Ooi Siew Bee v Zhu Ge Kong Ming Sdn Bhd (W-02(IPCV)(W)-1598-08/2016)

OOI SIEW BEE (Trading Under The Name And Style Syarikat Perniagaan Eng Leong) [Registration No. As0075469-K]

BM ENG LEONG SDN BHD [Company No.344727-U]

TAN CHOO HIN [Chairman For And On Behalf Of The Association Of Manufacturers And Retailers Of Chinese Prayer Goods In Penang] … APPELLANTS AND ZHU GE KONG MING SDN BHD [Company No.581637-U] … RESPONDENT (In the matter of Kuala Lumpur High Court Civil Suit No. 22IP-2-02/2015) Between

OOI SIEW BEE (Trading Under The Name And Style Syarikat Perniagaan Eng Leong) [Registration No. As0075469-K

BM ENG LEONG SDN BHD [Company No.344727-U] 2

TAN CHOO HIN [Chairman For And On Behalf Of The Association Of Manufacturers And Retailers Of Chinese Prayer Goods In Penang] … PLAINTIFFS And

ZHU GE KONG MING SDN BHD [Company No.581637-U]

REGISTRAR OF TRADE MARKS, MALAYSIA … DEFENDANTS CORAM: BADARIAH BINTI SAHAMID, JCA HANIPAH BINTI FARIKULLAH, JCA KAMALUDIN BIN MD SAID, JCA GROUNDS OF JUDGMENT Introduction

This is an appeal against the judgment of the learned High Court Judge dated 5.8.2016 which had dismissed the plaintiffs’ application under section 45 of the Trade Marks Act 1976 (TMA) to expunge the defendant’s trademarks. Particulars of registration of the subject marks are as follows: 3 No. Trade Mark Registration Number Date of Registration 1 05020770

9.12.2005 2 05020769

9.12.2005 3 06010249

14.6.2006 (Registered Trade Marks)

The plaintiff contended that the defendant’s Registered Trade Marks was registered in contravention of section 14 section 10(1)(c)(d)(e) of the TMA and therefore should be revoked pursuant to section 45(1). In essence, the plaintiff contended that the defendant’s Registered Trade Marks are not invented or coined words but common generic words and common descriptive terms which are “common property” to all Chinese traders and not distinctive nor exclusive to the defendant alone, in the same course of trade or business.

It is the defendant’s case that the above said trade marks, that is, the three Chinese characters “Huan Zhai Jin” [ ] were created by 4 SD 4, is a newly coined word and not available in any Chinese dictionary and as such, is not a common word.

For convenience, we will refer to the appellants as the plaintiffs and the respondent as the defendant.

The plaintiffs are as follows:

The defendant is a Malaysian company with its business in manufacturing, wholesaling and retailing Chinese prayer materials, including praying papers bearing the respondent’s Registered Trade Marks. The defendant is also the current registered proprietor of the 5 defendant’s Registered Trade Marks since 2005 and 2006 and the defendant’s Registered Trade Marks are still valid and subsisting until to date.

The primary question before the trial court was whether the defendant’s Registered Trade Marks was liable to be expunged as a mark wrongfully remaining in the Registrar within section 45(1)(a) of the TMA because of the defendant’s Registered Trade Marks are not registrable under sections 10(1)(c), (d), (e) and 14 of the TMA.

Before the learned Judicial Commissioner, the plaintiffs’ claim that the features/symbols found in the Chinese prayer papers used for burning/ prayer boxes and the Chinese character/ word “Huan Zhai Jin” [ ] which was translated means “repay debts/ gold or money” are not invented or coined words but common generic words and common descriptive terms which are “common property” to all Chinese traders and not distinctive nor exclusive to the defendant alone, in the same course of trade or business.

The plaintiffs claim that the custom or rituals of burning the Chinese prayer papers for repaying debts “Huan Zhai Jin” [ ] were long in existence since the Tang Dynasty and the burning of the Chinese prayer 6 papers is a religious belief and part of the customs and rituals of the Chinese community.

