allowed with costs.
B
[8] Learned counsel for the Egyptian Company on preliminary issues
says:
(a) The Saudi Company’s deponent’s evidence is hearsay and he had no
personal knowledge;
C (b) The deponent will not have knowledge of disputed facts.
[9] The preliminary issues anchored by learned counsel for the Egyptian
Company, inter alia, reads as follows:
10. The Appellant had raised objections [see para 4, page 47 Record of
Appeal] wherein the Appellant contends that the deponent for all of the
D
Respondent’s affidavits, one Lim Eng Leong, is not an employee of the
Respondent but is merely a trade mark agent of the Respondent in
Malaysia. It is highly dubious that the deponent would have any
knowledge on any information relating to a number of disputable facts,
particularly in relation to the facts relating to the alleged use of the
E Respondent’s trademarks whether in Malaysia or elsewhere. For example,
the deponent would not be in a position to confirm which is the exact
date the Respondent commenced operations in Mina, where there are
conflicting dates even from the Respondent’s own documents - please see
paragraph 60 of this submission hereinbelow.
11. Further, for the same reason, the deponent could not properly claim
F
to have any personal knowledge of any of the information contained in
the documents adduced by the deponent through his affidavits. As such,
most if not all of the evidence adduced therein are hearsay evidence and
should be treated with caution by My Lords. Alternatively, little weight
should be attached to the averments of the deponent.
G [10] As the Saudi Company has not filed the application and/or affidavit
to expunge the trade marks, it is alleged that the affidavit of the trade mark
agent is bad in law. We took upon ourselves to check the proprietariness of
the allegation as it is trite that any application before the court must be made
by the relevant applicant subject to exception, in relation to authority to act,
H which we will deal with shortly.
[11] In response to trade mark agent’s supporting affidavit, the Egyptian
Company has taken the preliminary objection, inter alia, as follows:
(a) On the outset, and in reply to paragraphs 1 and 2 of the Plaintiff’s
Affidavit, I have been advised by the solicitors for the 1st Defendant
I
and verily believe that the Plaintiff’s Affidavit is defective, in that
it should not have been affirmed by the Plaintiff’s trade mark agent
320 Cu rrent Law Jou rnal [2016] 9 CLJ

since the Plaintiff’s Affidavit contains contentious and disputable A

facts. The 1st Defendant’s solicitors will submit on the admissibility
of the Plaintiff’s Affidavit during the hearing later.
(b) In addition, I have been adv ised by the solicitors for the
1st Defendant and verily believe that the correct mode of
commencement of this action should be by way of a Writ and not B
by way of Originating Summons, as the matter contains substantial
dispute of facts between parties. The 1st Defendant’s solicitors will
submit on the admissibility of the Plaintiff’s Affidavit during the
hearing later.
[12] The learned trial judge had not addressed the preliminary objection in C
the judgment. In consequence, on the facts it is our considered view that the
integrity of the decision making process has been compromised.
Authority To Act
[13] Section 80 of the TMA 1976 allows an agent to be appointed for
registration of trade mark, provided the criteria set out in the sections are D
satisfied, but not specifically to act for the applicant in court proceedings.
The said s. 80 of the TMA 1976 reads as follows:
Section 80. Agent
(1) Where an applicant for registration of a trade mark does not reside E
or carry on business in Malaysia, he shall appoint an agent to act for him.
(2) Where by this Act any act has to be done by or to any person in
connection with a trade mark or proposed trade mark or any procedure
relating thereto, the act may, under and in accordance with this Act and
any regulations made thereunder or in particular cases by special leave of
F
the Registrar, be done by or to an agent of that person duly authorised
in the prescribed manner.
(3) No person, firm or company shall be authorised to act as an agent for
the purposes of this Act unless that person is domiciled or resident in
Malaysia or the firm or company is constituted under the laws of Malaysia
and such person, firm or company carries on business or practice G
principally in Malaysia.
[14] The TMA 1976 must also be read with Trade Marks Regulations
1997. The most relevant regulation for s. 80 of the TMA 1976 will be
regs. 11 and 12 which read as follows:
H
Regulation 11. Agency.
(1) Except as otherwise required by the Act or these Regulations -
(a) any application, request or notice which is required or permitted
to be made or given to the Registrar;
I
(b) all other communications between an applicant or a person
making such request or giving such a notice and the Registrar;
and
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 321

A (c) all other communications between the registered proprietor or

the registered user of a trade mark and the Registrar or any
other person,
may be signed, made or given by or through an agent and the
Registrar may -
B (aa) in any particular case, require the personal signature or
presence of the applicant, opponent, registered proprietor,
registered user or other person;
(bb) by notice in writing sent to an agent, require him to produce
evidence of his authority.
C
(2) Where a party to proceedings before the Registrar appoints an agent
for the first time or appoints one agent in substitution for another,
the agent appointed shall file Form TM 1 with the Registrar on or
before the first occasion on which he acts as an agent for that party
in the proceedings.
D (3) No person may appoint more than one agent to act for him
concurrently in respect of the same mark, whether in respect of the
same or different transactions; and where more than one agent is
on record, the Registrar shall recognise only the latest agent duly
appointed.
E (4) The Registrar shall decline to recognise as an agent any person who
is not currently on the Register of Trade Marks Agents of Malaysia
compiled and maintained under regulation 12.
Regulation 12. Registration of agents.
(1) The Registrar shall maintain a Register of Trade Marks Agents.
F
(2) An application to be registered as a trade marks agent shall be made
to the Registrar on Form TM 2 accompanied with payment of the
prescribed fee.
(3) In order to be registered in the Register of Trade Marks Agents, the
applicant shall satisfy the Registrar that he is either domiciled or
G resident in Malaysia or has a principal place of business in Malaysia,
and:
(a) is on the Register of Patents Agents maintained in pursuance
of regulations made under the Patents Act 1983 [Act 291]; or

H
(b) is an advocate and solicitor practising solely in Malaysia; or
(c) holds a recognised degree in any field of studies and has had
at least three years’ experience in the field of industrial property;
or
(d) has had at least three years of experience in the field of
I industrial property by virtue of he being an ex-officer of the
Office; or
322 Cu rrent Law Jou rnal [2016] 9 CLJ

(e) has acted as a trade mark agent to the satisfaction of the A

Registrar before the Trade Marks Regulations 1997 came into
force.
(4) The Registrar shall not register any person who has been convicted
of any registrable offence or any criminal offence involving fraud or
dishonesty. B
(5) The Registrar, upon being satisfied that the applicant qualifies to be
registered in the Register of Trade Marks Agent, shall register the
applicant for a term expiring on the 31st December of that year.
(6) An agent shall be removed from the Register of Trade Marks Agent
if he: C

(a) is no longer domiciled or resident in Malaysia or no longer has

a principal place of business in Malaysia; or
(b) is convicted of a registrable offence or any criminal offence
involving fraud or dishonesty; or
D
(c) is an undischarged bankrupt; or
(d) has been struck off and not restored to the Register of Patents
Agents or the Roll of Advocates and Solicitors or is suspended
for the time being from that Register or that Roll.
(7) An application for the renewal of registration as a trade mark agent E
shall be made to the Registrar on Form TM 3 together with
payment of the prescribed fee by 31 January of each year.
(8) The Registrar shall upon being satisfied that the conditions specified
in sub-regulations (3) and (4) continue to be satisfied, renew the
registration of the trademarks agent for a term expiring on F
31 December of that year.
[15] When s. 80 is read with regs. 11 and 12, it will be clear that the said
section or regulations do not give authority for the agent to act for a registered
trade mark holder in the High Court. The application as well as the
supporting affidavit must be filed in this case by the registered proprietor G
who is aggrieved by the act of the appellant and not by the agent. That is what
s. 45(1)(a) asserts about ‘any person aggrieved’. Whether such an application
can be made by the trade mark agent is doubtful. This issue was not properly
raised by the appellant before the learned trial judge. We did not see any
argument on s. 80 in the submission before the trial judge and in consequence
H
we will not labour on this point, save to say that the Supreme Court in
William Jacks & Co (M) Sdn Bhd v. Chemquip (M) Sdn Bhd & Anor [1991]
2 CLJ 1309; [1991] 1 CLJ (Rep) 492; [1991] 2 MLJ 555, had asserted that
a challenge to the authority of solicitors may be made at any time and the
court in its inherent jurisdiction may entertain the challenge made orally and
may order the action to be struck out if there was sufficient or admitted I
evidence that there is no action properly before it. We take the view that the
jurisprudence advocated in William’s case will apply to the trade mark agent.
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 323

A Originating Summons And Hearsay Evidence

[16] It is well settled that an application to the court under TMA 1976
must be by originating summons (O. 87, RC 2012). It is also well settled in
the hearing of the originating summons that the affidavit in support must not
be fraught with hearsay evidence. (See Awaluddin Sham Bokhari v. Public
B
Prosecutor [2016] 2 AMR 20). This point was well articulated in the case of
Kassim Sulong & Anor As The Liquidators Of 10 Companies v. Guthrie Estates
Holdings Ltd & Ors [1994] 3 CLJ 186, where Zakaria Yatim J on the facts of
the case held:
(1) Where a deponent averred that he was ‘advised and verily believed’
C
but did not disclose the source of his information or the person who had
advised him, the averment was bad. This was hearsay evidence. Where
the proceeding was a final matter and not an interlocutory matter, hearsay
evidence was inadmissible.
(2) Where an affidavit contained hearsay evidence or extrinsic evidence,
D it was inadmissible. An affidavit was not a place for submissions.
(3) Where exhibits to the affidavit state an opinion of law, that opinion
of law is not admissible. It is the function of the court to decide on
questions of law.
[17] In addition, where the facts are disputed that issue may have to be
E
determined by oral evidence. (See Tahansan Sdn Bhd v. Tay Bok Choon [1984]
2 CLJ 224; [1984] 1 CLJ (Rep) 383; [1985] 1 MLJ 58).
[18] In the instant case, all the procedural safe guards for a valid trial had
been compromised to arrive at a just decision. In consequence, we take the
F view that the decision making process has been compromised, warranting the
appellate court to set aside the judgment in limine.
[19] Notwithstanding our views on the preliminary issues raised and dealt
with, we will now deal with the merit of the appeal.
Brief Facts
G
[20] The Saudi Company has never operated any restaurant business in
Malaysia related to the trade marks in issue, notwithstanding that it has
registered its trade marks in Saudi Arabia in 1987 and subsequently had
registered the trade marks as ‘ELBAIK’ in 1997 in Malaysia. Only sometime
H in the year 2008, the Saudi Company had filed an application to register in
Malaysia as ALBAIK. However, the Egyptian Company had registered its
trade marks ALBAIK in Egypt and subsequently registered the trade marks
in Malaysia in 2005 and was operating its restaurant business here. In
essence, the Saudi Company registered trade mark was ELBAIK, registered
in 1997 (subsequently ALBAIK) but seeking to expunge ALBAIK trade mark
I
of the Egyptian Company.
324 Cu rrent Law Jou rnal [2016] 9 CLJ

[21] It must be kept in mind that the Saudi Company’s trade marks A
registered in 1997 was ELBAIK and only subsequently in 2008 had
registered as ALBAIK. The details as set out by learned counsel for the Saudi
Company read as follows:

I
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 325

A [22] The details of the Egyptian Company trade marks as set out by learned
counsel for the Egyptian Company reads as follows:
No. Trade mark Trade mark Date of Class of Status
no. application/ goods
Registration
B

