Andreas Stihl AG & Co. KG v Wong Chee Seng (WA-24IP-39-11/2024)

“The state of a man’s mind is as much a fact as the state of his digestion,” per Bowen LJ.

Accordingly, whether the defendant’s trademark is similar to the plaintiff’s trademark such that there is a real likelihood of deception of the public is a question of fact. It is a matter the court is eminently capable of determining, and not one for determination by witnesses. [See Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor (Registrar of Trade Marks, intervener) [2015] 4 MLJ 166 FC at [29], per Zulkefli CJ (Malaya)].

In the OS [Enclosure 1] before me the plaintiff applied to invalidate, revoke and/or expunge the defendant’s trademark registration below, pursuant to sections 47 and 76 of the Trademarks Act 2019 (“TMA 2019”)- Trademark Registration Mark Class Proprietor TM2022006381 (“Impugned Mark”) 7 Defendant, Wong Chee Seng Note - In the 2nd column the words below the Impugned Mark ‘STHLL’ are “STHLL SAFETY TECHNOLOGY HIGH LOAD & LIGHTWEIGHT”.

On 04-11-2025 I had allowed the OS and granted the following prayers-i. A declaration that Trademark Registration No. TM2022006381 for “ ” in Class 7 registered under the name of Wong Chee Seng, the defendant herein (“Impugned Mark”), is invalid; ii. An order that a copy of this Order be filed with the Registrar of Trademarks, and thereafter the Registrar of Trademarks shall give effect to this Order by taking immediate steps to revoke and/or remove and/or invalidate the Impugned Mark to the extent that the Impugned Mark be deemed never to have been made; and iii. The defendant shall pay to the plaintiff costs of RM 8,000 subject to allocatur.

On 01-12-2025 the defendant has appealed to the Court of Appeal. These are my Grounds of Decision.

The plaintiff is a German company founded in 1926 by Andreas Stihl, also known as the “father of the chain saw”. Since its founding exactly 100 years ago, the plaintiff has grown into a leading global manufacturer of chainsaws and outdoor power equipment. [See: plaintiff’s Affidavit in Support affirmed by Lena Weiland dated 18-09-2024 [“AIS”] (Enclosure 2), paragraphs 6 and 7].

The defendant is a Malaysian citizen and the registered proprietor of the Impugned Mark below in Class 7 with a deemed date of registration of 11-03-2022: Background Facts Plaintiff is part of the consolidated group of STIHL Holding AG &

The plaintiff is part of the consolidated group of STIHL Holding AG & Co. KG, which comprises various companies across the globe, all incorporating the word “STIHL” in their company names –

STIHL Holding AG & Co. KG;

STIHL AG;

Andreas STIHL AG & Co. KG (the plaintiff here);

STIHL Vertriebszentrale AG & Co. KG;

STIHL Kettenwerk GmbH & Co. KG; and

STIHL International GmbH. (collectively, “STIHL Group”) [See: Affidavit in support (Enclosure 2), paragraphs 8 and 9].

The STIHL Group has a diversified business, products range and portfolio. The plaintiff’s core business primarily focuses on the development, manufacturing and distribution of power tools designed for various sectors, including –

Professional forestry and agriculture;

Garden and landscape maintenance;

Construction sector; and

Private consumers. [See: Affidavit in support (Enclosure 2), paragraph 10]

In addition to chainsaws, the plaintiff’s core product portfolio encompasses a wide range of high-performance power tools, including brush cutters, hedge trimmers, blowers, sprayers, cut- off machines, lawn mowers and a range of power tools for garden. The product range is further complimented by digital solutions and services (collectively, “plaintiff’s Goods and/or Services”). [See: Affidavit in support (Enclosure 2), paragraph 10].

The plaintiff is one of the world’s top selling chainsaw brand and has established a dominant presence in the industry. The STIHL Group’s extensive sales network comprises 42 sales and marketing companies, approximately 120 importers and over 55,000 independent authorized dealers across more than 160 countries. Additionally, the STIHL Group operates manufacturing facilities in 7 countries, namely Germany, the United States, Brazil, Switzerland, Austria, China and the Philippines. [See: Affidavit in support (Enclosure 2), paragraph 11]. The STIHL Marks are registered worldwide since 1948 v defendant’s Impugned Mark registered in Malaysia only in 2022

The plaintiff has been registering the STIHL Marks as early as 1948 in Germany. The plaintiff has also secured numerous registrations for the STIHL Marks worldwide, all of which predate and are much earlier than the defendant’s Impugned Mark registered in Malaysia only in 2022. [See AIS (Enclosure 2), paragraphs 12 (c) and 13, Exhibit “P-1” @ Volume 1, pages 44 to 47 and AIS (Enclosures 2 to 3), Exhibit “P- 2” @ Volumes 1 to 2, pages 49 to 483].