In this case, the three (3) plaintiffs applied to expunge the defendant’s Registered Trade Marks and seek for the following order: i) for an order pursuant to section 45 of the TMA that the Register be rectified by expunging the entry of the mark as an entry wrongly made in the Register; ii) an order pursuant to section 37 of the TMA that the Register be rectified by expunging the entry of the mark as an entry wrongfully remaining in the Register; iii) an order pursuant to section 10(1) of the TMA that the mark be removed from the Register in respect of all the goods in respect of which it was registered.

The plaintiffs also claim that they are persons aggrieved as a result of the defendant’s Registered Trademarks.

The learned High Court Judge dismissed the plaintiffs’ claim in this case based on the following grounds:

(a) The 2nd plaintiff, Chinese Prayer Materials Society, is not an aggrieved person under Section 45 (1)(a) of the TMA;

(b) SD 4 and not the plaintiff was the first user of the trade mark “Huan Zhai Jin” [ ] in 1998; 7

(c) Based on the wording of section 37 of the TMA, as the defendant’s Registered Trade Marks have been registered for more than 7 years, section 37 applies and as such, the plaintiffs cannot expunge a registered trade mark on grounds outside of section 37 of the TMA; and

(d) the plaintiff failed to adduce evidence to prove grounds for expungement under Section 37 (b) and (c) of the TMA.

Before considering the issues that we have to determine, it is necessary to describe in more detail the facts including the trademark infringement proceeding by the defendant in this case against the plaintiff and the decision of this Court (the Previous Proceedings). Previous Proceedings 14. Before us, one of the plaintiffs ground to expunge the defendant’s Trade Mark Registration arises out of the fact that this Court in Civil Appeal No. K-02-2643-11/2012 had made a decision that the Chinese characters “Huan Zhai Jin” [ ] are common descriptive words in the Chinese language and not invented words in Chinese language usage. Prior to the institution of this present suit by the plaintiffs, the defendant had commenced an action at the High Court at Alor Setar (“the High Court Suit”) against the 2nd plaintiff in this instant case for the following relief: 8

(a) an action for trademark infringement of the defendant’s Registered Trade Marks.

(b) an action for passing off of the defendant’s Chinese prayer papers/prayer boxes consisting of the Chinese words “Huan Zhai Jin” and the “get ups”.

At the conclusion of the trial, the High Court dismissed the defendant’s claim on the basis that the Chinese characters “ ” (Huan Zhai Jin) on the prayer papers for burning are common words in the Mandarin language and the plaintiff has no exclusive rights over the words. The defendant appealed to this Court against the decision of the High Court whereby the said appeal was also dismissed.

Subsequently, the defendant filed a motion for leave to the Federal Court. The Federal Court on 03-07-2017 dismissed the defendant’s leave application.

This Court in the Previous Proceedings inter alia was of the view that there were no trademark infringements as the words and/or phrase, “Huan Zhai Jin” [ ] the combination of colours and the usage of Taoist symbolism and imagery used by the defendant was not exclusive to the defendant in the Previous Proceedings (defendant in this case) based on the following reasons: 9

(i) From the series of cross-examination of SP1 and SP7, there were similarities between the plaintiff’s paper box and the defendant’s paper box. However, the similarities were largely due to the fact that they were both in respect of a product originating from the teachings and beliefs of Taoism. The combination of the words was neither unique nor exclusive to the plaintiff as it was clear from the testimony of the plaintiff’s own witness (SP1) that it is a common word/phrase used in relation to the burning of the prayer papers.

It was submitted for the plaintiff that the learned Judicial Commissioner of the High Court had erred in law and fact when he totally rejected the contention of the plaintiffs’ that the Chinese characters “Huan Zhai Jin” [ ] are common descriptive words in the Chinese language and not invented words in Chinese language usage. Thus it was submitted for the plaintiff that the defendant’s trade marks are not registrable according to section 10(1)(c), (d) and (e) and section 14(1)(b) of the TMA.

Further, learned counsel for the plaintiff contended that the decision of the High Court had been affirmed by the Court of Appeal and is final and res judicata applies when the Federal Court refused leave for the 1st respondent to appeal to the Federal Court against the Court of Appeal’s decision in particular the findings that the three Chinese characters “ ” (Huan Zhai Jin) are common descriptive words.