1. 05013292 9/8/2005 16 Third Party Removal

2. 05013292 9/8/2005 29 Third Party Removal

D
Jurisprudence Relating To Trade Mark And An Application Under s. 45
Of TMA 1976
[23] Trade mark is a generic phrase and it includes symbol and/or design
that identifies and distinguishes the source of the goods of one party from
E those of others. In contrast, service mark relates to symbol and/or design that
identifies and distinguishes the source of a service rather than the goods.
Mark used to promote services are referred to as service marks. For example,
different goods and services have been classified by the International (Nice)
Classification of Goods and Services into 45 trade marks Classes (1 to 34
F
cover goods, and 35 to 45 cover services). The idea of this system is to
specify and limit the extension of the intellectual property right by
determining which goods or services are covered by the mark, and to unify
classification systems around the world. TMA 1976 gives an extended
meaning to trade mark and includes service mark. Under the common law
and/or statute, the jurisprudence relating to trade mark relates to three
G
concepts namely distinctiveness, deceptive similarity of marks and similarity
of goods.
[24] The law considers trade mark as a type of intellectual property and the
law gives exclusive rights and protection in respect of registered trade mark
H
or services, to prevent unauthorised use of the mark in relation to product
or services which are identical or ‘colourfully’ similar to the ‘registered’
products or services, and in certain cases to entirely dissimilar product or
services. The ultimate test as it stands for purpose of registration or to
sustain registration is whether the consumers of the goods or services will
be confused as to the identity of the source or origin (emphasis added). This
I
can also be conveniently referred to as ‘customer’ or ‘consumer’ approach.
326 Cu rrent Law Jou rnal [2016] 9 CLJ

This test is in actual fact is an objective test (jury test) and need the assistance A
of common sense jurisprudence as opposed to reliance of case law per se or
the views of academicians. Judges reasoning on such issues may not be one
and the same in all jurisdictions. (See Staywell Hospitality Group Pty Ltd v.
Starwood Hotels & Resorts Worldwide, Inc And Another [2013] SGCA 65
(Staywell case)). B

[25] It must be noted that a trade mark is a distinctive sign or indicator used
by an individual, business organisation, or other legal entity to identify that
the products or services to consumers with which the trade mark appears,
originate from a unique source, and to distinguish its products or services
from those of other entities. In essence, trading necessarily means trading in C
Malaysia but there are a number of exceptions. Further, the three concepts
namely: (i) distinctiveness; (ii) deceptive similarity of marks; (iii) similarity
of goods; may have a lesser role to play as per the instant case when the Saudi
Company is not trading in Malaysia.
D
[26] However, when one selects a name for its brand or trade mark, they
must be careful not to invite trouble from other traders who are already well
established. (See Lloyd’s v. Lloyd’s (Southampton) Ltd (1912) 29 RPC 433;
Compagnie Generale Des Eaux v. Compagnie Generale Des Eaux Sdn Bhd [1992]
4 CLJ 1979; [1992] 2 CLJ (Rep) 311; [1993] 1 MLJ 55; [1996] 3 AMR
4015]. E

[27] On the issue of right and wrong, the learned authors of Kerly’s Law of
Trademarks and Trade Names, (12th edn) says:
It is an actionable wrong for the defendant to represent, for trading
purpose, that his goods are those or that his business is that of the F
plaintiff, and it makes no difference whether the representation is effected
by direct statement, or by using some of the badges by which the goods
of the plaintiff are known to be his, or any badges colourably resembling
these, in connection with goods of the same kind, not being the goods
to be taken by ordinary purchasers for the goods of the plaintiff.
G
[28] At the same page the learned authors quote the case of Cadbury
Schweppes Pty Ltd & Ors v. Pub Squash Co Pty Ltd [1981] RPC 429 at p. 490
(PC, NSW) where it was stated:
... the tort is no longer anchored as in its early nineteenth century
formulation, to the name or trademark of a product or business. It is wide
enough to encompass other descriptive material, such as slogan or visual H
images, which radio, television or newspaper advertising campaigns can
lead the market to associate with the plaintiff product, provided always
that such descriptive material become part of the goodwill of the product.
And the test is whether the product has derived from advertising a
distinctive character which the market recognised.
I
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 327

A [29] Learned author P Narayanan in his book ‘Trade Marks and Passing Off’
(6th edn), had summarised the basic principles of trade mark law at pp. 7 and
8 and read as follows:
1.09 Basic principles of trade mark law It is interesting to note that the
law of trade mark, practically all over the world is based on three broad
B concepts: (1) distinctiveness or distinctive character, or capable of
distinguishing, (2) deceptive similarity or similarity or near resemblance of
marks and (3) same description or similarity of goods. The purpose of the
Act, as stated in the preamble, is to provide for registration and better
protection of trade marks for goods and services and to prevent the use
of fraudulent marks. In consonance with this object the following
C fundamental principles of trade mark law are embodied in the various
provisions of the Act:
(a) Since registration confers on the proprietor a kind of monopoly right
over the use of the mark, which may consist of a word or symbol
legitimately required by other traders for bona fide trading or business
D purposes, certain restrictions are necessary on the class of words or
symbols over which such monopoly right may be granted. This
principle is recognised in the qualifications for registration laid down
in s. 9. Absolute grounds for refusal of registration.
(b) Registration of a trade mark should not interfere with the bona fide
E use by other persons of names or words in ordinary usage. This
principle is embodied in ss. 13 and 35.
(c) Property rights in a trade mark acquired by use are superior to similar
rights obtained by registration under the Act. This is clear from the
preamble which refers to “better protection of trade marks”, thereby
necessarily implying the existence and availability of some
F
protection under common law. It, therefore, follows that prior users
of trade marks should be protected against any monopoly rights
granted under the Statute. This principle is enacted in s. 34.
(d) There are obviously two main interests to be protected when a mark
is presented for registration. There is first the interest of the public.
G A trade mark ought not to be registered if its use will be apt to
mislead the public as to the origin of the goods they are purchasing.
There is also the interests of other existing traders who are entitled
to object if the use of the trade mark proposed for registration will
be calculated to enable the applicant’s goods to be passed off on the
public as such other traders’ goods. These interests are protected by
H ss. 9 and 11.
(e) It may so happen that a trader honestly used a trade mark for a
number of years although an identical or similar mark has been
registered or used by another. It will obviously cause hardship to
such a trader if he is deprived of the benefits of registration. Section
I 12 provides for the registration of such marks subject to suitable
conditions and limitations.
328 Cu rrent Law Jou rnal [2016] 9 CLJ

(f) A trade mark has no meaning unless it is used in relation to some A

goods. Broadly speaking, the life of a trade mark depends on its use;
and continued non-use may lead to its eventual death. There is,
therefore, no equitable or logical basis for the continuance of the
protection afforded by registration where the mark is no longer in
use for sufficiently long period. This principle is recognised in the
Act by providing for removal of a mark from the register on the B
ground of non-use (see s. 47).
(g) A trade mark is recognised as a form of property. The term
“proprietor of a trade mark” is used in the definition of a trade mark
and also in various other provisions of the Act. It should, therefore,
be assignable and transmissible as in the case of other forms of C
property. This principle is the basis of the provisions contained in
Chapter V. Having regard to the peculiar nature of this property, the
Act has taken care to impose various restrictions and conditions for
the assignment or transmission of property rights in a trade mark,
whether registered or unregistered.
D
(h) Granting the benefits of registration under the Statute is; not only
a matter of interest to the applicant seeking registration, but it is a
matter in which the public is also interested. It is, therefore,
necessary that any member of the public who wants to object to the
registration should be permitted to do so. The Act accordingly
provides for advertisement of the application and opposition thereto E
by any interested party (see ss. 20 and 21).
These principles are substantially followed in all countries administering
trade mark law. It has been observed that “it is of the highest importance
that in such an important branch of commercial law as that relating to
trade marks there should be uniformity as far as possible in all countries
F
administering the same system of law.”
[30] Trade mark rights are generally enforceable within the jurisdiction but
there can also be protection outside the jurisdiction. What is essential to note
is that the law of trade mark is not predicated on the premise to give
monopoly to traders. The law on trade mark is constructed, inter alia, to G
protect the public against tortious acts of competing traders in a particular
state. The law and case laws on trade mark in a state may align itself to give
protection on first come first basis of the user or intended user of trade mark.
For example, a well established trade mark, say in Australia, which may be
identical to a well established trade mark from USA and trading in India may
H
not be allowed to register the trade mark in India, without proper direction
related to variation and satisfying the court that the Australian is a genuine
trader and not a tortfeasor. (See Staywell case). The facts of the instant case
is one related to genuine traders but the Saudi Company had not started with
its trading activities using its marks in restaurant business in Malaysia. This
distinction must be kept in mind in dealing with the final issue related to I
confusion.
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 329

A TMA 1976
[31] The law on registered trade mark is encompassed in TMA 1976 and
Trade Marks Regulations 1997 (‘TMR 1997’). The Act does not define what
a trade mark is but says ‘mark’ includes a device, brand, heading, label,
ticket, name, signature, word, letter, numeral or any combination thereof. It
B
is essential to note that the law of trade mark is essentially based on
distinctive similarities of marks as well similarities of goods. (See McCurry
Restaurant (KL) Sdn Bhd v. McDonald’s Corporation [2009] 3 CLJ 540; [2009]
3 MLJ 774). If a person is the owner of a registered trade mark in a particular
language, another person cannot claim registration of the same word trade
C mark in any other language using the equivalent in translation. (See
(i) Yomeishu Seizo Co Ltd & Ors v. Sinma Medical Products (M) Sdn Bhd [1996]
2 BLJ 142; [1996] 2 MLJ 334; (ii) TG Balaji Chettiar v. Hindustan Lever Ltd
AIR 1967 Mad 148). In the instant case, it will be difficult to content that
there are no similarities in marks or services.
D
[32] At common law, unregistered trade mark is protected as long as it is
in use and provided the owner of the mark takes immediate action against
infringers by passing off action etc. Similarly a registered trade mark can be
protected as long as the owner desires so, provided it is renewed periodically,
as provided by the relevant Act and immediate action is taken against
E infringers. If the infringement of the mark is not prevented, the mark may
become common and in consequence may lose protection (emphasis added).
In the instant case, the Saudi Company has not taken any action relating to
infringement, notwithstanding the Saudi Company’s marks was registered
first. We are mindful there are cases to say that delay on the part of an
F applicant to seek reliefs is no bar to the application. (Bourne v. Swan & Edgar
Ltd [1903] 1 Ch 211). There have been cases where marks have been
removed after being on the Register for 14 years. (See In Re Appollinaris
Company’s Trade Marks [1891] 2 Ch 186.) We do not think condoning delay
without proper reasons is part of our jurisprudence and/or within the spirit
G
and intent of TMA 1976. The old cases or decisions based on the old cases
must be read with caution.
Comparison And Confusion
[33] Useful guidelines, particularly the essential features and/or concepts,
for the comparison of trade mark in an infringement and passing off case were
H set out by the Supreme Court in JS Steadtler & Anor v. Lee & Sons Enterprise
Sdn Bhd [1993] 1 AMR 365. The nuances of the three concepts related to
distinctiveness, deceptive similarity of marks and similarity of goods were
well articulated in the iconic judgment of Sundaresh Menon CJ of Singapore,
sitting in the Court of Appeal in the case of Staywell.
I
330 Cu rrent Law Jou rnal [2016] 9 CLJ

[34] In Tohtonku Sdn Bhd v. Superace (M) Sdn Bhd [1992] 2 CLJ 1153; A
[1992] 1 CLJ (Rep) 344; [1992] 2 MLJ 63, the Supreme Court endorsed the
Pianotist test. The Pianotist test does not articulate a formula or methodology
for a court to conclude what is ‘right’. The test gives guidelines to arrive at
a ‘just’ decision and not necessarily a ‘right’ decision. The Supreme Court
observed as follows: B
The ‘test’ which Wan Adnan J was referring to were contained in Parker
J’s judgment in The Pianotist Co Ltd in the following terms:
You must take two words. You must judge them, both by their look and
by their sound. You must consider the goods to which they are to be
applied. You must consider the nature and kind of customer who would C
be likely to buy those goods. In fact you must consider all the surrounding
circumstances; and you must further consider what is likely to happen if
each of those trademarks is used in a normal way as a trade mark for the
goods of the respective owners of the marks.
[35] The issues to be tried related to Pianotist test is jury oriented D
(jury test), ie, one of finding of facts and it gives no room for academic
orientation in the form of judicial pronouncement of a complicated nature
where even law students may shy away. However, subsequent cases after the
Supreme Court’s decision in Tohtonku within our jurisdiction and outside,
had expanded the jury test to a more complicated version which was partly E
summarised in Consitex SA v. TCL Marketing Sdn Bhd [2008] 8 CLJ 444 as
follows:
(a) the idea conveyed by both trade marks must be compared;
(b) the marks as a whole must be compared;
F
(c) the 1st syllable of the trade marks is of importance;
(d) the ear as well as the eye must be considered;
(e) the imperfect recollection of customers/potential customers must be
considered;
G
(f) the essential features of the trade marks must also be compared.
[36] In the Malaysian context, the Pianotist test (jury test) has been well
entrenched through court’s decisions. The Pianotist test provides a simple
methodology and guidelines to achieve a just conclusion and not necessarily
a right decision as to whether a trade mark should be allowed to be registered
H
and/or to be sustained in the Register of trade marks. Once those guidelines
had been meticulously followed by the Registrar of trade mark or the trial
court, apex court should be slow to intervene as it does not fall in the area
of law but more to the exercise of discretion. The Pianotist test is within the
spirit and intent of TMA 1976, though case laws in this area of law within
and outside Malaysia may advocate convoluted jurisprudence to conclude I
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 331