The plaintiff’s STIHL Marks are well-known trademarks around the world including Malaysia. The plaintiff’s STIHL Marks have been widely recognized, approved and accepted by many countries and authorities around the world, including Albania, Algeria, Armenia, Austria, Azerbaijan, Benelux, Belarus, Bosnia & Herzegovina, Bulgaria, China, Croatia, Cuba, Czech Republic, Estonia, France, Georgia, Hungary, Iran, Iceland, Italy, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Liberia, Lithuania, Morocco, Macedonia, Moldova, Monaco, Montenegro, Mozambique, Norway, Poland, Portugal, Romania, Russia, San Marino, South Korea, Switzerland, Serbia, Sierra Leone, Slovakia, Slovenia, Spain, Sudan, Tajikistan, Turkey, Turkmenistan, Ukraine, Uzbekistan, Vietnam. [See Affidavit in support (Enclosure 2), paragraph 13, Affidavit in support (Enclosures 2 to 3) and Exhibit “P-2” @ Volumes 1 to 2, pages 49 to 483]. The plaintiff’s STIHL Marks are registered in Malaysia

In Malaysia, the plaintiff has secured trademark protection for the STIHL Mark under Malaysian trademark laws by filing trademark applications with the Intellectual Property Corporation of Malaysia (“MyIPO”).

The Malaysian trademark authority has duly recognized and upheld the plaintiff’s exclusive rights to the STIHL Marks, granting the following registrations to the plaintiff – No . Mark Applicatio n No. Class Filing Date Status 1. M/044779 8 29.10.196 5 Removed (Certificate issued on 12.5.1970)

R/006059 8 29.10.196 5 Removed (Certificate issued on 21.11.196 6)

S/010801 8 30.10.196 5 Removed (Certificate issued on 27.6.1970)

M/054220 8 20.3.1970 Registered 5. S/013786 8 20.3.1970 Registered 6. R/009144 8 24.3.1970 Registered 7. M/066162 7 30.7.1974 Registered 8. R/019775 8 24.5.1979 Registered 9. R/019776 7 24.5.1979 Registered 10. 90000417 7 11.1.1990 Registered 11. 96015403 16 20.12.199 6 Registered 12. 20120013 45 4 30.1.2012 Registered 13. 20170695 73 7 6.10.2017 Registered 14. 20170695 74 9 6.10.2017 Registered 15. 20170695 75 35 6.10.2017

20170695 77 38 6.10.2017 Registered [See: (i) Affidavit in support (Encl. 2), paragraph 14 and (ii) Affidavit In Support (Enclosure 3), Exhibit “P-3” @ Volume 2 pages 485 to 504 (trademark details of the plaintiff’s STIHL Marks in Malaysia provided by MyIPO)]. Defendant registered Impugned Mark in Malaysia in 2022

On 11-03-2022, the defendant, without the plaintiff’s permission or authority, applied for the registration of his Impugned Mark. [See: Affidavit in support (Enclosure 162), Exhibit “P-21” @ Volume 136A, page 28350 (trademark details of the defendant’s Impugned Mark provided by MyIPO)].

Upon discovering the defendant’s application, the plaintiff took immediate steps to protect its rights, including –

Filing a request for an extension of time on 07-11-2022 to oppose the defendant’s registration; and

Issuing a letter of demand dated 23-11-2022 (“Letter of Demand”) through its solicitors, demanding the defendant to withdraw the trademark application.

The defendant ignored the Letter of Demand.

MyIPO registered the Impugned Mark in or around May 2023, with a deemed date of registration of 11-03-2022. Plaintiff filed the present OS

The plaintiff therefore filed the present OS seeking an order from this Court to invalidate, revoke and/or expunge the Impugned Mark pursuant to sections 47 and 76 of the TMA 2019. Grounds in TMA 2019 relied on by plaintiff

The plaintiff’s application is based on three grounds-a) 1st ground-the plaintiff applied under section 47. (1) TMA 2019 as an aggrieved person to declare invalid the registration of the defendant’s trademark on the ground that the trademark was registered in breach of section 23[5] [a] TMA 2019, i.e. the use of the defendant’s trademark is likely to deceive or cause confusion to the public. [Absolute Grounds]; b) 2nd ground-the plaintiff applied under section 47 (3) TMA 2019 as an aggrieved person to declare invalid the registration of the defendant’s trademark on the ground that the trademark was registered in breach of section 24[2] [b] TMA 2019 i.e. there exists a likelihood of confusion on the part of the public as the defendant’s trademark is similar to the plaintiff’s earlier trademark. [Relative Grounds]; and c) 3rd ground-The Impugned Mark is identical with and/or similar to the well-known STIHL Marks which are registered in Malaysia and-

The use of the Impugned Mark in relation to those goods or services would indicate a connection between those goods or services and the plaintiff;

(ii) There exists a likelihood of confusion on the part of the public because of such use; and

(iii) The plaintiff’s interests are likely to be damaged by such use.

The defendant contends the plaintiff does not qualify as a person aggrieved, as required under section 47 of the TMA 2019. The defendant cites McLaren International Ltd v Lim Yat Meen [2009] 5 MLJ 741 FC. [See Enclosure 174 defendant’s written submissions page 11 paragraph 5.2].

The defendant also contends the plaintiff’s mark is not the same or similar with the defendant’s registered trademark. [See Enclosure 174 defendant’s written submissions page 18 paragraph 5.19].

The defendant further contends the plaintiff failed to show it had acquired goodwill in Malaysia. [See Enclosure 174 defendant’s written submissions page 19 paragraph 5.1].

