Malaysia IP Case Update : Malaysia High Court Oishi Trademark Expunged Due To Non-Use

According to the COA’s judgment, 3 important issues arose based on the Defendant’s appeal of the High Court decision:
(1) Whether the Plaintiff was an ‘aggrieved person’ as provided under sections 45 and 46 of the Trade Marks Act 1976 (“TMA”);
(2) Whether there was continuous non-use of the Defendant’s trademarks which would warrant the exercise of the Court’s jurisdiction under section 46 of the TMA; and
(3) Whether the registration of the Defendant’s trademarks were conclusive under section 37 of the TMA and therefore cannot be removed under section 46.

On the first issue, the COA held that as long as the Plaintiff has shown a genuine, bona fide intention to use its trademark in the territory, the Plaintiff was considered to be an “aggrieved person” and was therefore qualified to make an application to remove the Defendant’s trademark under sections 45 and 46 of the TMA.

Secondly, the COA held that the Plaintiff had sufficiently proven the Defendant’s non-use of the trademark through an extensive market survey and the Defendant had failed to prove use through its insufficient and unclear commercial invoices. To establish non-use of a trademark, the mark must not have been used for a continuous period of 3 years plus 1 month prior to the date of the Plaintiff’s application to remove the trademark from the Register. Furthermore, the Defendant had temporarily suspended sale of its products sometime within 2009 and was therefore held to have not used the mark continuously during the relevant period between.

Lastly under section 37 of the TMA, the COA accepted the Defendant’s contention that a trademark which had been in the Register for seven years or more was presumed to be valid. However they viewed that the wording of section 37 showed that the presumption of validity was not a defence against an attack for non-use under section 46. Furthermore, the Plaintiff’s application to remove the Defendant’s trademark was not on the basis of the validity of its trademark, but rather of its non-use.

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