A what is right rather than what is just taking into consideration a holistic
approach whether indeed there will be confusion to the Malaysian public.
The TMA 1976 does not give any party a monopoly right to register a trade
mark when there is a competing interest. As long as the applicant can
demonstrate that it will be just for the trade mark to be registered or be in
B the Register that prima facie will satisfy the Pianotist test. Our ss. 20, 25, 35,
44, etc. of the TMA 1976 even permit the Registrar to register a trade mark
by imposing conditions, etc. This provision is meant to allow fair
competition between genuine traders and to enable them to register their
trade marks by ensuring the issue of ‘confusion’ is eliminated. If there is no
C
confusion, registration of trade mark should ordinarily follow. In this case,
the Saudi Company or Egyptian Company did not resort to the above said
sections before the Registrar and/or the High Court. The said ss. 20, 25, 35
and 44 of the TMA 1976 read as follows:
Section 20. Concurrent use
D (1) Notwithstanding subsection 19(1), in the case of honest concurrent
use or of the circumstances described in paragraph 6(4)(c) or of other
special circumstances which, in the opinion of the Court or the Registrar,
make it proper so to do, the Court or the Registrar may permit the
registration of more than one proprietor in respect of trade marks which
are identical or so nearly resembling each other as are likely to deceive
E
or cause confusion where the registration of the different proprietors:
(a) is in respect of the same goods or description of goods; or
(b) in the case of at least one proprietor, is in respect of goods, and in
the case of the other or others, is in respect of services closely
F
related to those goods, subject to such conditions, amendments,
modifications or limitations, if any, as the Court or the Registrar, as
the case may be, may think right to impose.
(1A) Notwithstanding subsection 19(2), in the case of honest concurrent
use or of other special circumstances which, in the opinion of the Court
or the Registrar, make it proper so to do, the Court or the Registrar may
G permit the registration of more than one proprietor in respect of trade
marks which are identical or so nearly resembling each other as are likely
to deceive or cause confusion where the registration of the different
proprietors:
(a) is in respect of the same services or description of services; or
H
(b) in the case of at least one proprietor, is in respect of services, and
in the case of the other or others, is in respect of goods closely
related to those services, subject to such conditions, amendments,
modifications or limitations, if any, as the Court or the Registrar, as
the case may be, may think right to impose.
I
332 Cu rrent Law Jou rnal [2016] 9 CLJ

(2) The Registrar shall not refuse to register a trade mark which is A
identical to or so nearly resembling another trade mark in the Register if
the applicant of the first mentioned trade mark or his predecessor in
business has continuously used that trade mark from a date before:
(a) the use of that other trade mark by the registered proprietor or his
predecessor in business or by a registered user; or B
(b) the registration of that other trade mark by the registered proprietor
or his predecessor in business,
whichever is the earlier.
Section 25. Registration
C
(1) Any person claiming to be the proprietor of a trade mark used or
proposed to be used by him may make application to the Registrar for the
registration of that mark in the Register in the prescribed manner.
(2) An application shall not be made in respect of goods or services
comprised in more than one class. D
(3) Subject to the provisions of this Act, the Registrar may refuse the
application or may accept it absolutely or subject to such conditions,
amendments, modifications or limitations, if any, as he may think right
to impose.
(4) In the case of refusal or conditional acceptance the Registrar shall, if E
required by the applicant, state in writing the grounds of his decision and
the material used by him in arriving at the same.
(5) A decision of the Registrar under subsection (3) is subject to appeal
to the Court.
(6) An appeal under this section shall be made in the prescribed manner F
and the Court shall, if required, hear the applicant and the Registrar, and
shall make an order determining whether, and subject to what conditions,
amendments, modifications or limitations, if any, the application is to be
accepted.
(7) The appeal shall be heard on the material stated by the Registrar to G
have been used by him in arriving at his decision and no further grounds
of objection to the acceptance of the application shall be allowed to be
taken by the Registrar other than those so stated except by leave of the
Court.
(8) Where any further grounds of objection are taken the applicant shall H
be entitled to withdraw his application without payment of costs on giving
notice in the prescribed manner.
(9) The Registrar or the Court, as the case may be, may at any time,
whether before or after acceptance, correct any error in or in connection
with the application or may permit the applicant to amend his application
upon such terms as he or it may think fit. I
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 333

A (10) Any application submitted and accepted under this section shall
notwithstanding any correction or amendment permitted by the Registrar
or the Court to be made in such application be deemed to have been
made on the date of its original submission.
(11) (Repealed by Act A1078).
B (12) Without prejudice to subsection (10) where after the acceptance of
an application for registration of a trade mark but before the registration
of the trade mark the Registrar is satisfied:
(a) that the application has been accepted in error; or
(b) that in the special circumstances of the case the trade mark shall not
C
be registered or shall be registered subject to additional or different
conditions or limitations, the Registrar may withdraw the acceptance
and proceed as if the application had not been accepted or, in
respect only of a trade mark which shall be registered subject to
additional or different conditions or limitations, reissue a new
D acceptance subject to additional or different conditions or
limitations.
Section 35. Rights given by registration
(1) Subject to the provisions of this Act, the registration of a person as
registered proprietor of a trade mark (other than a certification trade mark)
E in respect of any goods or services shall, if valid, give or be deemed to
have been given to that person the exclusive right to the use of the trade
mark in relation to those goods or services subject to any conditions,
amendments, modifications or limitations entered in the Register.
(2) Where two or more persons are proprietors of registered trade marks
F
which are identical or nearly resembling each other rights of exclusive use
of either of those trade marks are not (except so far as their respective
rights have been defined by the Registrar or the Court) acquired by any
one of those persons as against any other of those persons by registration
of the trade mark but each of those persons have the same rights as
against other persons (not being registered users) as he would if he were
G the sole registered proprietor.
Section 44. Alterations of registered trade mark
(1) The registered proprietor of a trade mark may apply in the prescribed
manner to the Registrar for leave to add to or alter the trade mark in any
manner not substantially affecting the identity thereof and the Registrar
H may refuse leave or may grant it on such terms and subject to such
limitations as he may think fit.
(2) The Registrar may cause an application under this section to be
advertised in the prescribed manner in any case where it appears to him
that it is expedient to do so, and if within the prescribed time from the
I date of the advertisement any person gives notice to the Registrar in the
prescribed manner of opposition to the application, the Registrar shall,
after hearing the parties if so required, decide the matter.
334 Cu rrent Law Jou rnal [2016] 9 CLJ

(3) A decision of the Registrar under this section is subject to appeal to A

the Court.
(4) Where leave under subsection (1) is granted the trade mark, as altered,
shall be advertised in the prescribed manner unless it has already been
advertised in the form to which it has been altered in an advertisement
under subsection (2). B
[37] Allowing trade marks to be registered creates a revenue for the
Government as well as provides employment to many professionals as well
as others to get trade marks registered in an orderly fashion to avoid
confusion. Sections 20, 25, 35, 44, etc. of the TMA 1976 and s. 45 paves
way for registration in the best acceptable manner. Proper reliance of C
applicants on these sections or directions by court to the Registrar may be
one way to arrest convoluted jurisprudence in this area of law. In the instant
case, regrettably the said sections were not resorted to by the parties before
the Registrar of trade marks, the High Court as well as before us in the right
perspective. (emphasis added). D
Trade Mark and Exclusive Right
[38] The registration of trade mark does not guarantee its validity or
exclusiveness, per se. However, registration gives the owner exclusive right
to the use of the trade mark in relation to those goods or services subject to
E
any conditions etc. in the Register (see s. 35 of the TMA 1976). An aggrieved
person can seek the assistance of the court to rectify the Register to expunge
or vary any entry in the register (see s. 45 of the TMA 1976). (emphasis
added). Section 35 read with s. 45 gives power to the court in lieu of
expunging to vary any entry. However, the relevant parties must apply. It
is a sort of saving provision for competing interest. (emphasis added). F

[39] In McCurry Restaurant (KL) Sdn Bhd v. McDonald’s Corporation [2009]

3 CLJ 540; [2009] 3 MLJ 774 among the issues debated were whether -
(i) the plaintiff had monopoly in use of the prefix ‘Mc’ on signage or in
conduct of its business and (ii) the defendants had sought to obtain unfair
G
advantage from using the prefix ‘Mc’. Gopal Sri Ram JCA (as he then was)
held:
First, you have to look at the plaintiff’s mark or get-up or logo-call it what
you will - as a whole and not merely one element in it. The plaintiff’s
get-up consists of a distinctive golden arched ‘M’ with the words
McDonalds against a red background. The defendants’ signboard carried H
the words ‘Restoran McCurry’ with the lettering in white and grey on a
red background with a picture of a chicken giving a double thumb up and
with the wording ‘Malaysian Chicken Curry’. Thus, the defendant’s
presentation of its business style and get-up which is distinctively different
from that of the plaintiff. Second, as I have already said, the item of food
I
available at the plaintiff’s outlets all carry the prefix ‘Mc’. However, as
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 335

A evident from the defendant’s menu card none of the food items served
carries the prefix Mc. This is an important consideration. Third, it is
beyond dispute that the type of food available at the plaintiff’s outlets is
very different from that served at the defendant’s sole outlet … The
learned trial judge in her judgment appears to have been influence by the
decision of the hearing office in the United Kingdom trademark registry,
B in the matter of application No 1412458 … to register the mark McIndian.
There, the hearing office found for McDonalds on the ground that marks
all employing the prefix ‘Mc’. However, what the learned trial judge in the
present instance appears to have overlooked is the fact that McIndian not
only sold Indian food, but also southern fried chicken, cheeseburger,
french fries and shakes which are very items that McDonalds also sell …
C
In my judgment the irresistible inference to be drawn from the totality of
the evidence is that the defendant’s signboard would not result in
reasonable persons associating McCurry with the plaintiff’s mark.
Infringement
D [40] What amounts to infringement of trade mark is set out in s. 38 and
what acts do not constitute infringement is set out in s. 40 of the TMA 1976.
As a general rule, trade mark will be infringed if a person, in the course of
trade, in relation to the same goods for which the mark is registered, uses
without authority, the same mark or a deceptively similar mark.
E [41] In respect of infringement s. 38 of the TMA 1976 states:
38 Infringement of a trademark
(1) A registered trademark is infringed by a person who, not being the
registered proprietor of the trade mark or registered user of the trade mark
using by way of permitted use, uses a mark which identical with it or so
F nearly resembling it as is likely to cause confusion in the course of trade
in relation to goods or services in respect of which the trade mark likely
to be taken either:
(a) as being use as a trade mark;
(b) in a case in which the use is use upon the goods or in physical
G
relation thereto or in an advertising circular, or other advertisement,
issued to public, as importing a reference to a person having the
right either as registered proprietor or as registered user to use the
trade mark or to goods with which the person is connected in the
course of trade; or
H (c) in a case in which the use is use at or near the place where the
services are available or performed or in an advertising circular or
other advertisement issued to public, as importing a reference to a
person having the right either as registered proprietor or as
registered user to use the trade mark or to goods with which the
person is connected in the course of trade.
I
336 Cu rrent Law Jou rnal [2016] 9 CLJ