In response, learned counsel for the defendant in gist submitted as follows:

(i) The 3rd plaintiff as an Association of Manufacturers and Retailers of Chinese Prayer Materials being a registered society “are not aggrieved” by the defendant’s Registered Trade Marks and do not have the “locus standi” so as to entitle them to apply to the court to expunge the registration of the 11 defendant’s trademarks from the register pursuant to of the TMA.

Before us, the central questions are as follows: (i) Whether the 3rd plaintiff is an aggrieved reason. There is no dispute that the 1st and the 2nd plaintiffs are ‘aggrieved persons’. (ii) Whether the findings of this Court in the Previous Proceedings that the Chinese words “Huan Zhai Jin” [ ] is a common word used in relation to the burning of prayer papers was caught by the doctrine of res judicata.

Since the plaintiffs challenged the order made by the learned Judicial Commissioner not to expunge the defendant’s Registered Trade Marks, it is convenient to set out the relevant legislative provisions. 12

Section 10 provides as follows: Registrable trade marks 10(1) In order for a trade mark (other than a certification trade mark) to be registrable, it shall contain or consist of at least one of the following particulars: …

(c) an invented word or words;

(d) a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or

(e) any other distinctive mark.

(a) if the use of which is likely to deceive or cause confusion to the public or would be contrary to law; … 13

After registration, section 45 (1) of the TMA allows a person to apply for a declaration that the trade mark is invalid, such an application is to be made to the court. Section 45 (1) of the TMA provides as follows:

(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 Register, or by any error or defect in any entry in the Register, make such order for making, expunging or varying such entry as it 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 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; and

(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. 14

Until registered the use of a trade mark does not confer any particular rights, though it may provide the basis for a passing off claim. Once registered, it is an asset of the proprietor. The effect of registration can be seen from section 35, 36 and 37: 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) 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.

If we may add, in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13 at para 22 to 26, French CJ, Heydon and Bell JJ explained the theory of this legislative scheme: “… [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it has “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function-to indicate the trade origins of the goods to which it is intended that they be applied. This concern and this interest are reflected in the following scheme. If an application is made to have a mark registered which does not meet the criteria for registration, there are two opportunities for registration to be 16 prevented. And if a mark has been registered which does not meet the criteria for remaining on the Register, a further opportunity exists to have the Registrar adjust it. The first opportunity arises when an application is lodged. Section 31 of the Act creates a duty on the Registrar to examine and report on whether the application has been made in accordance with the Act, and whether there are grounds under Pt 4 Div 2 for rejecting it. The Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or there are grounds for rejecting it (s 33). Even if the application is accepted, a second opportunity arises. Section 34 creates a duty of the Registrar to advertise the decision to accept the application in the Official Journal of Trade Marks. This enables those who wish to oppose the registration to do so pursuant to section 52 of the Act. Section 52 has no standing requirement. If opposition proceedings are not brought, or if they fail, the trade mark is registered (s 68). However, a third opportunity to ensure the purity of the Register arises, for recourse can be had to s 88 or s 92. Those sections require applicants under them to “aggrieved”. It is not the case that any applicant who wants the Register rectified or a mark removes is “aggrieved” merely by reason of that desire: the word has a filtering function. But against that legislative background, it is not clear why the word should be construed restrictively rather than liberally.”

The first question which arises in this appeal is whether the 3rd plaintiff is an aggrieved person within the meaning of section 45(1)(a) of 17 the TMA to apply for expungement of the defendant Registered Trade Marks. The plaintiffs contended that the learned Judicial Commissioner had erred in law and fact when he decided that the 3rd plaintiff did not have locus standi to sue on the basis that the society is not an aggrieved person.

The 3rd plaintiff claims to be a person aggrieved by the circumstances that the defendant Registered Trade Marks wrongfully remain in the register. However, the defendant disputes that the 3rd plaintiff is to be regarded as an ‘aggrieved person’. As we have said earlier, there are no disputes in this appeal that the 1st and the 2nd plaintiffs are “aggrieved persons” within the meaning of section 45(1) of the TMA.

Learned counsel for the plaintiffs submitted that from the evidence, it has been established that the 3rd plaintiff a society, are importing and selling Chinese prayers paper “Huan Zhai Jin” [ ]. In support of its submission, learned counsel relied strongly on the Federal Court’s decision in Mesuma Sports Sdn Bhd v Majlis Sukan Negara [2015] 2 MLJ 465 where it was held at page 340 para 28: “[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 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 18 some element of legal interest, right or legitimate expectation in its own mark which is being substantially affected by the presence of the registered trade mark. The interest and right must be legal or lawful.”

