Guan Seng Marketing Sdn. Bhd. v Kong Chee Wai (WA-24IP-16-06/2024)

Kong Chee Wai … DEFENDAN

Pendaftar Cap Dagangan, Malaysia … PIHAK BERKEPENTINGAN JUDGMENT A. Introduction [1] The plaintiff filed an originating summons, seeking to set aside a decision dated 18 March 2024 by the learned Registrar of Trademarks. [2] After considering documentary evidence before the court and submissions of counsel, the court allowed the originating summons. The reasons for the decision are set out below. B. Background Facts [3] The plaintiff is the manufacturer and distributor of, amongst others, men’s footwear bearing a range of trademarks, including the “DR. CARDIN” mark and the “DC” mark. The plaintiff is also the proprietor of the “ ” mark (“Plaintiff’s Mark”). By trademark application no. 2011021733, the plaintiff applied for registration of the Plaintiff’s Mark in Class 25, which applies to footwear, articles of clothing and headgear (“Plaintiff’s Application”). [4] The defendant is the proprietor of the “ ” trademark, registered under registration no. 2011050479 in Class 25 (“Defendant’s Mark”). On 7 February 2017, the defendant filed a notice of opposition against the Plaintiff’s Application (“Defendant’s Opposition”). The Defendant’s Opposition was allowed by the learned Registrar on 18 March 2024. [5] The plaintiff is thus seeking to set aside the decision of the learned Registrar in allowing the Defendant’s Opposition. [6] The decision of the learned Registrar was made under the Trade Marks Act 1976 (“TMA 1976”), as the Defendant’s Opposition was filed before the Trademarks Act 2019 was passed and enforced. C. Issues [7] The plaintiff claimed that in allowing the Defendant’s Opposition, the learned Registrar had erred in law and/or in fact: a. In determining that the registration and/or use of the Plaintiff’s Mark would contravene sections 14 and 19 of the TMA 1976; b. In holding that the use of the Plaintiff’s Mark would likely deceive or cause confusion to the public on the ground that the Plaintiff’s Mark is confusingly similar to and indistinguishable from the Defendant’s Mark; c. In failing to recognise that the Defendant’s Mark, as submitted for registration, was not an original artistic creation or depiction but appears to have been captured from an unverifiable source; d. In not recognising the fact that the plaintiff is the originator and/or bona fide proprietor of the Plaintiff’s Mark; e. In failing to give substantial weight and due consideration to the fact that the plaintiff has acquired reputation and goodwill in its business in relation to the Plaintiff’s Mark; f. In holding that the defendant was the first user of the Defendant’s Mark and/or the “Native American” device in Malaysia, and that the defendant has successfully shown use of the Defendant’s Mark in trade in Malaysia prior to the use of the Plaintiff’s Mark; g. In holding that the plaintiff had claimed use of the Plaintiff’s Mark since 1995 or 1996; h. In holding that the evidence adduced by the plaintiff failed to adequately show the use of the Plaintiff’s Mark since 2009; i. In finding that the Plaintiff’s Mark was not registrable under section 10 of the Trade Marks Act 1976; and j. In neglecting to consider the demonstrated pattern of bad faith by the defendant, where the defendant had repeatedly attempted to register trademarks that are confusingly similar to prior and/or well-known marks. [8] Premised on the claims of errors of law and/or facts in the decision of the learned Registrar, the court found the following issues to be relevant to the determination of this matter: a. Who was the first user of the “Native American” mark? b. When did the plaintiff first use the Plaintiff’s Mark? c. Would the registration of the Plaintiff’s Mark contravene sections 14 and 19 of the TMA 1976? d. Is the Plaintiff’s Mark distinctive and registrable under section 10 of the TMA 1976? e. Was there a pattern of bad faith by the defendant in its previous trademark registration attempts? D. Issue 1: Who Was The First User Of The Native American Mark? [9] The learned Registrar referred to the mark depicting a person wearing a Native American headgear as the “Native American” mark. The learned Registrar found that the defendant was the first user of the Native American mark in Malaysia, on the basis that the defendant had used the Defendant’s Mark since 1996. [10] This finding was reached after the learned Registrar considered: a. Handwritten invoices from 1996 and 1997 and printed invoices from 2008 to 2017 (collectively, the “Invoices”); and b. Photographs of products contained in statutory declarations of Kong Chee Wai on 4 August 2017 (“First Statutory Declaration”) and 5 June 2018 (“Second Statutory Declaration”) (collectively, “Product Photographs”). The defendant claimed these documents show the use of the Defendant’s Mark in Malaysia. [11] However, the court notes that none of the Invoices show the actual use of the Defendant’s Mark. Instead, they only feature item numbers of the products. There is no indication that these item numbers refer