[42] What will not amount to infringement is set out in s. 40 which reads A
as follows:
Acts not constituting infringement
40. (1) Notwithstanding anything contained in this Act, the following acts
do not constitute an infringement of a trade mark:
B
(a) the use in good faith by a person of his own name or the name
of his place of business or the name of the place of business of any
of his predecessors in business;
(b) the use in good faith by a person of a description of the character
or quality of his goods or services, and in the case of goods not C
being a description that would be likely to be taken as importing any
reference as is mentioned in paragraph 38(1)(b) or paragraph
56(3)(b);
(c) the use by a person of a trade mark in relation to goods or services
in respect of which he has by himself or his predecessors in business,
D
continuously used the trade mark from a date before:
(i) the use of the registered trade mark by the registered proprietor,
by his predecessors in business or by a registered user of the
trade mark; or
(ii) the registration of the trade mark, E
whichever is the earlier;
(d) in relation to goods connected in the course of trade with the
registered proprietor or a registered user of the trade mark if, as to
those goods or a bulk of which they form part, the registered
proprietor or the registered user in conforming to the permitted use F
has applied the trade mark and has not subsequently removed or
obliterated it or has at any time expressly or impliedly consented to
the use of the trade mark;
(dd) the use by a person of a trade mark in relation to goods or services
to which the registered proprietor or registered user has at any time
G
expressly or impliedly consented to;
(e) the use of the trade mark by a person in relation to goods or services
adapted to form part of, or to be accessory to, other goods or
services in relation to which the trade mark has been used without
infringement of the right given or might for the time being be so
used, if the use of the trade mark is reasonably necessary in order H
to indicate that the goods or services are so adapted and neither the
purpose nor the effect of the use of trade mark is to indicate
otherwise than in accordance with the facts a connection in the
course of trade between any person and the goods or services; and
(f) the use of a trade mark, which is one of two or more registered I
trade marks which are substantially identical, in exercise of the right
to the use of that trade mark given by registration as provided by
this Act.
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 337

A (2) Where a trade mark is registered subject to conditions, amendments,

modifications or limitations, the trade mark is not infringed by the use of
the trade mark in any manner in relation to goods to be sold or otherwise
traded in in a place or in relation to goods to be exported to a market
or in relation to services to be provided in a place or in any other
circumstances to which having regard to those conditions, amendments,
B modifications or limitations the registration does not extend.
[43] In dealing with s. 38, Zulkefli b Ahmad Makinudin J (as he then was)
in Hu Kim Ai & Anor v. Liew Yew Thoong [2004] 5 CLJ 515; [2004] 7 MLJ
590; [2005] 6 AMR 363 held on the facts, inter alia, as follows:
C In using the ‘Five Stars Device’ trademark, the defendant used a
trademark, which was identical in every sense with the plaintiff’s
registered trademark with the exception of the word ‘Blansacar’. The
defendant copied the exact stylised design of the plaintiffs’ trademark, the
arrangement of the five stars and the position of the ‘Five Stars Device’.
The evidence adduced further shows that there was actual confusion
D caused by the defendant’s offending watches as it so nearly resembles the
plaintiffs’ registered trademark and as both watches were also referred by
the same Chinese characters ‘Wu Xing Shang Jiang’, it would be difficult
for buyers who do not understand English to differentiate between the
two watches. It was also not disputed that the plaintiff’s registered
trademark and the defendant’s trademark were both applied to and used
E on watches. On the evidence, the defendant had therefore infringed the
plaintiffs’ registered trademark as the elements for infringement of
trademark laid down in s. 38 of the Act had been fulfilled.
(See Yomeishu Seizo Co Ltd & Ors v. Sinma Medical Products (M) Sdn Bhd [1996]
2 BLJ 142; [1996] 2 MLJ 334; [1996] 3 AMR 3058; Aristoc Ltd v. Rysta Ltd
F & Anor (1945) 62 RPC 65).
General Defences
[44] The learned author P Narayanan 2009 summarises the general
defences in trade mark cases as follows: (i) The plaintiff has no title to sue;
G (ii) Registration of the mark is not valid and is liable to be expunged;
(iii) The use of the mark complained of is not an infringement of the
registered trade mark; (iv) In the case of part B registration, the issue
complained is not likely to deceive or cause confusion; (v) The defendant has
a statutory right to use the mark by virtue of concurrent registration; (vi) The
H
defendant’s use is prior to the registration and use of the plaintiff; (vii) The
defendant has a right to use by virtue of honest concurrent use; (viii) The
defendant is using the mark bona fide for descriptive purposes or he is bona
fide using his own name or that of his place of business, or the name or the
name of the place of business of his predecessors in business. This does not
apply to use of the name as a trade mark; (ix) The plaintiff’s mark has become
I
the common name of the goods or has become common to the trade; and
(x) The plaintiff is debarred from suing or claiming the reliefs sought by his
338 Cu rrent Law Jou rnal [2016] 9 CLJ

own conduct, for example, the plaintiff’s trade is fraudulent, or his trade A
mark is deceptive, or he is guilty of estoppels, acquiescence, laches or
abandonment of the mark. (emphasis added). (See Keep Good Feel Corp Sdn
Bhd & Anor v. Pharma World (M) Sdn Bhd & Ors [2009] 1 LNS 843; [2010]
1 MLJ 242)
B
Section 45 of TMA 1976
[45] Section 45 of the TMA 1976 application relates to a rectification and
variation of the Register. That application can only be made by an aggrieved
person. Section 45 of the TMA 1976 reads as follows:
Section 45. Rectification of the Register C

(1) Subject to the provisions of this Act:

(a) the Court may on the application in the prescribed manner of any
person aggrieved by the non-insertion in or omission from the
Register of any entry or by any entry made in the Register without
sufficient cause or by any entry wrongfully remaining in the D
Register, or by any error or defect in any entry in the Register, make
such order for making, expunging or varying such entry as if thinks
fit;
(b) the Court may in any proceeding under this section decide any
question that may be necessary or expedient to decide in connection E
with the rectification of the Register;
(c) in case of fraud in the registration, assignment or transmission of
a registered trade mark or if in his opinion it is in the public interest
to do so, the Registrar may himself apply to the Court under this
section; F
(d) an order of the Court rectifying the Register shall direct that notice
of the rectification be served on the Registrar in the prescribed
manner and the Registrar shall upon receipt of the notice rectify the
Register accordingly.
[46] Section 45 relief, is a discretionary relief and cannot be claimed as of G
right when plausible defences as summarised by the learned author
P Narayanan which are within the spirit and intent of s. 40 of the TMA 1976
can be established by the defendant. Case laws which have not made out the
distinction must be read with caution. Delay in making a s. 45 application
without explaining the delay may be fatal when the applicant’s primary aim H
is alleged to protect his interest, ie, to say he is an aggrieved person. It all
depends on the facts and special circumstances of the case and when the
competing interest emerged. The court is also vested with powers on
appropriate applications of parties to ‘vary’ the trade mark as it thinks fit.
This provision is meant to be a ‘win win’ situation for genuine traders to
I
eliminate confusion. (emphasis added).
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 339

A [47] There are a number of cases which attempts to demonstrate who may
fall into the category of aggrieved persons. It also depends on the facts and
circumstances of the case. For example, in Prestige Housewares (India) Ltd
v. Prestige [2000] PTC 513 (Mad), the Indian Court has held that mere
intention to use the same mark will not qualify a person as being aggrieved
B for the purpose of rectification. The courts in Malaysia have held that to be
an aggrieved person, the applicant must have used his mark as a trade mark
or has a ‘genuine and present intention’ to use the mark as a trade mark in
the course of a trade, or one who has a legal interest or is being substantially
affected by the presence of the registered trade mark. The judgment of the
C
Federal Court by Zaharah JCA (as Her Ladyship then was) in the case of
Liwayway Marketing Corporation v. Oishi Group Public Company Limited [2016]
1 LNS 400 is instructive. (See McLaren International Limited v. Lim Yat Meen
[2009] 4 CLJ 749; Lam Soon Edible Sdn Bhd v. Hup Seng Perusahaan Makanan
(M) Sdn Bhd [2010] 5 CLJ 975; LB (Lian Bee) Confectionery Sdn Bhd v. QAF
Ltd [2012] 2 MLRA 211; Oishi Group Public Company Limited v. Liwayway
D
Marketing Corporation [2015] 2 CLJ 1121; [2015] 2 MLRH 132).
[48] The courts in India had made a distinction in relation to a trader in
India and one outside India. And the Indian courts have held that if the
applicants do not trade with India in respect of the goods concerned, they
E
may not be considered as persons aggrieved. (See Wells Fargo Trade Mark
[1977] RPC 94 503). Learned author P Narayanan captures the point as
follows:
The question whether the parties are trade rivals must be judged in the
context of the business carried on in India by the applicants compared
with the trade of manufacturing or dealing in the goods covered by the
F
registration sought to be rectified. Thus, if the applicants do not trade
with India in respect of the goods concerned they may not be considered
as persons aggrieved. (emphasis added).
Sections 14 And 19 Of TMA 1976
G [49] If the applicant establishes that he is an aggrieved person, then the
court must look at the merits of the application. In the instant case, ss. 14
and 19 which deal with prohibition of registration will be applicable. Section
14 is wider in application, in contrast to s. 19. Section 14 of the TMA 1976
reads as follows:
H Section 14. Prohibition on registration
(1) A mark or part of a mark shall not be registered as a trade mark-
(a) if the use of which is likely to deceive or cause confusion to the
public or would be contrary to law;
I (b) if it contains or comprises any scandalous or offensive matter or
would otherwise not be entitled to protection by any court of law;
340 Cu rrent Law Jou rnal [2016] 9 CLJ

(c) if it contains a matter which in the opinion of the Registrar is or A

might be prejudicial to the interest or security of the nation;
(d) if it is identical with or so nearly resembles a mark which is well
known in Malaysia for the same goods or services of another
proprietor;
(e) if it is well known and registered in Malaysia for goods or services B
not the same as to those in respect of which registration is applied
for:
Provided that the use of the mark in relation to those goods
or services would indicate a connection between those goods
or services and the proprietor of the well known mark, and the C
interests of the proprietor of the well known mark are likely to
be damaged by such use;
(f) if it contains or consists of a geographical indication with respect to
goods not originating in the territory indicated, if use of the
indication in the mark for such goods in Malaysia is of such a nature D
as to mislead the public as to the true place of origin of the goods;
or
(g) if it is a mark for wines which contains or consists of a geographical
indication identifying wines, or is a mark for spirits which contains
or consists of a geographical indication identifying spirits, not
E
originating in the place indicated by the geographical indication in
question.
(2) Article 6bis of the Paris Convention and Article 16 of the TRIPS
Agreement shall apply for the purpose of determining whether a trade
mark is a well known trade mark.
F
Section 19 of the TMA 1976 reads as follows:
Section 19. Identical trade marks
(1) No trade mark shall be registered in respect of any goods or description
of goods:
G
(a) that is identical with a trade mark belonging to a different proprietor
and entered in the Register in respect of the same goods or
description of goods or in respect of services that are closely related
to those goods; or
(b) that so nearly resembles such a trade mark as is likely to deceive or
cause confusion. H

(2) No trade mark shall be registered in respect of any services or

description of services:
(a) that is identical with a trade mark belonging to a different proprietor
and entered in the Register in respect of the same services or
I
description of services or in respect of goods that are closely related
to those services; or
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 341