The learned Judicial Commissioner dismissed the 3rd plaintiff’s claim on the ground that the 3rd plaintiff has not used the mark in the course of trade.

The learned Judicial Commissioner held that the 3rd plaintiff is not an ‘aggrieved person’ within the meaning of section 45(1) of the TMA, relying on the Federal Court case of McLaren International Ltd v Lim Yat Meen [2009] 4 CLJ 749 which held that: “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 or similar to the trade of the owner of the registered trade mark that the person wants to have removed from the register.”

A number of matters should be noted about the evidence as found by the learned Judicial Commissioner in para 49 of his judgment: “(i) the plaintiffs have not adduced any evidence that the Chinese Prayer Material Society has imported and sold prayer materials bearing the 1st defendant’s Registered Trade Marks. In fact, SP5 testified during cross-examination that the Chinese Prayers Materials Society is not involved in trading in prayer materials and will not suffer any loss due to the 19 outcome of this Expungement Suit. As such, the Chinese Prayer Material Society is not a “person who has used his mark as a trade mark… in the course of a trade” within the meaning of the first limb of “person aggrieved” as explained in McLaren International;

It should also be added that the 3rd Plaintiff’s argument that he is an aggrieved person is also contrary to authorities.

Referring to Re Arnold D Palmer In The Matter if Trade Mark Registration No 63249 [1987] 2 MLJ 681, the Federal Court in Mclaren International Ltd v. Lim Yat Meen [2009] 4 CLJ 749 said: “[21] Re Arnold D Palmer is an authority (out of several) that is heavily relied on by the respondent to deny that the appellants are a person aggrieved. In that case, the applicant sought the removal from the register of a trademark on the ground of non-user. On whether the applicant was a person aggrieved, Chan Sek Keong JC, after considering the speeches of Lord Herschell and Lord Watson in the House of Lords in Powell's Trade Mark (1894) 11 RPC 4; [1984] AC 8, and the manner in which 20 subsequent judges reacted to the opinions of the said Law Lords in Lever Bros, Port Sunlight Ltd v Sunniwite Products Ltd (1949) 66 RPC 84, 'Consort' Trade Mark [1980] RPC 160, and Wells Fargo Trade Mark [1977] RPC 503, concluded as follows: On the basis of these decisions, it is plain that the applicant will fail in this appeal unless he can show that he has used his trade mark in the course of a trade which is the same as or similar to that of the respondents or that he has a genuine and present intention to use the mark as a trademark. But the evidence shows none of these things, as the Registrar has found … [22] We understand that passage as laying down the principle that a person aggrieved is a person who has used his mark as a trademark — or who has a genuine and present intention to use his mark as a trademark — in the course of a trade which is the same as or similar to the trade of the owner of the registered trademark that the person wants to have removed from the register.”

The test in McLaren International (supra) was followed by Mesuma Sports Sdn Bhd (supra) where the Federal Court had considered the meaning of ‘aggrieved person’ under section 45(1)(a) of the TMA. It may be helpful to bear in mind the facts in Mesuma Sports. There, the appellant was requested by the respondent to produce and supply sports clothing bearing the tiger stripes design. Some three years later, the appellant, claiming itself to be the first user of the design as a trademark in the course of trade, filed for registration of the design under 21 the TMA while it was still a supplier of sports goods to the respondent. The respondent filed a suit against the appellant claiming that it was the lawful owner of the design and trademark and that the defendant had no such valid claim to registration of the tiger stripes based on the plaintiff’s ownership and use, and who initiated the rectification action to remove or expunge the same and that the appellant had, inter alia, passed-off the respondent’s design. The Federal Court held that the registration was an entry wrongly remaining in the register and ordered its removal.

In this present case, it must be emphasized that SP5 had agreed during cross examination that the 3rd plaintiff did not undertake any trading activities as the 3rd plaintiff being a society formed under the Society Act 1966 was not involved in trading in prayer materials and will not suffer any loss due to the outcome of this expungement suit. The evidence was sufficiently clear to enable a finding of facts to be made whether the 3rd plaintiff is a person who has used this mark as a trade mark in the course of a trade within the meaning of the first limb of an aggrieved person as stated in McLaren International (supra).