The defendant submits the plaintiff’s trademarks are not well-known. [See Enclosure 174 defendant’s written submissions page 20 paragraph 6].

To better understand the submissions, I set below sections 23, 24, 47, 48, 54 and 56 of TMA 2019. Sections 23, 24, 47, 48, 54 and 56 of TMA 2019 Absolute grounds for refusal of registration

(1) Subject to subsection (2), the Registrar shall refuse to register a trademark based on the following absolute grounds for refusal of registration: …

.. the Registrar shall refuse to register a trademark based on any of the following absolute grounds for refusal of registration:

if the use of the trademark is likely to deceive or cause confusion to the public or contrary to any written law; Section 24. Relative grounds for refusal of registration

The Registrar shall refuse to register a trademark if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services of the earlier trademark.

The Registrar shall refuse to register a trademark if there exists a likelihood of confusion on the part of the public—

where the trademark is identical with an earlier trademark and is to be registered for goods or services similar to the earlier trademark; or

where the trademark is similar to an earlier trademark and is to be registered for goods or services identical with or similar to the earlier trademark. Invalidation of registration by Court

(1) The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person on the ground that the trademark was registered in breach of section 23. …

The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person on the ground that—

there is an earlier trademark under subsection 24(1), (2) or (3); or

there is an earlier right under subsection 24(4). … Section 48. Rights conferred by registered trademark

The registered proprietor of trademark has the exclusive rights—

to use the trademark; and

to authorize other persons to use the trademark, in relation to the goods or services for which the trademark is registered.

The registered proprietor has the right to obtain relief for infringement of his trademark.

The acts amounting to infringement of a trademark are set out in section 54 and references to the infringement of a registered trademark shall be construed accordingly. … Section 54. Acts amounting to infringement of registered trademark

A person infringes a registered trademark if he uses a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor.

A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign—

that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or

that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public. … Section 56. Action for infringement

The registered proprietor shall have the right to institute Court proceedings against any person who has infringed or is infringing the registered trademark. [Emphasis added] Grounds relied on by plaintiff

I shall deal with the three grounds one by one. 1st ground - the plaintiff applied under section 47. (1) TMA 2019 as an aggrieved person to declare invalid the registration of the defendant’s trademark on the ground that the trademark was registered in breach of section 23[5] [a] TMA 2019, i.e. the use of the defendant’s trademark likely to deceive or cause confusion to the public. [Absolute Grounds]

On the 1st ground two issues arise before me. They are-i. Issue 1 - Is the plaintiff an aggrieved person under section 47[1] of the TMA 2019? ii. Issue 2 - Is the use of the defendant’s Impugned Mark likely to deceive or cause confusion to the public? Issue 1 - Is the plaintiff an aggrieved person under section 47[1] of the TMA 2019? Plaintiff’s contentions

The plaintiff contends it is an ‘aggrieved person’ and cites in support Deluxe Caterers Pvt Ltd v Food Stack Concepts Pte Ltd [2024] 9 MLJ 603 HC Azlan Sulaiman JC and Mohd Radzi Harun J’s decision in Qi Sheng Sdn Bhd & Ors v Foong Yit Meng & Anor [2021] MLJU 269 HC which followed the Federal Court decision in Mesuma Sports Sdn Bhd v Majlis Sukan Negara (Pendaftar Cap Dagangan Malaysia, interested party) [2015] 6 MLJ 465 FC [“Mesuma Sports”]. Defendant’s contentions Plaintiff's failure to pursue the opposition against the defendant's registration before MyIPO means plaintiff is not an ‘aggrieved person’

The defendant contends the plaintiff is not an ‘aggrieved person’ and says the test for an ‘aggrieved person’ set by the Federal Court in Mesuma Sports requires the plaintiff to shows that it is substantially affected by the presence of the defendant's mark and that “the Plaintiff's failure to pursue the opposition against the Defendant's registration constitutes a compelling indication that the Plaintiff is not substantially affected by the presence of the Defendant's mark.” [See Enclosure 186 defendant’s Written Submission in reply page 2 at paragraphs 2.4 to 2.19]. Court’s analysis TMA 2019 replaced the old Trade Marks Act 1976

I begin by pointing out that TMA 2019 replaced the old Trade Marks Act 1976. Unfortunately, in the new TMA 2019 the wording of some of the sections were amended and the numbering changed instead of using the amendment technique of adding [A], [B] etc to the existing section number to add in a new section. For this reason, reported judgments on an issue based on the old Trade Marks Act 1976 must be scrutinised if there is any material change due to a change in wording in the present TMA 2019.

I now consider the defendant’s ground of objection. Defendant submits plaintiff's failure to pursue the opposition against the defendant's registration before MyIPO means plaintiff is not an ‘aggrieved person’

The defendant’s counsel Mr Timothy Joseph Dass contends the plaintiff is not an ‘aggrieved person’ and says the test for an ‘aggrieved person’ set by the Federal Court in Mesuma Sports requires the plaintiff to shows that it is substantially affected by the presence of the defendant's mark and that, quote “the Plaintiff's failure to pursue the opposition against the Defendant's registration constitutes a compelling indication that the Plaintiff is not substantially affected by the presence of the Defendant's mark.” Unquote. [See Enclosure 186 defendant’s Written Submission in reply page 2 at paragraphs 2.4 to 2.19].