A (b) that so nearly resembles such a trade mark as is likely to deceive or

cause confusion.
(3) Where separate applications are made by different persons to be
registered as proprietors respectively of trade marks which are identical or
so nearly resembling each other as are likely to deceive or cause confusion
B and:
(a) such applications are in respect of the same goods or description of
goods; or
(b) at least one of such applications is in respect of goods and the other
or others is or are in respect of services closely related to those
C goods, the Registrar may refuse to register any of them until their
rights have been determined by the Court or have been settled by
agreement in a manner approved by him or by the Court.
(4) Where separate applications are made by different persons to be
registered as proprietors respectively of trade marks which are identical or
D so nearly resembling each other as are likely to deceive or cause confusion
and:
(a) such applications are in respect of the same services or description
of services; or
(b) at least one of such applications is in respect of services and the
E other or others is or are in respect of goods closely related to those
services, the Registrar may refuse to register any of them until their
rights have been determined by the Court or have been settled by
agreement in a manner approved by him or by the Court.
[50] In dealing with s. 14(1)(a), the Federal Court in Yong Teng Hing
F b/s Hong Kong Trading Co & Anor v. Walton International Ltd [2012] 6 CLJ
337, inter alia, held as follows:
[25] The objective and purpose of s. 14(1)(a) of the Act is to protect the
public and consumers from instances of confusion or deception as a result
of the use of two similar marks. Thus, under s. 14(1)(a) of the Act, a mark
G shall be refused registration if use thereof is likely to deceive or cause confusion to the
public notwithstanding that it is the result of use of an earlier identical or similar
mark, whether registered or not in Malaysia and which is being used in relation to
good or services which may be different from that sought to be registered. (emphasis
added).
[51] If the applicant is relying on s. 14(1)(a), it is not sufficient to establish
H
similarity of marks itself. The similarity must result in a likelihood of
confusion or deception. (See Yong Teng Hing Hong Kong Trading Co & Anor
v. Walton International Ltd [2012] 6 CLJ 337; Tohtonku Sdn Bhd v. Superace
(M) Sdn Bhd [1992] 2 CLJ 1153; [1992] 1 CLJ (Rep) 344; [1992] 2 MLJ 63;
In the Matter of An Application by the Pianotist Company Ltd for the Registration
I of A Trade Mark [1906] 23 RPC 774].
342 Cu rrent Law Jou rnal [2016] 9 CLJ

Pianotist Test A

[52] ‘Pianotist test’ whether applied for purpose of ss. 14 or 19 is one of

common sense with much objectivity as well as flexibility anchoring on the
type of customers and/or consumers as well. That is to say, customers
objectively will not succumb to imitation products and/or its like when they
B
are well informed and/or literacy level is high. In Keep Good Feel Corp Sdn
Bhd & Anor v. Pharma World (M) Sdn Bhd & Ors [2009] 1 LNS 843; [2010]
1 MLJ 242, Hamid Sultan JC (as he then was) anchored this proposition and
held on the facts of the case:
2. The increased literacy level of the Chinese community in Malaysia at
C
the age group of purchasing gynaecological products such as those offered
by the plaintiffs and defendants, was sufficient for them to identify and
distinguish the plaintiffs’ and defendants’ product. As such there was no
basis for the plaintiffs’ complaint of passing off or cause of action for
malicious falsehood and slander of goods or infringement of trade mark
by relying on old common law cases on passing off to initiate proceedings. D
[53] On similar issues as in the instant case, the Court of Appeal in a
lengthy judgment, in the Singapore case of Staywell dealt with issues such as
strikingly similar, confusion and foreign business seeking to establish
goodwill in Singapore. The contest was between an Australian Company
(Staywell) and an American related company (Sheraton and Starwood). The E
Australian Company applied to register their trade marks ‘PARK REGIS’
which was widely used in Australia and New Zealand for hotel business but
not in Singapore. The American Company using the trade marks ‘ST.
REGIS’ was operating hotel business in many countries including Singapore.
PARK REGIS trade marks were opposed by the American Company. The F
Registrar of trade marks took the view that the competing marks and services
were similar and ruled that there was likelihood of confusion and refused
registration. On appeal to the High Court, the court agreed that the competing
marks sounded alike and conceptually may be similar, ruled that these marks
will not cause confusion. The court went to differentiate the services of the
G
parties and took note that Staywell was operating a 4 star business hotels and
Starwood Group was operating a 6 star luxury hotels. On appeal to the Court
of Appeal, the court ruled that there was sufficient likelihood of confusion
by reason of the similarity of the competing marks and the relevant services
and sustained the opposition. The lengthy case had been admirably
summarised in the ‘Legal Bulletin’, May 2014 (Allen & Gledhill by H
Dr Stanley Lai SC; Vignesh Vaerhn) which we partly reproduced as follows:
Decision below
The Principal Assistant Registrar (the “PAR”) allowed part of the
opposition, finding that the competing marks and the parties’ services
I
were similar, and that such similarity resulted in a likelihood that the
public would be confused into thinking that the Park Regis Singapore was
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 343

A economically linked to the ST. REGIS Singapore. The PAR also found
that the ST. REGIS mark was not “well known to the public at large in
Singapore” and that the opponents were unable to show that goodwill
attached to the ST. REGIS Singapore at the date of the application. The
High Court disagreed that there would be a likelihood of confusion
resulting from the similarity of the competing marks and the similarity of
B the parties’ services and as a result, the applicant mark was allowed to
proceed to registration. The opponents appealed. Staywell also appealed
against the decision of the High Court judge (the “judge”) on aural and
conceptual similarity between the competing marks.
Issues before the Court of Appeal
C
The Court of Appeal identified the issues before it as whether the judge
had erred in finding that the competing marks were aurally and
conceptually similar, whether a likelihood of confusion arose from the
similarity between the competing marks and the parties’ services
(“similarity and confusion grounds”), whether the use of the applicant
D mark in relation to hotel services was likely to damage the opponents’
interest, and whether there was goodwill in the ST. REGIS Singapore as
at the date of the application (“interest and goodwill grounds”).
Aurel and conceptual similarity
The Court of Appeal agreed with the step-by-step approach as applied in
E The Polo/Lauren Co, LP v Shop in Department Store Pte Ltd [2006]
2 SLR(R) 690. Under the step-by-step approach, the three requirements
of similarity of marks, similarity of goods or services, and likelihood of
confusion arising from the two similarities, are assessed systematically.
The court here noted that the first two elements are assessed individually
and the final element is assessed “in the round”.
F
The court noted that in relation to assessing marks as a whole, case law
both in Singapore and elsewhere has stated that the “visual, aural or
conceptual similarity of the marks in question, must be based on the
overall impression given by the marks, bearing in mind, in particular, their
distinctive and dominant components”.
G Staywell argued that the judge had erred in considering the dominance
of “REGIS” because the opponents had never used or registered the
component “REGIS” alone. The Court of Appeal disagreed, stating that
a component can be dominant even if it is part of the mark as whole and
is not and has never been used on its own. The Court of Appeal agreed
with the judge’s finding that the marks had aural similarity, finding that
H
there was a high degree of such similarity because of the distinctiveness
of the common “REGIS” component and that it stood out in the
recollection of the consumer.
Unlike the aural analysis, which involves the utterance of the syllables
without exploring the composite meaning embodied by the words, the
I conceptual analysis seeks to uncover the ideas that lie behind and inform
the understanding of the mark as a whole. The court found that
“REGIS”, with its connotation of royalty, was not a dominant component
344 Cu rrent Law Jou rnal [2016] 9 CLJ

on a conceptual analysis but that there was a conceptual similarity A

between the marks based on the evocation of geographical places or
locations. The prefix “ST” has a saintly connotation but in Singapore is
most commonly seen in names of places (roads, schools, condominiums)
and the term “Park” as used in the applicant mark can also refer to
geographical locations.
B
The Court of Appeal therefore held that the marks had a fair degree of
conceptual similarity.
The Court of Appeal disagreed with the judge’s finding that the difference
in hotel star rating between the parties was significant. Staywell’s hotels
are generally rated four-star whereas the opponents’ hotels are six-star.
C
The court found that this difference did not change the fact that they
offer similar goods and services.
Likelihood of confusion
The Court of Appeal noted that the parties were offering products which
were not qualitatively different. This, together with the findings of aural D
and conceptual similarity, led the court to conclude that it was not
unlikely for the public to be induced by the similarity of the marks and
the common industry in which they are used into believing that there is
at least some economic link between the ST. REGIS Singapore and the
Park Regis Singapore. This was especially so as it is common for large
hotel chains to operate differently branded hotels carrying different logos, E
united only by the use of a common denominator in their names, such
as “Regis”.
The court found that there was a sufficient likelihood of confusion due
to the above.
The court also took the opportunity to confirm that the doctrine of “initial F
interest confusion” is not part of Singapore law. This doctrine refers to
confusion which arises initially but which would have been dispelled by
the time of the purchase - such confusion may or may not lead to the
consumer purchasing the good. The court held that this is not currently
part of Singapore law and nor should it be as it would be inconsistent with
Singapore’s statutory scheme and objectives. G

Interest and goodwill grounds

Damage to opponents’ interest
The opponents argued that there was likelihood of damage to their
interests as it would limit or preclude their ability to expand into the four- H
star hotel market in Singapore. The High Court judge had agreed with
Staywell, finding that there was no basis for finding that the opponents’
as yet non-existent expansion plans were likely to be prejudiced. The
Court of Appeal disagreed, noting that where the field in which the
defendant or applicant operates is in close proximity to, or is a natural
extension of, the incumbent’s business, damage in the form of a I
restriction of business expansion opportunities will more readily be
inferred.
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 345

A Goodwill and passing off

The High Court judge refused the opposition on the basis of passing off.
A mark may be refused registration because its use would result in liability
for the tort of passing off. To demonstrate passing off, goodwill,
misrepresentation and damage must be proven. In Singapore, it has been
B well-established that such goodwill must exist in Singapore as at the date
of the application for the registration of the later mark.
In this case, Staywell had filed its application for registration of the
applicant mark one month prior to the opponents’ ST. REGIS hotel
opening in Singapore. A month after the opponents’ hotel had opened,
the application was accepted and published for opposition purposes.
C
Staywell’s hotel, the Park Regis Singapore, only opened for business two
and a half years after the application filing.
The opponents argued that the activity conducted prior to the official
opening of the ST. REGIS Singapore constituted relevant pre-trading
activity whereas Staywell contended that they were “mere preparations to
D trade”. The Court of Appeal disagreed with Staywell, noting that pre-
trading activity need not be revenue-generating and this is consistent with
goodwill which is not focused on the income of the trader per se but the
response of the consumer. The pre-trading business or pre-business
activities should unequivocally evince the intention of the trader to enter
into the Singapore market. To show goodwill, the pre-business activities
E should also generate an attractive force that will bring in custom when the
business eventually materialises.
The Court of Appeal found that the opponents’ securing of restaurant
tenants and hiring of employees did not constitute relevant pre-trading
activities because such activities did not inform and attract the public to
F consume the opponents’ hotel and dining services. The opponents’
advertisements promoting the ST. REGIS brand in general and the
opening of the ST. REGIS hotel in particular were also found, on their
facts, to be insufficient to generate an attractive force that would bring in
custom in Singapore at the date of the application.

