FACTS:
Hup Seng, the Plaintiff in this case, is the registered owner of the NATURELL trade mark in Class 30 for bread, biscuit, cakes, pastry, confectionary, tea, cocoa, sugar, rice, sago, flour, preparation made from cereals. It has been using the NATURELL mark since 2005.
Lam Soon filed an application to register the NATUREL trade mark in Class 30 for rice, pasta, noodles, biscuits, confectionary, pastry, breakfast cereals, cereal preparations and beverages etc. (“the Opposed Mark”).
Hup Seng opposed to the registration of the Opposed Mark and the Trade Marks Registrar of the Intellectual Property Corporation of Malaysia dismissed its opposition. Being dissatisfied with the decision of MyIPO, Hup Seng appeals to the High Court of Malaya.
Hup Seng’s opposition against the Opposed Mark is premised on the grounds, amongst others that the registration of the Opposed Mark by Lam Soon contravenes to sections 14 and/or 19 of the Trade Marks Act 1976 (“ 1976 Act”) in that the use of the Opposed Mark would cause confusion or deception amongst the public.
DECISION:
In determining whether there is a real tangible danger of confusion or deception on the usage of both marks, the High Court undertook a two-tier analysis:
(1) Whether there is resemblance in the nature of the competing marks when compared together
(2) If so, whether they could be differentiated via the nature of goods, their uses or trade channels through which they are bought and sold.
With respect to (1) above, the High Court acknowledged that the competing marks i.e. “NATUREL” and “NATURELL” are visually different though not substantially. They are however near identical when phonetically pronounced. With respect of (2) above, the High Court held that the goods applied for by the Opposed Mark and the goods registered under Hup Seng’s NATUREL mark are goods sold and brought ordinarily in groceries and supermarkets where the targeted consumers are likely to be mostly housewives who may include illiterate ones having imperfect visual recollection of the marks. In this connection, the High Court is of the view that the phonetical pronunciation of the mark is critical to associate or distinguish the marks and their corresponding goods. By applying the doctrine of imperfect recollection test, the High Court held that the Opposed Mark would in its use likely to cause confusion or deception to the public. Hup Seng’s appeal is allowed by the High Court and thus the application for registration of the mark “NATUREL” in Class 30 in respect of the aforesaid goods is rejected.
COMMENTS:
It is pertinent to note that in the Registrar’s grounds, it was mentioned that she could not deal with Hup Seng’s arguments that the registration and/or use of the Opposed Mark by Lam Soon would constitute passing-off in common law as she has no jurisdiction because her function is only to decide on registration matters of a trade mark and a passing off action under common law is for the decision of the court.
The High Court Judge disagreed and expressed his opinion that the Registrar has jurisdiction to deal with the issue of common law passing off as this would be within the ambit of contrary to law pursuant to section 14(1)(a) of the 1976 Act. Such view is inconsistent with the earlier High Court case BRG Brilliant Rubber Goods (M) Sdn Bhd v. Leong Choon Loy Trading As Hillway Trading; The Registrar Of Trade Marks, Malaysia (Interested Party) [2016] 1 CLJ 1001 wherein the High Court Judge has expressed her ladyship’s view that the Registrar has no jurisdiction to deal with passing-off issue. The High Court Judge in this case seems to have conferred wide definition on the word “law” appearing in Section 14(1)(a). The High Court Judge’s view is consistent with the meaning assigned to the term “law” in Article 160(2) of the Federal Constitution which reads as below – “”law” includes written law, the common law in so far as it is in operation in the Federation or any part thereof, and any custom or usage having the force of law in the Federation or any part thereof”I
n another High Court case, El Baik Food Systems Co. SA v. Pendaftar Cap Dagangan, Malaysia & Anor [2019] 1 LNS 850, the same High Court Judge held as below – “The phrase “contrary to law” has not been defined in the TMA but it will certainly in my opinion include anything unlawful or in violation of a statute or subsidiary legislation. Examples include the tort of passing off and copyright infringement connected with trade marks.”
Following from the above, it would appear that copyright infringement could also be a ground to challenge an application for registration