I reject this submission which is a wrong appreciation by counsel of the correct legal principle. It is trite law that- i. An opposition proceeding does not give rise to any estoppel to the same party [say the plaintiff here] from seeking to rectify the register by expunging the registered mark after an unsuccessful opposition. This is because an opposition proceeding is inherently not final so as to be capable of being the basis for an issue estoppel; ii. the fact that the plaintiff had not appealed against the decision of the registrar in dismissing the plaintiff’s opposition to the defendant’s mark is likewise irrelevant; iii. even if a person [i.e. the plaintiff here] had pursued an opposition and lost, that person could still apply to invalidate and no cause of action estoppel nor issue estoppel would prevent it; and iv. it remains open for the plaintiff here to challenge the registration of the defendant’s trade mark by relying on the provision on relevant sections in the TMA 2019 in rectification proceedings. [See Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Limited [2012] MLJU 695 FC [“Yong Teng Hing”] and Huan Schen Sdn Bhd v Sram, LLC [2016] MLJU 429 HC per Wong Kian Kheong J at [paragraph 18]].

This is what the Federal Court said in Yong Teng Hing- “[22] We are also of the view the fact that the respondent had not appealed against the decision of the registrar in dismissing the respondent’s opposition to the appellant’s mark in Class 14 is likewise irrelevant. On this point we would refer to S/N v. L’Oreal SA [2007] RPC 381 wherein it was held inter alia that an opposition proceeding does not give rise to any estoppel to the same party from seeking to rectify the register by expunging the registered mark after an unsuccessful opposition. This is because an opposition proceeding is inherently not final so as to be capable of being the basis for an issue estoppel. Similarly, in the case of Dame Vivienne Westwood OBE v. Anthony Edward Knight [2011] EWPCC 008, the court therein held that even if a person had pursued an opposition and lost, that person could still apply to invalidate and no cause of action estoppel nor issue estoppel would prevent it. We are therefore of the view that following the above cited case laws, it remains open for the respondent to challenge the registration of the appellant’s trade mark in Class 14 by relying on the provision of s. 45 of the Act in rectification proceedings.” [Emphasis added] Sections 48, 54 and 56 of TMA 2019

Further, section 48[2] read with section 56 of the TMA 2019, which were not raised by learned counsel, expressly give the right to the plaintiff as a registered proprietor of trademark to take Court action against any person who has infringed or is infringing his registered trademarks.

The acts amounting to infringement of a trademark are set out in section 54 TMA 2019 which includes under section 54[2][b] a person who uses in the course of trade a sign that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered.

Sections 48, 54 and 56 of TMA 2019 read as follows-Section 48. Rights conferred by registered trademark

The registered proprietor of trademark has the exclusive rights—

to use the trademark; and

to authorize other persons to use the trademark, in relation to the goods or services for which the trademark is registered.

The registered proprietor has the right to obtain relief for infringement of his trademark.

The acts amounting to infringement of a trademark are set out in section 54 … … Section 54. Acts amounting to infringement of registered trademark

A person infringes a registered trademark if he uses a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor.

A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign—

that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or

that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public. … Section 56. Action for infringement

The registered proprietor shall have the right to institute Court proceedings against any person who has infringed or is infringing the registered trademark. [Emphasis added] Application to facts

As set out above, the Malaysian trademark authority has registered sixteen [16] STIHL Marks belonging to the plaintiff in several classes. As the registered proprietor of trademarks, the plaintiff is expressly conferred the right to take Court action against any person who has infringed or is infringing his registered trademarks by virtue of section 56[1] read with section 48 (2) and

and section 54[2][b] TMA 2019.

Since the plaintiff can rely on section 48 read with section 54 and section 56 of the TMA 2019 in my view there is no necessity for the plaintiff to rely on section 47(1) and [3] TMA 2019 which require the plaintiff to prove he is an ‘aggrieved person’. To my mind, section 47(1) and [3] TMA 2019 are relied on by a plaintiff who only has a common law right to a trademark and has not registered his trademark with the Malaysian trademark authority.

However, for completeness I shall deal with section 47 (1) and [3] TMA 2019 which are relied on by the plaintiff as follows-i. Section 47. (1) TMA 2019 as an aggrieved person to declare invalid the registration of the defendant’s trademark on the ground that the trademark was registered in breach of section 23[5] [a] TMA 2019, i.e. the use of the defendant’s trademark is likely to deceive or cause confusion to the public. [Absolute Grounds]; or ii. Section 47 (3) TMA 2019 as an aggrieved person to declare invalid the registration of the defendant’s trademark on the ground that the trademark was registered in breach of section 24[2] [b] TMA 2019 i.e. there exists a likelihood of confusion on the part of the public as the defendant’s trademark is similar to the plaintiff’s earlier trademark. [Relative Grounds].

To recap, section 47 (1) and [3] TMA 2019 are invoked by a plaintiff as an ‘aggrieved person’ if he is not a registered proprietor of a trademark and thus cannot rely on section 48 read with section 54 and section 56 of the TMA 2019.