G The opponents also argued that there was goodwill in the ST. REGIS
hotel in Singapore prior to its launch by virtue of the international
reputation of the ST. REGIS brand, coupled with the presence of
Singapore customers who had used ST. REGIS hotels abroad. The Court
of Appeal considered the position in a variety of jurisdictions, noting that
for instance in the United Kingdom a foreign trader can claim goodwill
H only when he has customers in the country and bookings for its services
made within the country. The opponents were unable to prove that the
room bookings for the ST. REGIS hotels abroad had originated in
Singapore thus generating goodwill in the opponents’ mark in Singapore.
Judgment
I The Court of Appeal, whilst not accepting that the tort of passing off had
been committed, allowed the opponents’ appeal on the basis of similarity
of the marks and the goods and services provided, all of which were likely
to cause confusion.
346 Cu rrent Law Jou rnal [2016] 9 CLJ

[54] The instant case has many issues which were similar to Staywell case A
save that the Singapore decision was related to an opposition proceeding and
the present appeal relates to a s. 45 proceeding, where the court is given wide
discretion to allow or permit competing interest to continue to co-exist if
necessary by directing variations, etc. What is an important consideration
under s. 45 is for the court to make a just decision taking a holistic approach B
with full appreciation of ss. 20, 25, 35, 44, etc. of the TMA 1976. As said
earlier, the scheme of TMA is not to give monopoly to trader but in respect
of competing interest not to dilute the registered trade marks of the first user
and/or his goodwill (genuine trader not tortfeasor) and where permissible
under the Act to sustain registration of competing interest by varying such C
entry as the court thinks fit. Sections 20, 25, 35, 44 and 45 advocates an
inclusive approach but the discretion must be exercised judicially and where
variation is ordered by the High Court, proper direction may also need to
be given to the parties as well as the Registrar of trade marks to comply with
procedural steps in relation to the varied mark to be advertised, etc. to ensure
D
that third parties’ right are not affected by the said variation.
[55] In Auvi Pte Ltd v. Seah Siew Tee And Another [1991] 2 SLR(R) 786, a
copyright holder of AUVI logo had applied to expunge the respondents’
AUVI mark which had been registered. Once the applicant became aware of
the registration, they promptly applied to expunge the trade mark. The E
respondents’ counsel submitted that the court was not obliged to expunge the
mark and it had the power to make such variation to the registered mark as
it deemed fit and urged the court to exercise its discretion and vary the mark
to consist simply of the four letter “AUVI”, ie, a work mark. On the facts,
it was established that the respondents were infringers, ie, tortfeasors and not
F
a genuine trader as the credibility of the respondents conduct was seen in the
negative. The court refused to entertain a variation request. Chao Hick Tin
J (as His Lordship then was) had this to say:
70. To vary a mark from a device mark to a word mark would involve a
change which substantially affects the identity of the mark. The
G
appearance would clearly be different. It would amount to allowing a new
mark to be entered on the register without giving third parties a chance
to oppose. 1 am not prepared to let the respondents have the exclusive
right to use the four letters, AUVI, without requiring them to go through
the normal process. In any event, in the light of what I have said above,
the respondents have not even made out a case for the court to exercise
H
its discretion in their favour.
[56] In our view, the ‘customer’ or ‘consumer’ approach can be the most
decisive factor to decide on issues related to deception or confusion, in
considering the provision of s. 14 and/or 19 of the TMA 1976. TMA 1976
in essence, is not an Act intended to give monopoly for a particular trader. I
Section 14 and/or 19, etc. is aimed at arresting deception or confusion
among the public to the advantage of a tortfeasor (and/or even a genuine
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 347

A trader from overseas) attempting to legitimise his trade mark to the

disadvantage of another lawful user already in place. As said earlier, our
ss. 20, 25, 35, 44 and 45 may allow two competing traders to register or
sustain its registered trade mark with suitable variations to eliminate
confusion. It can be safely said that the policy of the Malaysian Trade Marks
B Act is to accommodate registration albeit where necessary with modification
or variation of the competing trade marks strictly within the parameters of
the Act. In dealing with s. 57 of the Indian Trade Marks Act, which is similar
to our s. 45, P Narayanan observes:
The phrase “the tribunal may make such order as it may think fit” in
C s. 57 clearly shows that the exercise of the jurisdiction under the section
is discretionary. This jurisdiction arises only after establishing the
following facts required under the section:
(1) that the applicant is a person aggrieved; and
(2) that the registered proprietor has contravened or failed to observe
D a condition entered on the register; or
(3) that the entry was made without sufficient cause; or
(4) that the entry wrongly remains on the register; or
(5) that there is an error or defect in the entry.
E
When facts (1) and (2) are established, the tribunal may make such order
as it may think fit for cancelling or varying the registration of the trade
mark. When facts (1) and any of the facts (3), (4) or (5) are established
the tribunal may make such order for making, expunging or varying the
entry as it may think fit. In either case the tribunal has a discretion to
F
rectify or not to rectify.
[57] We have read the appeal record and the detailed submission of learned
counsel. After much consideration to the submission of the respondent, we
take the view that the appeal must be allowed. Our reasons, inter alia, are as
follows:
G (a) In the instant case, the Saudi Company has not satisfied the threshold
requirement of an aggrieved person. Who is an aggrieved person is a
question fact. In the instant case, the respondent is a Saudi Company
who had never operated any business in relation to the trade marks in
issue in Malaysia.
H
(b) Taking a common sense approach, there could not be a confusion of the
Saudi Company goods or services in Malaysia, etc. for any reasonable
tribunal probably appraised with the facts of the case as well as the
wealth of jurisprudence in this area of law which we have partly set out
earlier to come to a conclusion that ‘he is an aggrieved person’, entitled
I to the relief. It must be stated here, to qualify as an aggrieved person to
348 Cu rrent Law Jou rnal [2016] 9 CLJ

have locus to file the action requires only a low threshold for the A
applicant to demonstrate. However, to obtain the reliefs, the threshold
is high within the spirit and intent of TMA 1976 and case laws. This
distinction must be kept in mind.
(c) There is merit in the Egyptian Company’s assertion based on the fact
B
that it was trading using its trade marks in Malaysia for considerable
time as opposed to the Saudi Company to say that it has acquired
distinctive goodwill and reputation in its mark in Malaysia. We do not
think the issue of confusion will at all arise in relation to Malaysian
public when the Saudi Company was not trading in Malaysia. In
consequence, it is unnecessary to decide on this issue, save to say if the C
Saudi Company is allowed to trade as per the trade marks confusion will
arise to the detriment of the Egyptian Company as the Saudi Company’s
trade marks will be caught by three concepts which we had stated
earlier, to conclude a case for ‘confusion’.
D
(d) In addition, the affidavit in reply of the Egyptian Company raises a
number of defences which will deny the Saudi Company’s application.
These defences have been set out earlier, citing the learned author
P Narayanan. The facts here are obvious and we do not think it is
necessary to set out the relevant defences that the Egyptian Company
had established. The issues such as goodwill or passing off, will be E
irrelevant to the facts of this case taking into consideration that the Saudi
Company was not trading in Malaysia. If anyone has acquired goodwill
and reputation in Malaysia, it is more likely to be the Egyptian
Company. The issue of bad faith was also not made out in this case.
F
(e) Further, the Saudi Company, notwithstanding the fact that they have
registered their trade marks as early as 1987, they have failed to take any
action promptly against the appellant, thereby the concept such as
‘guilty of estoppels, acquiescence, laches or abandon of the mark’ as
advocated by learned author P Narayanan above will kick in. In
consequence, the trial court ought to have dismissed the Saudi G
Company’s application under s. 45 of the TMA 1976 at limine or should
have upon the application of the relevant party entertained an
application to vary to avoid confusion, if it is just to do so.
En Passant
H
[58] Variation in cases related to genuine traders (not tortfeasors) may have
been a just option in this case but parties have not resorted to it. For example,
adding a prefix (as underlined) Saudi ALBAIK or Egyptian AL BAIK may
have resolved the issue of confusion and allowed both parties to trade with
the variation and with direction for appropriate registration procedure
I
through the Trade Mark Registry. The approach is one related to common
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 349

A sense but was not resorted to, despite the fact that the Act paves way for such
variation, etc. (See AUVI case). The fact that one mark is expunged is also
a loss of revenue for the Government.
[59] For reasons stated above, we will allow the appellant’s (Egyptian
Company) appeal in suit No. 401 with costs of RM10,000 subject to
B
allocatur. The order of the High Court is to be set aside. Deposit is to be
refunded. We hereby order so.
Appeal No. ‘1653’
[60] This appeal is related to the facts of the above case. In appeal
C No. ‘401’, it is not in dispute that the Saudi Company did not use its trade
marks in Malaysia to operate its business. As a result of non-use the Egyptian
Company had filed the application under s. 46 of the TMA 1976 to remove
the Saudi Company’s trade marks and was allowed by the learned trial judge.
[61] It must be said here that when there is an application under ss. 45 and
D 46 between two competing claim in respect of identical trade marks, it will
be prudent exercise of court’s discretion to hear s. 46 application first. In the
event where s. 46 application is allowed, then the s. 45 application may
become academic. In this case, we have a situation that the decision of the
High Court by allowing a s. 45 application by the Saudi Company and a
E s. 46 application by the Egyptian Company had led to, both the Saudi and
the Egyptian companies’ trade marks being not protected under the Trade
Marks Act 1976.
[62] The Egyptian Company had made the application pursuant to
s. 46(1)(a) and/or (b) of the TMA 1976 on the grounds of non-use of
F “ALBAIK” trade mark. The orders sought were for the Saudi Company’s
trade marks to be removed and/or cancelled from the Trade Marks Registry,
namely:
(a) Trade Mark Registration No. 97017036 for “Chicken device” in
Class 29 filed on 25 November 1997;
G
(b) Trade Mark Registration No. 97020468 for “Chicken device” in
Class 43 filed on 1 December 1997;
(c) Trade Mark Registration No. 97020470 for “ELBAIK device” in
Class 43 filed on 1 December 1997;
H
(d) Trade Mark Registration No. 08005624 for “ELBAIK device” in
Class 30 filed on 24 March 2008;
(e) Trade Mark Registration No. 08005628 for “ALBAIK and Chicken
device” in Class 43 filed on 24 March 2008;
I
(f) Trade Mark Registration No. 08005626 for “Chicken device” in
Class 30 filed on 24 March 2008;
350 Cu rrent Law Jou rnal [2016] 9 CLJ

(g) Trade Mark Registration No. 08005629 for “ALBAIK and Chicken A
device” in Class 43 filed on 24 March 2008; and
(h) Trade Mark Registration No. 08005631 for “ALBAIK stylized device”
in Class 16 filed on 10 October 2013.
The learned trial judge allowed the Egyptian Company’s application and B
hence this appeal.
[63] The memorandum of appeal of the Saudi Company reads as follows:
1. The Learned High Court Judge erred in law and fact by granting the
order in paragraph 1 of the High Court Order dated 7/9/2015 even
though the Respondent did not apply and did not plead for the said order C
in the original Originating Summons dated 8/12/2015 (Bahasa Malaysia
formal version) and in so doing the Learned High Court Judge has made
a decision on a matter not pleaded.
2. The Learned High Court Judge erred in law and fact by holding that
the Respondent is an aggrieved person under Section 46(1) of the Trade D
Marks Act 1976 and in so doing the High Court failed to appreciate that
the Respondent is not an aggrieved person and/or has no legal rights as
an aggrieved person and/or is not the legal aggrieved person by virtue of
the in bonam partem and ex turpi causa non oritur actio principles.
3. The Learned High Court Judge erred in law and fact by deciding that E
the Respondent is an aggrieved person under Section 46(1) of the Trade
Marks Act 1976 and in so doing failed to appreciate that (i) the
Respondent uses a trademark which is identical to or so nearly resembling
the Appellant’s earlier registered trade marks as is likely to deceive or
cause confusion and this matter was affirmed by the decision of the High
Court itself in Suit No. 24IP-17-04/2014, (ii) the Respondent uses the F
Respondent’s trade marks in question through a franchise system where
the said franchise, the Respondent’s franchisees and the Respondent
itself as the franchisor are not registered under the Franchise Act 1998
and therefore the Respondent and its franchisees has committed criminal
offences under the Franchise Act 1998 and the Respondent’s said use of
the Respondent’s said trade marks are illegal, and (iii) the Respondent has G
no locus standi, is not entitled to gain any benefit from its said illegal use
and the Respondent cannot therefore be a person aggrieved under
Section 46(1) of the Trade Marks Act 1976.
4. The Learned High Court Judge erred in law and fact by holding that
the Respondent’s trade marks no. 05013291 and 05013292 which were H
expunged in Suit No. 24IP-17-04/2014 on the 5/2/2015 by the same High
Court are Certification Trademarks under Section 56(3) of the Trade
Marks Act 1976 where the said Section gives the Respondent the
exclusive right to use the Respondent’s said trade marks as a Certification
Trade mark even though the Respondent’s said 2 trade marks are Not
Certification Trade marks under Section 56 of the Trade Marks Act 1976 I
and Section 56(3) of the Trade Marks Act 1976 is not applicable in the
present case.
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 351

