The Applicant, through its subsidiary companies i.e. Galperti Malaysia Sdn Bhd and Galperti Manufacutruing (Malaysia) Sdn Bhd, has been using the trade mark “GALPERTI” in Malaysia since 1993 and the subsidiary companies has set up a factory at 2, Jalan Laman Setia 7/4 Taman Laman Setia, 81550 Johor Bahru, 15 Johor Darul Takzim, Malaysia in 2011. [5] The Registrar of Trademarks allowed the appellant’s application for registration and dismissed the respondent’s opposition on the basis of the averment in paragraph 6. [6] It was however established that the averment was untrue, or at any rate 20 inaccurate. This was because there was uncontroverted documentary evidence that showed that the two Malaysian subsidiaries, Galperti Malaysia Sdn Bhd and Galperti Manufacturing (Malaysia) Sdn Bhd, were only incorporated in 2008 and 2010 respectively. [7] Be that as it may, the fact that the products could not possibly have been 25 sold through Galperti Malaysia Sdn Bhd or Galperti Manufacturing (Malaysia) S/N lnugP8Ucv0eTS5Fe2mV9cg F.I.A.L. Finanziara Industrie Alto Lario SPA V Galperti SRL 4 Sdn Bhd does not mean that the invoices dating back to 1993 were not genuine. We have examined the invoices closely, and are unable to conclude that they were somehow fabricated or were otherwise not genuine. [8] We are thus satisfied that Officine Nicola Galperti & Figlio S.p.A. had in fact established first use of the Galperti trademark in Malaysia. 5 [9] The difficulty is of course that Officine Nicola Galperti & Figlio S.p.A. is not the appellant, which had sought for registration of the trademark in Malaysia. Had the applicant for trade mark registration been Officine Nicola Galperti & Figlio S.p.A., we would have had no hesitation in allowing the registration and dismissing the opposition. Here, however, the applicant was the appellant, FIAL 10 Finanziara Industrie Alto Lario, which was said to be the holding company of the Galperti Group. [10] The mere fact that first use was established to have been made by a related or associated company of the appellant does not, in our considered view, entitle the appellant to itself register the trade mark in Malaysia, for that right 15 belongs to Officine Nicola Galperti & Figlio S.p.A. [11] Learned counsel for the appellant submitted that the benefit of the use of a trademark by a licensee would accrue to the appellant as the licensor of the trademark. The written submissions of counsel for the appellant stated as follows: 20 The use of a trademark by a licensee would enure to the benefit of the licensor (namely, the Appellant). Where the dispute is not between the licensee and licensor but rather with a third party, the court need not go into the relationship between the licensor and licensee which regulates the contractual arrangements between them. S/N lnugP8Ucv0eTS5Fe2mV9cg F.I.A.L. Finanziara Industrie Alto Lario SPA V Galperti SRL 5 [12] However, there was nothing in evidence that showed or even suggested that the Galperti trademark had been licensed by the appellant to Officine Nicola Galperti & Figlio S.p.A. Indeed, there was not even an averment to this effect in the affidavits or statutory declarations affirmed on behalf of the appellant. For this reason, first use by Officine Nicola Galperti & Figlio S.p.A. cannot enure for 5 the appellant, as the licensor-licensee relationship was not in evidence. [13] Learned counsel for the appellant cited the Court of Appeal case of Yong Sze Fun v Syarikat Zamani Hj Tamin [2012] 1 MLJ 585 in support of the proposition that, where a dispute arises not between the licensor and the licensee of a trademark, but rather with a third party, there would not be any 10 necessity for the court to go into the relationship between the licensor and the licensee which regulates the contractual arrangements between them as to how the respective trademarks are held. In other words, once it was established that the appellant and Officine Nicola Galperti & Figlio S.p.A. were part of the same group of companies, the former would become entitled to register in Malaysia a 15 trademark that belonged to the latter based on first use. In Yong Sze Fun v Syarikat Zamani Hj Tamin, the dispute related to the use of the “Tamin” trademark, which was first used by the late Haji Mohd Tamin bin Wahi in 1951. The business of Haji Mohd Tamin was then transferred to the respondent company, which meant that the goodwill attached to the trademark in question 20 had also been transferred to the respondent. [14] In our view, the case of Yong Sze Fun v Syarikat Zamani Hj Tamin stands for the principle that, once it was put into evidence that the rights to the trademark had been transferred or licensed to the claimant of the mark, a third party cannot put into issue the sufficiency or adequacy of that transfer or 25 licence. By contrast, in the present case, there was no averment at all that the S/N lnugP8Ucv0eTS5Fe2mV9cg F.I.A.L. Finanziara Industrie Alto Lario SPA V Galperti SRL 6 trademark to the Galperti name had been transferred or licensed either to or from Officine Nicola Galperti & Figlio S.p.A. [15] The observation may also be made that the trademark to the Galperti name in Class 06 in Italy (the home country of the parties) belongs to the respondent. That being the case, the question may validly be asked as to how 5 the appellant could have licensed the trademark to Officine Nicola Galperti & Figlio S.p.A. if it did not own the mark in the first place. [16] We have found that Officine Nicola Galperti & Figlio S.p.A. acquired the right to register the trademark in Malaysia by virtue of its first use of the trademark within Malaysia. Had Officine Nicola Galperti & Figlio S.p.A. assigned 10 or otherwise transferred its rights to the trademark in Malaysia, then we would have been in a position to agree with counsel for the appellant that it would have been entitled to registration of the Galperti trademark. However, there was nothing in evidence that showed that any such transfer had taken place, and thus we are constrained to conclude that the appellant was not entitled to have 15 the trademark registered in its name. [17] We observe for completeness that our judgment here is concerned solely with the question of the right of the appellant to register the trademark in light of the opposition raised by the respondent. We express no view as to whether the respondent has the better right to registration of the trademark; that 20 question must be await the outcome of the respondent’s application for registration. [18] For the reasons explained, we dismiss the appeal with costs of RM20,000, such costs to be subject to an allocatur. S/N lnugP8Ucv0eTS5Fe2mV9cg F.I.A.L. Finanziara Industrie Alto Lario SPA V Galperti SRL 7 5 March 2025 Azizul A Adnan 5 Judge of the Court of Appeal Malaysia 10 For the appellants: Mr Indran Shanmuganathan, Ms Sim Sook Eng & Ms Jessica Lim—Messrs Shearn Delamore & Co For the respondents: Mr Kok Pok Chin & Ms Ng Pau Chze—Messrs PC Kok & Co. S/N lnugP8Ucv0eTS5Fe2mV9cg