Cases on a plaintiff who is suing as an aggrieved person are Mesuma Sports. In Mesuma Sports, the plaintiff there had not registered his trademark and had to rely on his common law right. Definition of an aggrieved person

An ‘aggrieved person’ was defined by the Federal court in Mesuma Sports. The definition was on the phrase “any person aggrieved” in section 45[1][a] Trade Marks Act 1976 and “a person aggrieved” in section 46[1][a] Trade Marks Act 1976.

In my view the definition of “aggrieved person” used in Mesuma Sports can be used for our present section 47[1] and [3] of the TMA 2019.This is because the phrase is still the same.

In Mesuma Sports Azahar Mohamed FCJ defined “aggrieved person” as follows- [27] … the point as to whether the plaintiff was a person aggrieved had been settled by this court in McLaren International Ltd v Lim Yat Meen [2009] 5 MLJ 741; [2009] 4 CLJ 749 and LB (Lian Bee) Confectionery Sdn Bhd v QAF Ltd [2012] 4MLJ 20 … [28] 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 registered trademark that the person wants to have removed from the register. The person must be someone who has some element of legal interest, right or legitimate expectation in its own mark which is being substantially affected by the presence of the registered trademark. The interest and right must be legal or lawful. [Emphasis added]

The definition of “aggrieved person” in Mesuma Sports was used for our present section 47[1] of the TMA 2019 in Qi Sheng Sdn Bhd & Ors v Foong Yit Meng & Anor [2021] 10 MLJ 234 HC where Mohd Radzi Harun J said- [43] In determining whether or not the Plaintiffs are aggrieved persons within the confines of section 47 of the Act, this Court referred to the highly persuasive High Court of Singapore decision in Re Arnold D Palmer In The Matter if Trade Mark Registration No 63249 [1986] 1 LNS 11; [1987] 2 MLJ 681 where Chan Sek Keong J. … set up in pronounced details, to the great benefits of this Court and many others that referred to His Lordship’s scholarly works in this case, the development of jurisprudence on what is the legal context of “aggrieved person”. … [45] The principle that can be distilled from Re Arnold D Palmer (supra) is that a person is an aggrieved person in a trade mark claims when – (i) He has shown that he used his mark as a trade mark; (ii) He has a genuine and present intention to use his mark as a trade mark; (iii) The use or intention to use of that trade mark is in the course of a trade; (iv) The trade in issue must be one which is the same as or similar to the trade of the owner of the registered trade mark that the person wants to have removed from the register. [46] Re Arnold D Palmer was referred to with approval by the Federal Court in McLaren International Ltd v. Lim Yat Meen [2009] 4 CLJ 749. … [48] Mc Laren International was reaffirmed by the Federal Court in Mesuma Sports Sdn Bhd v Majlis Sukan Negara (Pendaftar Cap Dagangan Malaysia, interested party) [2015] 6 MLJ 465 where it held: “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 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. [Emphasis added] Application to facts

Based on the affidavit evidence and law I hold the plaintiff is an aggrieved person. The plaintiff has many registered trademarks in Malaysia under the STIHL Marks in class 4, 7, 8, 9, 16, 35, 38 and

[See plaintiff ‘s written submission Enclosure 195 at paragraph 13]. The defendant’s Impugned Mark is in Class 7.

The plaintiff's use of the STIHL Marks is also within the same trade sector as the defendant’s use of the Impugned Mark, i.e. the trade of power tools and machinery for cutting, trimming and landscaping.

I now move to issue [2]. Issue 2 - Is the use of the defendant’s Impugned Mark likely to deceive or cause confusion to the public?

The following principles are trite law-i. A small amount of use of a trademark by the plaintiff is sufficient to prevent the defendant or any other party from claiming proprietorship in the said mark if its use by the defendant is likely to cause confusion to the public. [See Jost Cranes GMBH & Co KG v. Jost Cranes Sdn Bhd [2010] CLJU 331, Azahar Mohamed J]; ii. the phrase "use in the course of trade" in the TMA 2019 is wide and has been liberally interpreted. [See Heineken Asia Pacific Pte Ltd v. Super La Via Sdn Bhd [2019] 9 CLJ 365 HC, per Lim Chong Fong J]; iii. Proof of actual confusion is not required. It is sufficient for the plaintiff to demonstrate that there exists a probability or possibility of confusion. [See the Federal Court decision in Ortus Expert White Sdn Bhd v Nor Yanni bt Adom & Anor [2022] 2 MLJ 67 FC and Leo Pharmaceutical Products Ltd A/S (Lovens kemiske Fabrik Produktionsaktieselskab) v Kotra Pharma (M) Sdn Bhd [2009] 5 MLJ 703]; iv. The issue of likelihood of confusion is not to be determined by witnesses. The determination of whether there is likelihood of confusion still lies with the court. It is ultimately one for the court to decide. [See the Federal Court decision in Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor (Registrar of Trade Marks, intervener) [2015] 4 MLJ 166 FC]; v. trademark infringements can be decided by way of an OS [See Qi Sheng Sdn Bhd & Ors v Foong Yit Meng & Anor [2021] 10 MLJ 234 and Sunway Big Box Sdn Bhd v Big Box Corporation

The test for confusion has been settled by the Federal Court in Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Limited [2012] MLJU 695 which held that the test for likelihood of confusion and deception is met if a number of persons are led to wonder whether the two products originate from the same source. The Federal Court said– “As regards the test of confusion and deception it is now well settled. The decision of the House of Lords in the case of Bali Trade Mark [1969] RPC 472 in interpreting s11 on the UK Trade Marks Act which is equivalent to our s14(1)(a) of the Act is highly instructive. Lord Upjohn held in that case at p 496 on the test of likelihood of confusion and deception, as follows: What then, is the test? This must necessarily be a question of fact and degree in every case … It is not necessary in order to find that a mark offends against section 11 to prove that there is an actual probability of deception leading to passing off or (I add) an infringement action … It is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source.”