A 5. The Learned High Court Judge erred in law and fact by deciding that
the High Court decision dated 5/2/2015 in Suit No. 24IP-17-04/2014
which expunged the trade mark entries No. 05013291 and 05013292 used
by the Respondent and which is identical to or so nearly resembling the
Appellant’s earlier registered trade marks as is likely to deceive or cause
confusion has no effect in the present case because when this action was
B filed in the High Court on the 8/12/2014 (which was later heard on the
4/8/2015) the Respondent has rights as a registered trade mark proprietor
under Section 56(3) of the Trade Marks Act 1976 to use the Respondent’s
said trade marks even though the Expungement Order made by the High
Court in Suit No. 24IP-17-04/2014 on the 5/2/2015 has the effect that the
Respondent’s said registered trade marks nos. 05013291 and 05013292 has
C
not been registered on its application/registration date or as if both the
said trademark registrations has never been registered on its application/
registration date namely on the 9/8/2005.
6. The Learned High Court Judge erred in law and fact by deciding that
there is no use of the Appellant’s said registered trade marks under
D Section 46(l)(a)/(b) of the Trade Marks Act 1976 and in so doing failed
to appreciate that the Appellant (i) has use of the Appellant’s said trade
marks as there are references to the use of a printed or other visual
representation of the mark under Section 3[2](a) of the Trade Marks Act
1976, and/or (ii) has use of the Appellant’s said trade marks as there are
references to the use thereof upon or in physical relation to the goods
E under Section 3(2)(b) of the Trade Marks Act 1976, and/or (in) has use
of the Appellant’s said trade marks in other relation to the goods under
Section 3(2)(b) of the Trade Marks Act 1976, and/or (iv) has use of the
Appellant’s said trade marks in relation to the services namely there are
references to the use of the Appellant’s said trade marks thereof as a
statement or as part of a statement about the availability or performance
F
of services under Section 3(2)(c) of the Trade Marks Act 1976.
7. The Learned High Court Judge erred in law and fact by deciding that
there is no use of the Appellant’s said trade marks under Section 46(l)(a)/(b)
of the Trade Marks Act 1976 and in so doing failed to consider that the
Appellant has use of the Appellant’s said trade marks where Malaysians
G know and/or are aware and conscious that the Appellant’s trade marks
are used in relation to the goods (food and services (restaurant) and
thereby the Appellant’s trade marks preserve the essential function of a
trade mark.
8. The Learned High Court Judge erred in law and fact by deciding
H that there is no use of the Appellant’s concerned trade marks under
Section 46(l)(a)/(b) of the Trade Marks Act 1976 and in so doing failed
to appreciate that the Appellant has use of the Appellant’s said trade
marks in places where Malaysian visits such as for their Hajj pilgrimage
or has visited, and/or even though the Appellant has the relevant
goodwill and reputation in Malaysia and/or amongst Malaysians.
I
9. The Learned High Court Judge erred in law and facts when it decided
that there the use of a trade mark is limited to or requires the use of a
trade mark upon the goods even though Section 3(2) of the Trade Marks
352 Cu rrent Law Jou rnal [2016] 9 CLJ

Act 1976 allows the use of a trade mark to consist of use of a trade mark A
in other relation to the goods such as through advertisement, notice,
document or by any other way or other relation which is not limited to
the physical goods.
10. The Learned High Court Judge erred in law and fact by deciding that
there is no use of the Appellant’s trade marks under Section 46(l)(a)/(b) B
of the Trade Marks Act 1976 and in so doing failed to consider that the
Appellant’s trade marks has been communicated to Malaysians as a trade
mark.
11. The Learned High Court Judge erred in law and fact by deciding that
there is no use of the Appellant’s trade marks under Section 46(l)(a)/(b)
C
of the Trade Marks Act 1976 even though Malaysians know that the
Appellant’s trade marks are trade marks and are trade marks of the
Appellant.
12. The Learned High Court Judge erred in law and facts by deciding that
there is no use of the Appellant’s trade marks under Section 46(1)(a)/(b)
of the Trade Marks Act 1976 and in so doing failed to consider that the D
reason, objective and requirement for use of a trade mark under the Trade
Marks Act 1976 is merely to act as a notice or to give notice to the people
that the trade mark in question is a Trade mark and in the present case
the Appellant has given notice that the Appellant’s trade marks in
question is a trade mark and is the Appellant’s trade marks.
E
13. The Learned High Court Judge erred in law and facts by deciding that
there is no use of the Appellant’s trade marks in question under Section
46(l)(a)/(b) of the Trade Marks Act 1976 even though the Appellant has
advertised or place an advertisement notice in The Star newspaper on the
11/8/2014 (about 4 months before the Respondent filed the action in the
High Court on the 8/12/2014) and even though the High Court itself F
admitted that a use of a trade mark would include use through other
relations such as through documents, invoice or advertisement or
catalogue or circular.
14. The Learned High Court Judge erred in law and facts by deciding
that there is no use of the Appellant’s trade marks in question under G
Section 46(l)(a)/(b) of the Trade Marks Act 1976 even though the
Appellant’s trade marks in question are Well-Known trade marks and as
decided by the High Court in Suit No. 24IP-17-04/2014 and/or as
acknowledged by the Respondent’s own franchisees in Malaysia.
15. The Learned High Court Judge erred in law and on the facts by
H
allowing the revocation of the Appellant’s trade marks in question under
Section 46(1) of the Trade Marks Act 1976 even though the said relief is
a discretionary relief and the circumstances of this case does not warrant
or demand the granting of the said revocation relief under Section 46(1)
of the Trade Marks Act 1976 and the Learned High Court Judge in so
granting the revocation relief has exercised its discretion incorrectly. I
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 353

A 16. The Learned High Court Judge erred in law and facts by deciding that
the Respondent is an aggrieved person and there is no use of the
Appellant’s trade marks in question under Section 46(l)(a)/(b) of the
Trade Marks Act 1976 and in so doing the Learned High Court Judge has
made a wrong appreciation of the evidence, facts and law in the action.

B Jurisprudence Relating To s. 46 Of TMA 1976 Application

[64] Section 45 application relates to expunging, etc. of a registered trade
mark on the basis it was entered without sufficient cause, etc. while s. 46
application is related to removal of a registered trade mark on the grounds
of non-use, etc. Both sections require the applicant to be an aggrieved person.
C The said s. 46 of the TMA 1976 reads as follows:
Section 46. Provisions as to non-use of trade mark
(1) Subject to this section and to section 57, the Court may, on application
by a person aggrieved, order a trade mark to be removed from the Register
in respect of any of the goods or services in respect of which it is registered
D on the ground:
(a) that the trade mark was registered without an intention in good
faith, on the part of the applicant for registration or, if it was
registered under subsection 26(1), on the part of the body corporate
or registered user concerned, to use the trade mark in relation to
E those goods or services and that there has in fact been no use in
good faith of the trade mark in relation to those goods or services
by the registered proprietor or registered user of the trade mark for
the time being up to the date one month before the date of the
application; or

F (b) that up to one month before the date of the application a

continuous period of not less than three years had elapsed during
which the trade mark was a registered trade mark and during which
there was no use in good faith of the trade mark in relation to those
goods or services by the registered proprietor or registered user of
the trade mark for the time being.
G
(2) Except where an applicant has been permitted under section 20 to
register an identical or a nearly resembling trade mark in respect of the
goods or services to which the application relates or the Court is of the
opinion that the applicant can properly be permitted to register the trade
mark, the Court may refuse an application made under subsection (1):
H (a) in relation to any goods, if there has been, before the relevant date
or during the relevant period, as the case may be, use in good faith
of the trade mark by the registered proprietor of the trade mark for
the time being in relation to goods of the same description, being
goods in respect of which the trade mark is registered; and
I (b) in relation to any services, if there has been, before the relevant date
or during the relevant period, as the case may be, use in good faith
of the trade mark by the registered proprietor of the trade mark for
the time being in relation to services of the same description, being
services in respect of which the trade mark is registered.
354 Cu rrent Law Jou rnal [2016] 9 CLJ

(3) Where in relation to goods in respect of which a trade mark is A

registered:
(a) the matter referred to in paragraph (1)(b) are shown as far as regards
failure to use the trade mark in relation to goods to be sold or
otherwise traded in in a particular place in Malaysia (otherwise than
for export from Malaysia) or in relation to goods to be exported to B
a particular market outside Malaysia; and
(b) a person has been permitted under section 20 to register an identical
or nearly resembling trade mark in respect of those goods under a
registration extending to the use in relation to goods to be sold or
otherwise traded in in that place (otherwise than for export from
C
Malaysia) or in relation to goods to be exported to that market, or
the Court is of the opinion that that person might properly be
permitted to register the trade mark,
the Court may, on application by that person, direct that the
registration of the first mentioned trade mark shall be subject to
such conditions, amendments, modifications or limitations as the D
Court thinks proper for securing that that registration shall cease to
extend to use of the trade mark in relation to goods to be sold or
otherwise traded in in that place (otherwise than for export from
Malaysia) or in relation to goods to be exported to that market.
(3A) Where in relation to services in respect of which a trade mark is E
registered:
(a) the matters referred to in paragraph (1)(b) are shown as far as
regards failure to use the trade mark in relation to services provided
in a particular place in Malaysia; and
(b) a person has been permitted under section 20 to register an identical F
or a nearly resembling trade mark in respect of those services under
a registration extending to the use in relation to services provided
in that place, or the Court is of the opinion that that person might
properly be permitted to register the trade mark,
the Court may, on application by that person, direct that the G
registration of the first mentioned trade mark shall be subject to
such conditions, amendments, modifications or limitations as the
Court thinks proper for securing that that registration shall cease to
extend to use of the trade mark in relation to services provided in
that place.
H
(4) An applicant is not entitled to rely for the purpose of paragraph (1)(b)
or for the purpose of subsection (3) or (3A) on any failure to use a trade
mark if failure is shown to have been due to special circumstances in the
trade and not to an intention not to use or to abandon the trade mark
in relation to the goods to which the application relates.
I
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 355

A [65] The removal of the trade mark may be ordered if the registration had
been made without an intention to use or the non-use was for a continuous
period of three years, etc. Section 46 of the TMA 1976 is similar to s. 47
of the Indian Trade Marks Act 1999. P Narayanan at p. 489 of the book says:
Where it is shown that the non-user is due to special circumstances in the
B trade and not to any intention to abandon or not to use the mark,
rectification will not be ordered.
And at p. 495 says:
For removal of a mark on the ground of non-use the following facts must
be first established:
C
(1) that the applicant is a person aggrieved; and
(2) that in relation to the goods or services in question the trade mark was
registered without any bona fide intention to use, by the applicant for
registration or the company referred to in s. 46, or the registered user as
D the case may be, and that there has in fact been no bona fide use of the
mark in relation to those goods or services up to a date three months prior
to the date of application; or
(3) that for a continuous period of at least five years prior to three months
before the date of application and the date on which the trade mark is
actually entered in the register during which the trade mark was on the
E
register, there was no bona fide use of the mark in relation to the goods
or services.
In respect of bona fide intention to use, P Narayanan at pp. 497 and 498 says:
In order to bring the case within the scope of s. 47(l)(a) it must be shown
F that the mark was registered without any bona fide intention on the part
of the applicant for registration to use it by himself or by the company
referred to in the clause or by a proposed registered user. Want of
intention to use may be inferred from non-use. But in applying s. 47(l)(a),
evidence of circumstances other than non-use may be necessary to
establish that there was no intention to use. [See Ramsay’sTM. [1911]
G 28 RPC 497 at 508].
The fact that the trade mark was thought to be something which some
day might be useful would not amount to any definite and present
intention at the time of registration to use that mark. The intention to
use the mark must exist at the date of application for registration and such
H intention must be genuine and bona fide. “Bona fide intention on the part
of the applicant for registration” in s. 47(l)(a) would mean at the date
when such applicant makes his application for registration. [See Dristan
case AIR 1986 SC 137 para 39].
The trade mark “Palm” was registered in respect of prepared meals in class
29. When it was cited against an application for registration of “Palms”
I
as a service mark in class 42 in respect of hotels, restaurants, bars and inns
the applicant for registration moved for rectification of the registered mark
356 Cu rrent Law Jou rnal [2016] 9 CLJ

on the ground of non-use. The registered proprietors were the owners of A

a chain of restaurants in the USA and they had never sold prepared meals
under their mark. On the date of application for registration there was no
provision for registration of service mark in UK. Accordingly the applicant
could not have an intention to use “Palm” as a trade mark which in fact
could not even be considered as a trade mark. Rectification ordered. [Palm
TM. [1992] RPC 258 (TMR)]. B