All these considerations combine, in our view, the learned Judicial Commissioner has correctly applied the law to the facts when he made a finding that the 3rd plaintiff is not a person who has used this mark as a 22 trade mark in the cause of trade and therefore is not an aggrieved person within the meaning of section 45 (1)(a) of the TMA.

On the facts of the present case, based on the decision of this Court in the Previous Proceedings, it is important to consider whether the issue of res judicata applied.

Learned counsel for the plaintiff submitted in his additional written submission that in view of the Court of Appeal decision in the Previous Proceedings that the three Chinese characters “ ’ (Huan Zhai Jin) are common descriptive words and not invented/coined words by defendant therefore the defendant cannot appropriate exclusively the words which are common to all and therefore, the defendant’s registration as a trade mark ought to be removed since it is wrong in law to register and is contrary to section 10(1)(c), (d) and (e) of the TMA. In support of the plaintiffs’ submission, the plaintiff relied strongly on the Federal Court decision in Kerajaan Malaysia v Mat Suhaimi bin Shafiei (2018) 2 MLJ 133 and Syarikat Sebati Sdn. Bhd. v Pengarah Jabatan Perhutanan & Anor [2019] 2 MLJ 689.

This is in contrast with the position taken by the defendant. Learned counsel for the defendant submitted that the cause of action brought by 23 the plaintiff in the expungement suit was for the expungement of the defendant’s Registered Trade Marks from the trade mark registry pursuant to section 45 of the TMA. Further, it was submitted for the defendant that as the defendant’s Registered Trade Marks have attained registration for more than 7 years, the plaintiffs could only expunge the defendant’s Registered Trade Marks pursuant to section 37 of the TMA, where the appellants must establish: -

(a) the original registration was obtained by fraud;

(b) the trade marks offend against section 14; or

(c) the trade marks were not, at the commencement of the proceedings, distinctive of the goods or services of the registered proprietor.

Learned counsel for the defendant emphasized that the issues and submissions by parties before the High Court in the expungement suit dealt with the issues pertaining to limbs 10(b) and (c) of the TMA. Therefore, it was argued that the causes of action in the Prior Suit and the Expungement Suit are premised on separate provisions in the TMA. The causes of action in both suits are completely different and therefore, there is no real issue of res judicata in the present proceedings. 24

In support, he referred us to the following passage in the judgment of Chang Min Tat FJ in Tong Lee Hwa & Anor v Lee Yoke San [1997] 1 MLJ 24: “At the hearing of the appeal, it was put to counsel for the appellants that to constitute a res judicata, the earlier judgment must, in terms of the Privy Council decision in Kok Hoong v Leong Cheong Kweng Mines Ltd [1964] AC 993, [1964] MLJ 49, ‘necessarily and with precision’ determine the point in issue, and he was asked to indicate to the court how the earlier judgment did necessarily and with precision determine the liability of the appellants to pay the respondent for work done for them at their request. He did not do so. We do not, with respect, see how he could succeed.”

The issue of res judicata was made clear by Peh Swee Chin, FCJ in the Supreme Court of Asia Commercial Finance (M) Bhd v Kawal Teliti Sdn Bhd [1995] 3 MLJ 189: “What is res judicata? It simply means a matter adjudged, and its significance lies in its effect of creating an estoppel per rem judicatum. When a matter between two parties has been adjudicated by a court of competent jurisdiction, the parties and their privies are not permitted to litigate once more the res judicata, because the judgment becomes the truth between such parties, or in other words, the parties should accept it as the truth; res judicata pro veritate accipitur. The public policy of the law is that, it is in the public interest that there should be finality in litigation — interest rei publicae ut sit finis litium. It is only just that no one ought to be vexed twice for the same cause of action — nemo debet bis vexari pro eadem causa. Both maxims are the rationales for the doctrine of res 25 judicata, but the earlier maxim has the further elevated status of a question of public policy. Since a res judicata creates an estoppel per rem judicatum, the doctrine of res judicata is really the doctrine of estoppel per rem judicatum, the latter being described sometimes in a rather archaic way as estoppel by record. Since the two doctrines are the same, it is no longer of any practical importance to say the res judicata is a rule of procedure and that an estoppel per rem judicatum is that of evidence. Such dichotomy is apt to give rise to confusion. The starting point ought to be the celebrated passage by Wigram VC in the case of Henderson v Henderson (1843) 3 Hare 100 at p 115 which is: The plea of res judicata applies, except in special cases, not only to points upon which the court was actually required by the parties to form an opinion and pronounce a judgment, but to every point which properly belonged to the subject of litigation and which the parties, exercising reasonable diligence might have brought forward at the time.”