In Pianotist Co’s Application (1906) 23 RPC 774, Parker J held at page 777 – “You must take the two words. You must judge them both by their look and their sound. You must consider the goods by which they are to be applied. You must consider the nature and kind of customer who would 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 these trademarks is used in the normal way as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain the illicit benefit, but that there will be confusion in the minds of the public, which will lead to confusion in the goods – then you may refuse the registration or rather you must refuse registration in that case.”

The Federal Court in Ortus Expert White Sdn Bhd v Nor Yanni bt Adom & Anor [2022] 2 MLJ 67 FC has, based on the principles in Re Pianotist as well as case laws, consolidated a list of guidelines for the test for likelihood of confusion and/or deception as follows – “[103] Upon a full consideration of the principles and authorities aforementioned, the test for likelihood of confusion and/or deception would be as follows:

Both side-by-side comparison and the Imperfect Recollection Test must be satisfied;

The comparison is made in terms of phonetic, visual, trade channel, and idea aspects of the marks;

The purpose of such comparison is to determine whether the defendant’s mark contains essential features of the plaintiff’s registered trade mark, which strike the eye and fix themselves in the recollection of the users of the plaintiff’s goods;

The Court shall then take into account all surrounding circumstances and apply the Imperfect Recollection Test, bearing in mind the outcome of the comparison, in order to determine whether it is likely that ordinary consumer with ordinary memory who would be likely to buy the goods would be deceived and think that the defendant’s mark is the same as the plaintiff’s registered trade mark. In other words, the test of whether one trade mark is confusingly similar is an objective test and the test is that of an ordinary person with an appropriate level of literacy (Merck Kgaa v Leno Marketing (M) Sdn Bhd: Registrar of

In determining this test, the Court is entitled to give effect to their own opinions, and not confined to the evidence of witnesses. [Emphasis added]

Further, the Federal Court in Yong Teng Hing held that – i. confusion and deception can never be ruled out simply because the goods sought to be registered by the appellant fall in one class whilst the goods that have been sold and traded by the respondent fall in other classes; and ii. the more well-known or unusual a trademark, the more likely it is that consumers might be confused into believing there is a trade connection between goods or services bearing the same or a similar mark.

This is what the Federal Court in Yong Teng Hing held – “Confusion and deception as envisaged by s. 14(1)(a) of the Act in our view is a question of fact and degree. The likelihood of confusion and deception can never be ruled out in the present case simply because the goods sought to be registered by the appellant fall in Class 9 whilst the goods that have been sold and traded by the respondent fall in other classes such as Class 25. Further, the more well-known or unusual a trade mark, the more likely is that consumers might be confused into believing that there is a trade connection between goods or services bearing the same or a similar mark. In the case of Canon Kabushiki Kaisha v. Metro-Goldwyn Mayer Inc [1999] RPC 177 the court therein held that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks and vice versa. In the present case it must be noted that the appellant has sought to register the “GIORDANO” trade mark which is identical both visually and phonetically to the respondent's “GIORDANO” trade mark. “GIORDANO” is an unusual and uncommon term in Malaysia. We are of the view that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source by reason of the use of the identical mark as the respondent's, and the goodwill and reputation that the respondent enjoys with respect to its “GIORDANO” trade mark both in Malaysia and internationally. [Emphasis added]

The Federal Court in Yong Teng Hing also held that for goods classified in different classes there can still be a likelihood of confusion in the use of identical trademarks by two different proprietors – “We find that the appellant’s and respondent’s goods in classes 9 and 25 are fashion wear which share similar nature and purpose. Optical and sunglasses in class 9 are fashion products. Likewise, articles of clothing and leather goods such as belts and bags in class 25 are also fashion products. Both the appellant’s and the respondent’s goods are targeted at the same customers and made available through similar retail channels and are commonly found to be sold together or next to each other in departmental stores, retail stores and fashion boutiques. We are of the view that just because the goods are classified in different classes it does not mean that there will be no likelihood of confusion in the use of identical trademarks by two different proprietors. In the case of McCormick & Company Inc v McCormick [2000] FCA 1335, BC200005491, the Federal Court of Australia held that spices and instant butter are goods of the same description and emphasised that the classification contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are of ‘the same description’. Further, it was stated also that the expression ‘goods of the same description’ is not to be construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold. It is to be noted that in recent years, proprietors of major brand names have expanded their product lines to embrace all facets of fashion products. On this point we are of the view the court can take judicial notice of the fact that many trademark owners including famous brands which have presence in Malaysia today, such as Chanel, Gucci, Giorgio Armani and Louis Vuitton, to name a few, boast product lines that encompass optical wear and sunglasses, clothing, leather products as well as cosmetics and perfumes. There may be products that are licensed to third parties to be sold under the trademark, and the value of a well-established trademark can be fully exploited by the brand owners in such manner. Given the modern-day retail business, it is no longer realistic to segregate market segments by the different types of goods sold. The same consumer who purchases a ‘GIORDANO’ T-shirt may purchase a pair of ‘GIORDANO’ sunglasses, irrespective of whether the sunglasses, are sold in the ‘GIORDANO’ store or in a department store.” (Emphasis added)