...
Whether or not a party has bona fide intention to use the trade mark as
registered must be established as a fact on the material placed on the
record. It is not possible to infer it as a matter of law merely from the use
C
of the registered trade mark by the party with an alteration in breach of
the conditions of registration. If a condition of registration is broken it
may be open to the Registrar to remove the mark for this or any other
reason, but not on the ground that the party never had the intention to
use the registered trade mark.
Grounds Of Application By The Egyptian Company D

[66] The grounds relied upon was (i) respondent (Egyptian Company) is an
aggrieved person; (ii) Saudi Company has registered the marks in bad faith;
(iii) Saudi Company did not use ‘ALBAIK’ trade marks which were
registered in Malaysia contrary to s. 46(1)(a) of the TMA 1976; (iv) the mark
E
were not used for continuous period of not less than three years plus one
month in relation to the registered goods or services.
The Saudi Company’s Contention
[67] The argument was anchored as follows: (i) Saudi Company is the
rightful owner of the trade marks in Malaysia; (ii) Egyptian Company is F
wrongfully riding on the appellant’s goodwill and reputation; (iii) the Saudi
Company has used its trade marks in good faith in Malaysia with the relevant
and/or material period; (iv) the Egyptian Company is not an aggrieved
person.
G
[68] There were some preliminary procedural objections taken by the
Saudi Company in respect of the Egyptian Company’s originating summons.
The learned trial judge had dismissed the preliminary objections and heard
the case on merit. In the instant case, we do not wish to dwell with the
preliminary objection as we take the view that the judge was correct in
hearing the merits of the case. H

[69] The learned trial judge had written 22 pages judgment and had set out
the facts in an articulate manner. The brief reasons for the judgment had been
captured in the notes of proceedings as follows:
[1] This is the Plaintiff’s application under section 46 of the TMA 1976 I
to expunge and remove the various trade marks registered in the
Defendant’s name in various classes.
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 357

A [2] To succeed in its application, the Plaintiff must show that it is an

aggrieved party and that there has been non-use of the said marks by the
Defendant for a continuous period of 3 years up to one month before this
application.
[3] Having perused the affidavits of the Plaintiff, I am satisfied that the
B Plaintiff is an aggrieved party as the Plaintiff, at the time of filing this
application, was the registered owner of trade marks bearing similar marks
to that of the Defendant and have been using the trade mark in many
jurisdictions, including Malaysia.
[4] On the issue of non-use, it is not in dispute that the Defendant do
not have physical use of their registered marks during the relevant period
C
of three (3) years, between 8.11.2011 - 8.11.2014.
[5] However, it is the contention of the Defendant that the word use
must be interpreted liberally and that the fact that many Malaysians are
aware of the Defendant’s marks in Saudi Arabia can be considered as use
of the mark.
D
[6] However, I am not prepared to extend the meaning of ‘use’ liberally
and that I of the considered opinion that ‘use’ in the context of the TMA
1976 must be a genuine physical use of the marks in Malaysia.
[7] Therefore, since there is no genuine physical use of the marks in the
relevant period, the application is allowed with costs of RM20,000.00.
E
[70] It is interesting to note that the learned trial judge for appeal No. ‘401’
on Saudi Company’s trade marks took the position that:
[25] Even though there is no evidence of actual use of the Plaintiff’s mark
in Malaysia, from the affidavits before me, I am of the considered opinion
F that the Plaintiff’s marks, which had been registered since 1987 in Saudi
Arabia and in other countries is a well known mark amongst those who
have visited Saudi Arabia and the holy land, Mecca. Pilgrims from
Malaysia would invariably connect the "AL BAIK" trade mark with the
Plaintiff, the owner based in Saudi Arabia.
[26] Therefore, for the First Defendant to register an almost identical
G
trade mark, bearing "AL BAIK" with the smiling chicken device is likely
to cause confusion to the public and this contravenes s. 14(1)(a) of the
TMA 1976.
[71] However, on the same issue of Saudi Company’s trade marks in the
instant case ruled that:
H
[5] However, it is the contention of the Defendant that the word use
must be interpreted liberally and that the fact that many Malaysians are
aware of the Defendant’s marks in Saudi Arabia can be considered as use
of the mark.

I [6] However, I am not prepared to extend the meaning of ‘use’ liberally

and that I of the considered opinion that ‘use’ in the context of the TMA
1976 must be a genuine physical use of the marks in Malaysia. (emphasis
added).
358 Cu rrent Law Jou rnal [2016] 9 CLJ

[72] We have read the appeal records and the able submissions of the A
parties. After giving much consideration to the submission of learned counsel
for the Saudi Company, we take the view that the appeal must be dismissed.
Our reasons, inter alia, are as follows:
(a) In the instant case, the Egyptian Company has registered its trade marks
B
not only in Malaysia but also other countries and is operating businesses
in Malaysia using the trade marks. The same cannot be said in respect
of the Saudi Company. The term ‘aggrieved person’ relates to finding of
facts, to provide locus to maintain the action. The decisions of the courts
do not require a high threshold to establish at the first instance that the
Egyptian Company is an aggrieved person. Being finding of facts on this C
issue, the appellate court will be slow to interfere with the findings of
the trial court on this issue. The Federal Court’s decision of McLaren
International Limited v. Lim Yat Meen [2009] 4 CLJ 749 though relates
to s. 45 will equally apply to s. 46 of the TMA 1976 to satisfy the
threshold requirement relating to an aggrieved person. In essence, the D
applicant is required to prove that he has used his marks as a trade marks
or has a genuine and present intention to use his mark as a trade mark
in the course of a trade which is similar to the trade of the owner of the
registered trade mark. In McLaren, the Federal Court cited with approval
the decision in Re Arnold D Palmer In The Matter Of Trade Mark E
Registration No 63249 [1986] 1 LNS 11; [1987] 2 MLJ 681 where the
Singapore High Court held that in order to qualify as a person aggrieved
in rectification proceedings, a person must have used his mark as a trade
mark or have a genuine and present intention to use his mark as a trade
mark in the course of a trade, which is similar to the trade of the owner
F
of the registered trade mark which he seeks to expunge from the
Register.
(b) Applying the Mclaren’s test, the Egyptian Company is already using its
trade mark and is attempting to remove a similar trade mark which the
learned trial judge had taken cognisance to say that the Egyptian G
Company is indeed an aggrieved person. We take the view that the
approach taken by the learned judge is methodologically and
jurisprudentially correct. The Federal Court in Mesuma Sports Sdn Bhd
v. Majlis Sukan Negara Malaysia, Pendaftar Cap Dagangan Malaysia
(Interested Party) [2015] 9 CLJ 125 held at p. 139:
H
[28] A person aggrieved is a person who has used his mark as a
trade mark or who has a genuine and present intention to use
his mark as a trade mark in the course of a trade which is the
same as or similar to the registered trade mark that the person
wants to be removed from the register. The person must be
someone who has some element of legal interest, right or I
legitimate expectation in its own mark which is being substantially
affected by the presence of the registered mark. The interest or
right must be legal or lawful.
 Al Baik Fast Food Distribution Co SAE v.
[2016] 9 CLJ El Baik Food Systems Co SA & Another Appeal 359

A (c) We also note that the Saudi Company has failed to show that it has used
the marks or has genuine and present intention to use the marks in the
course of trade in Malaysia, taking into consideration that the relevant
marks were registered as early as 1997 as well as 2008. We must also
say, use of trade marks in relation to goods must necessarily mean use
B on or in relation to the goods. (See Godrej Sara Lee Ltd v. Siah Teong Teck
& Anor (No. 2) [2008] 7 CLJ 24). The long delay supports the case for
‘non-user’. (See Imperial Group Plc v. Philip Morris Ltd [1984] RPC 293;
Wooly Bull Enterprises Pte Ltd v. Reynolds [2001] FCA 261).
(d) The Saudi Company’s argument is that the Egyptian Company having
C infringed the intellectual property of the Saudi Company cannot be
classified as an aggrieved person under the principles of construction
relating to ‘in bonam partem’. ‘Bonam partem’ literally means in good
sense and ‘malam partem’ means in a bad sense. The construction in
bonam partem was explained in the case of LB (Lian Bee) Confectionery
D Sdn Bhd v. QAF Ltd [2012] 3 CLJ 661; [2012] 4 MLJ 20, to say that an
infringer of the Act could not be an aggrieved person. The Federal
Court, inter alia, observed:
We are in agreement with the learned judge’s findings that as
an infringer and as to what may be regarded as a “policy”
E ground, the appellant cannot be regarded as a “person
aggrieved” for the purposes of s. 46(1) of the TMA. There is a
juristic support for this “policy” approach by the learned judge
which was upheld by the Court of Appeal. As a matter of
statutory interpretation, the courts have long applied the
principle of construction in bonam partem. On this point a useful
F reference can be made to Bennion on Statutory Interpretation, 5th
edn, Lexis Nexis, 2005 at p. 792 wherein a passage is reproduced
as follows:
Construction in bonam partem. In pursuance of the
principle that law should serve the public interest, the
G courts have evolved the important technique known as
construction in bonam partem (in good faith). If a
statutory benefit is given on a specified condition being
satisfied, it is presumed that Parliament intended the benefit to
operate only where the required act is performed in a lawful
manner. Construction in bonam partem is related to three specific
H legal principles. The first is that a person should not benefit from
his own wrong. Next is the principle allegans suam
turpitudinem non est audiendus. If a person had to prove an
unlawful act in order to claim the statutory benefit this maxim
would preclude him from succeeding. The third related
principle is stated by Coke in the words ubi quid generaliter
I
360 Cu rrent Law Jou rnal [2016] 9 CLJ

conceditur inest haec exceptio si non aliquid sit contra jus fasque A
(where a grant is in general terms there is always an implied
provision that it shall not include anything which is unlawful or
immoral). (emphasis added).
In accordance with the principle of construction in bonam partem,
it is noted that the learned trial judge had found that the B
appellant had been infringing the Registered Trade Mark
“Squiggles” since 2007. The registered Trade Mark “Squiggles”
was registered on 20 August 2004. Until its expungement, the
registered trade mark remains a registered trade mark. In this
case, even before the application for expungement, the appellant
had unlawfully been using the Infringing Mark “Squiggle” which C
is confusingly similar to the Registered Trade Mark. Applying
the principle of construction in bonam partem, the appellant
cannot be regarded as being a bona fide “person aggrieved” or a
person who is lawfully aggrieved for the purposes of s. 46(1) of
the TMA. Furthermore, if the appellant is to be regarded as a
“person aggrieved” for the purposes of s. 46(1) of the TMA, it D
would mean that all infringers may apply to expunge the very
trade mark they have been infringing and this would be contrary
to the time honoured principle of not allowing them to benefit
from their very own wrong or unlawful act.
(e) We do not think on the facts of the case in bonam partem principle will E
apply when the Egyptian Company was using its registered trade marks
in Malaysia in its trading activities and the Saudi Company was not
doing so in Malaysia.
(f) Taking a holistic view of the facts of the case and the fact that the Saudi
Company had not used its trade marks for purpose of trade at all, we F
take the view that the learned trial judge was correct in allowing the
Egyptian Company’s application.
[73] For reasons stated above, we dismiss Saudi Company’s appeal
No. 1653 with costs of RM10,000 subject to allocatur. Deposit is to be
G
refunded.
We hereby order so.