In Kerajaan Malaysia v Mat Shuhaimi bin Shafiei (supra), the Federal Court explained that there are in fact two kinds of estoppel per rem judicatum. The first is the cause of action estoppel and the second is issue estoppel, which is a development from the first. Explaining on the two types of estoppel, Ahmad Maarop, FCJ referred to the Federal Court decision in Asia Commercial Finance (supra) said: 26 “The cause of action estoppel arises when rights or liabilities involving a particular right to take a particular action in court for a particular remedy are determined in a final judgment and such right of action, ie the cause of action, merges into the said final judgment; in layman’s language, the cause of action has turned into the said final judgment. The said cause of action may not be relitigated between the same parties because it is res judicata. In order to prevent multiplicity of action and also in order to protect the underlying rationales of estoppel per rem judicatum and not to act against them, such estoppel of cause of action has been extended to all other causes of action (based on the same facts or issues) which should have been litigated or asserted in the original earlier action resulting in the final judgment, and which were not, either deliberately or due to inadvertence. … On the other hand, the issue estoppel literally means simply an issue which a party is estopped from raising in a subsequent proceeding. However, the issue estoppel, in a nutshell, from a consideration of case law, means in law a lot more, ie that neither of the same parties or their privies in a subsequent proceeding is entitled to challenge the correctness of the decision of a previous final judgment in which they, or their privies, were parties. This sounds like explaining a truism, but it is the corollary from that statement that is all important and that could have given birth to the controversies alluded to above; the corollary being that neither of such parties will be allowed to adduce evidence or advance any argument to contradict such decision. In this respect, we respectfully agree with Peter Gibson J in Lawlor v Gray [1984] 3 All ER 345 at p 350, who said: ‘Issue estoppel … prevents contradiction of a previous determination, whereas cause of action estoppel prevents reassertion of the cause of action’. It is important to bear in mind the manner in which the issue estoppel operates in preventing such contradiction of the previous judgment … 27 There is one school of thought that issue estoppel applies only to issues actually decided by the court in the previous proceedings and not to issues which might have been and which were not brought forward, either deliberately or due to negligence or inadvertence, while another school of thought holds the contrary view that such issues which might have been and which were not brought forward as described, though not actually decided by the court, are still covered by the doctrine of res judicata, ie doctrine of estoppel per rem judicatum. We are of the opinion that the aforesaid contrary view is to be preferred; it represents for one thing, a correct even though broader approach to the scope of issue estoppel. It is warranted by the weight of authorities to be illustrated later. It is completely in accord or resonant with the rationales behind the doctrine of res judicata, in other words, with the doctrine of estoppel per rem judicatum. It is particularly important to bear in mind the question of the public policy that there should be finality in litigation in conjunction with the exploding population; the increasing sophistication of the populace with the law and with the expanding resources of the courts being found always one step behind the resulting increase in litigation.”

In Syarikat Sebati Sdn. Bhd. (supra), the Federal Court had to consider whether the finding of the Court of Appeal that there was no valid and binding logging contract between the plaintiff and the defendants was caught by the doctrine of res judicata. Referring to Spencer Bower and Turner Res Judicata, 3rd Edition (1996), the Federal Court said: “(i) the decision was judicial in the relevant sense;

(v) it determined the same questions as that raised in the latter question; and

The learned authors further stated that the determination must not be collateral to the decision and for this one has to look at the formal judgment or order. Where an express declaration as to any particular question or issue appears on the face of the record of a formal judgment or where from the judgment itself the actual grounds of the decision can be clearly ascertained, there is no necessity for further search.

It must be noted that the cause of action in estoppel is founded upon the principle that there must be finality to litigation. It applies to the issue 29 raised and also to matters decided in the earlier proceedings. But it only applies when the cause of action or the subject matter of the disputes in the earlier proceeding is similar to that in the later proceedings.