Finally, in SABEL BV v Puma AG, Rudolph Dassler Sport (Case C 251/95) [1997] All ER (D) 69 [“SABEL BV”], the Court of Justice of the European Union held that the assessment of similarity between marks must be based on their overall impression, with particular emphasis on their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. – “22. … The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case.

That global appreciation of 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… shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.”

Based on the authorities above, the following factors are relevant when applying the test of confusion– i. The visual, phonetic and conception of the marks; ii. The distinctive and dominant components of the marks; iii. The nature and purposes of the goods or services; iv. The trade channels of the goods or services; and v. The reputation and recognition of the earlier mark. Issue 2 - Application to facts Identical and/or Similar Visual and Conception

In my view the defendant’s Impugned Mark is visually and conceptually identical and/or similar to the plaintiff’s STIHL Marks, especially the plaintiff’s following stylised marks – Mark Application Class Filing Date Status 1. R/019775 8 24.5.1979 Registered 2. R/019776 7 24.5.1979 Registered 3. 90000417 7 11.1.1990 Registered 4. 2012001345 4 30.1.2012 Registered (Collectively, “Stylised STIHL Marks”)

A comparison of the defendant’s Impugned Mark and the plaintiff’s Stylised STIHL Marks are shown below –

Applying the principles in SABEL BV, the defendant’s Impugned Mark and the plaintiff’s Stylised STIHL Marks must be assessed as a whole, with particular emphasis on their distinctive and dominant components.

In this regard, the dominant and distinctive element of the defendant’s Impugned Mark is the word “STHLL”. The phrase “Safety Technology High Load & Lightweight” appearing below “STHLL” is significantly smaller and merely descriptive. This phrase is a deliberate attempt by the defendant to create a false representation to justify the defendant’s wrongful use of the mark “STHLL”.

In my view the defendant’s Impugned Mark is visually and conceptually identical and/or similar to the plaintiff’s STIHL Marks and/or Stylised STIHL Marks in the following ways –

The defendant’s Impugned Mark contains 5 letters in uppercase, same as the plaintiff’s STIHL Marks.

The defendant’s Impugned Mark contains the letters “S”, “T”, “H” and “L”, same as the plaintiff’s STIHL Marks.

The letters “S”, “T”, “H” and “L” in the defendant’s Impugned Mark are in the same sequence as the plaintiff’s STIHL Marks.

The defendant’s Impugned Mark and the plaintiff’s Stylised STIHL Marks have the same and/or similar stylisation –

Both marks use the same / similar font.

(ii) Both marks are bold and italicized.

(iii) Both marks have the same / similar spacing between the 5 letters.

The only minute difference between the defendant’s Impugned Mark and the plaintiff’s STIHL Marks are the missing “I” and additional “L” in the defendant’s Impugned Mark. These minute differences are unlikely to be noticed by consumers with imperfect recollection, leading to a high likelihood of confusion. [See SABEL BV].

The striking similarities in the overall impression created by both marks reinforce the likelihood of confusion. This is especially so when consumers are more likely to focus on the dominant and memorable aspects of a mark rather than minor differences, as held in SABEL BV. Identical and/or Similar Pronunciation

The defendant’s Impugned Mark is also aurally identical and/or similar to the Plaintiff’s STIHL Marks. Both marks consist of a single syllable and are pronounced identically as “Stihl”. The slight variation in spelling brings no or negligible difference to the pronunciation. Identical and/or Similar Classification and/or Specification

The defendant’s Impugned Mark is registered for “band saw machines; blades for circular saws; cutters [machines]; power blowers for lawn debris; electric hedge trimmers; spraying machines; electric lawn mowers; chainsaws” (collectively, “defendant’s Goods”).

The same or similar goods were also registered by the plaintiff before the registration of the defendant’s Impugned Mark. [See Enclosure 172 plaintiff’s written submissions Annexure A for the comparison of the defendant’s Goods and the plaintiff’s Goods and Services].

Based on the comparison, in my view it is undisputable that the defendant’s Goods are identical and/or similar to the plaintiff’s Goods and/or Services as –

Both are registered under class 7 which includes mainly machines, machine tools and power-operated tools. In particular, both encompass machinery and power-operated tools specifically designed for cutting, trimming and clearing vegetation, including hedge trimmers, cutters and blowers, which serve the same fundamental function.

Both are intended for use in forestry, agriculture, landscaping and related industries, demonstrating a direct overlap in application and purpose.

Both target the same group of consumers, including professional landscapers, forestry workers and homeowners, and are distributed through overlapping trade channels, such as hardware stores, agricultural supply outlets and online marketplaces.

In conclusion, there exists a significant likelihood of deception and/or confusion as –

The defendant’s Goods are clearly identical and/or similar in nature, function and purpose to the plaintiff’s Goods and/or Services.

The presence of the defendant’s Impugned Mark is likely to mislead the average consumer into believing that the defendant’s Impugned Mark and the plaintiff’s STIHL Marks originate from the same source.

If the defendant’s Goods bearing the Impugned Mark are available alongside or within the same market space as the plaintiff’s well-established branded products, consumers will inevitably be misled into associating the defendant’s Goods with the plaintiff’s STIHL Marks.

In conclusion, the plaintiff is successful on the 1st ground. I now move to the 2nd ground. 2nd ground - the plaintiff applied under section 47 (3) TMA 2019 as an aggrieved person to declare invalid the registration of the defendant’s trademark on the ground that the trademark was registered in breach of section 24[2] [b] TMA 2019 i.e. there exists a likelihood of confusion on the part of the public as the defendant’s trademark is similar to the plaintiff’s earlier trademark. [Relative Grounds]

The plaintiff is an aggrieved person as explained above. For the same reasons as above, there exists a likelihood of confusion on the part of the public as the defendant’s trademark is similar to the plaintiff’s earlier trademark.

In conclusion, the plaintiff is also successful on the 2nd ground.

In view of my decision on the 1st and 2nd grounds in favour of the plaintiff there is no need for me to consider the plaintiff’s 3rd ground.

I allow the OS and grant the following prayers-i. A declaration that Trademark Registration TM2022006381 for “ ” in Class 7 registered under the name of Wong Chee Seng, the defendant herein (“Impugned Mark”), is invalid; ii. An order that a copy of this Order be filed with the Registrar of Trademarks, and thereafter the Registrar of Trademarks shall give effect to this Order by taking immediate steps to revoke and/or remove and/or invalidate the Impugned Mark to the extent that the Impugned Mark be deemed never to have been made; and

The defendant shall pay to the plaintiff costs of RM 8,000 subject to allocatur.

Lastly, I thank counsel for their helpful submissions. Dated: 23th January 2026 …………(signed)…………… Leong Wai Hong Judge High Court of Malaya Kuala Lumpur (NCC 6) Counsel for plaintiff: Chng Keng Lung and Irene Wong Oi Ling. Lee Hishammuddin Allen & Gledhill (Kuala Lumpur). Counsel for defendant: Timothy J. Dass. Timothy J. Dass & Co. (Kuala Lumpur). CASES REFERRED TO: 1) Canon Kabushiki Kaisha v. Metro-Goldwyn Mayer Inc [1999] RPC

2) Dame Vivienne Westwood OBE v. Anthony Edward Knight [2011] EWPCC 008. 3) Deluxe Caterers Pvt Ltd v Food Stack Concepts Pte Ltd [2024] 9 MLJ 603 HC. 4) Heineken Asia Pacific Pte Ltd v. Super La Via Sdn Bhd [2019] 9 CLJ 365 HC. 5) Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor (Registrar of Trade Marks, intervener) [2015] 4 MLJ 166 FC. 6) Huan Schen Sdn Bhd v Sram, LLC [2016] MLJU 429 HC. 7) Jost Cranes GMBH & Co KG v. Jost Cranes Sdn Bhd [2010] CLJU

8) Leo Pharmaceutical Products Ltd A/S (Lovens kemiske Fabrik Produktionsaktieselskab) v Kotra Pharma (M) Sdn Bhd [2009] 5 MLJ 703. 9) McCormick & Company Inc v McCormick [2000] FCA 1335. 10) McLaren International Ltd v Lim Yat Meen [2009] 5 MLJ 741 FC. 11) Merck Kgaa v Leno Marketing (M) Sdn Bhd: Registrar of Trade Marks (Interested Party) [2017] 1 LNS 1006. 12) Mesuma Sports Sdn Bhd v Majlis Sukan Negara (Pendaftar Cap Dagangan Malaysia, interested party) [2015] 6 MLJ 465 FC. 13) Ortus Expert White Sdn Bhd v Nor Yanni bt Adom & Anor [2022] 2 MLJ 67 FC. 14) Pianotist Co’s Application (1906) 23 RPC 774. 15) Qi Sheng Sdn Bhd & Ors v Foong Yit Meng & Anor [2021] MLJU 269 HC. 16) Re Arnold D Palmer In The Matter if Trade Mark Registration No 63249 [1986] 1 LNS 11; [1987] 2 MLJ 681. 17) S/N v. L’Oreal SA [2007] RPC 381. 18) SABEL BV v Puma AG, Rudolph Dassler Sport (Case C 251/95) [1997] All ER (D) 69. 19) Sunway Big Box Sdn Bhd v Big Box Corporation Pte Ltd [2022] MLJU 356. 20) Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Limited [2012] MLJU 695 FC. LEGISLATION REFERRED TO: 1) Trademarks Act 2019, section 23, section 23[5] [a], section 24, section 24[2] [b], section 24(3)(b), section 45[1][a], section 46[1][a], section 47, section 47. (1), section 47 (3), section 48, section 48[2], section 54, section 54[2][b], section 56, section 56[1] and section 76.