The subject matter of the dispute in the proceedings before this court can be ascertained from the pleadings. As we have said earlier, the plaintiff in this case applied to expunge the defendant’s Registered Trade Marks primarily on the ground that the Chinese Characters “Huan Zhan Jin” [ ] are common descriptive words and therefore the defendant’s Registration Trade Marks ought to be removed since it is wrong in law to register and is contrary to section 10(1)(c), (d) and (e) of the TMA.

What was the cause of action in the Previous Proceedings. The defendant in this case (the plaintiff in the Previous Proceedings) alleged infringement of its Registered Trade Marks of “Huan Zhan Jin” [ ] on the plaintiff’s Chinese praying materials. It is very clear that the subject matter of the dispute in the Prior Suit also relates to the issue of whether the three Chinese Characters “Huan Zhan Jin” [ ] are common descriptive words.

Essentially, we are of the view that the factual issue which has to be resolved in the present case and the Prior Suit is whether the three 30 Chinese characters “Huan Zhan Jin” [ ] are common descriptive words.

At this juncture, it is important to examine the basis upon which the learned Judicial Commissioner in this present case reached the conclusion on the issue of whether the Chinese Characters “Huan Zhan Jin” [ ] are common descriptive words in the Chinese language: “Accordingly, the 1st and 2nd Plaintiffs cannot rely on ss10(1)(c) to (e) and 19(1)(b) TMA to invalidate the 1st Defendant’s Registered Trade Marks in this case. The 1st and 2nd Plaintiffs cannot therefore contend that the Chinese characters, “Huan Zhan Jin” [ ], are common descriptive terms under s 10(1)(c), (d) and (e) of the TMA. In any event, I am of the view that the Chinese characters, [ ], are not common descriptive terms in Chinese language. This is because, as admitted by SP4 and SP5, the Chinese dictionary does not provide a meaning for the combined use of all these 3 Chinese characters.”

As we have stated earlier, this issue has been decided by this Court in the Previous Proceedings. Once the issue has been decided, the parties cannot reopen it. To allow, the parties to do so would risk conflicting decisions on the issue, which is what the principle of res judicata is trying to prevent.

To our mind, it is clear that this Court in the Previous Proceedings had considered the issue of whether the three Chinese Characters “Huan 31 Zhan Jin” [ ] is an invalid common descriptive word and it is not an inventive word as contended by the defendant.

With due respect to the learned Judicial Commissioner, it is plainly wrong for him in this present case to decide on the issue of whether the three Chinese Characters “Huan Zhan Jin” [ ] are not common Chinese Characters in the Chinese Language when he acknowledged that the Court of Appeal in the Prior Suit had dismissed the defendant’s claim for infringement of the defendant’s Registered Trade Marks on the ground that the words “Huan Zhan Jin” [ ] used by plaintiffs in this case is common descriptive words.

In our view, this is a proper case for appellate intervention and since the three Chinese characters “Huan Zhan Jin” [ ] are common generic descriptive words and therefore the defendant cannot have monopoly over the use of the words and the defendant cannot register the same as a trade mark and this appeal must be allowed so that the defendant’s registered trade mark can be rectified and expunged. 32

Based on the above reasons, the 3rd plaintiff’s appeal is dismissed. The 1st and 2nd plaintiff’s appeal is allowed. We ordered each party to bear their own costs. Dated 26 February 2020 Signed HANIPAH BINTI FARIKULLAH Judge Court of Appeal Malaysia Putrajaya Counsel/Solicitors: For the Appellants : M.M. Athimulan (Krishna Kumari, V. Amareson and A. Tinoshiny with him) Messrs Krishna & Co. No. 482-B, Jalan Permatang Rawa Bandar Perda 14000 Bukit Mertajam Pulau Pinang [Ruj: K/CV/Appeal/08-047/16(BMEL)] For the Respondent : Chew Kherk Ying (Mohd Ariff Emran b. Arifin and Chong Tze Lin with him) Messrs Wong & Partners Level 21, The Gardens South Tower Mid Valley City, Lingkaran Syed Putra 59200 Kuala Lumpur [Ruj: BLA/CTL/78273560-220079]