to goods bearing the Defendant’s Mark. [12] In Godrej Sara Lee Ltd v Siah Teong Teck (Part 2) [2007] 7 MLJ 164, the High Court held that: “[25] … For actual use to arise, there must be use of the mark on or in relation to goods. This would include affixing the mark to the goods or in an advertisement, circular or a catalogue …” [13] Similar approaches were taken in the following cases: a. In Al Baik Fast Food Distribution Co SAE v El Baik Food Systems Co SA [2016] 9 MLJ 466, the court held that an advertisement placed by an agent of the defendant in The Star newspaper was not an advertisement of the defendant’s restaurant service or products bearing their registered trademarks in the course of trade. Instead, the advertisement was a public notice of the ownership of the trademarks and possible legal actions on potential infringements. The public notice did not show any use by the defendant of the trademark in Malaysia at that time, and there was no use of the defendant’s ‘AL BAIK’ mark on any particular goods or services of the defendant in Malaysia. Therefore, the court held that there is no evidence of the use of the mark. b. In Essity Hygiene and Health Ab v Praba’s Vcare Health Clinic Privited Limited [2019] MLJU 804, the court found that the defendant’s list of online Malaysian customers lacked credibility, as it was self-serving evidence without any cogent documentary proof of sales transactions of products bearing the impugned mark. The court also noted that the trade documents provided by the defendant only demonstrated activities related to manufacturing, distribution, advertising and regulatory compliance of their products. There was no clear evidence that the products referenced in these documents bore the impugned mark. [14] It is clear from the above cases that actual use of a trademark requires clear and direct evidence of the mark being used on or in relation to the goods or services in question. In the present case, the Invoices only contain item numbers of the products. There is no indication that these item numbers refer to goods bearing the Defendant’s Mark. Thus, there is no clear or direct evidence of the Defendant’s Mark being used in relation to the defendant’s products. [15] Further, from my examination of the Product Photographs, the dates on the photographs do not appear to have been part of the original date stamp of the photographs. Instead, the dates seem to have been added to the photographs. I further observed that the appearance of the dates in the Products Photographs in the Second Statutory Declaration differs from the dates in the Product Photographs in the First Statutory Declaration. The dates are clearer in the Second Statutory Declaration, as compared to their appearance in the First Statutory Declaration. Thus, I find that the original photographs were likely to have been undated, with the dates inserted later on the Product Photographs. [16] In Hyundai Motor Company v Sun Yuen Rubber Manufacturing Co Sdn Bhd [2017] MLJU 700, the High Court held that an undated document which stated that the registered mark had been used on the defendant’s goods could not prove the defendant’s use of the registered mark on the defendant’s goods during the relevant period. [17] Similarly, in the present case, since there are no original date stamps on the Product Photographs, and the dates in varying years were likely to have been incorporated into the Product Photographs, the court finds that the Product Photographs cannot be relied on to conclusively establish that the Defendant’s Mark was used on the products at the material time. [18] Thus, based on the evidence before the court, I find that the defendant has failed to substantiate its claim that it was the first user of the Native American device in Malaysia, and that it had used the Defendant’s Mark prior to the plaintiff’s use of the Plaintiff’s Mark. E. Issue 2: When Did The Plaintiff First Use The Plaintiff’s Mark? [19] I went on to consider the first use by the plaintiff of the Plaintiff’s Mark. [20] My first observation is that the learned Registrar had held that the plaintiff claimed the use of the Plaintiff’s Mark since 1995 or 1996, and that this claim could not be substantiated. I find the learned Registrar had erred in so holding, as this was not the stand taken by the plaintiff. Instead, from my assessment of the plaintiff’s case, it is clear that the plaintiff merely highlighted that it was established in 1995, and since then, it had produced and distributed men’s footwear using various marks. The plaintiff did not claim to use the Plaintiff’s Mark since 1995 or 1996. [21] Rather, the plaintiff’s claim is that it had first used the Plaintiff’s Mark in 2009. The plaintiff adduced the following documents to support its claim: a. The August 2009 issue of Men’s Uno Malaysia magazine, which contains a shoe advertisement with the Plaintiff’s Mark; b. Information on the “DC WHITE Soft Launch Activity” with HOT FM Radio in September 2009; c. The “DC WHITE Sales Kit 2009”, which contains photographs of shoes and the Plaintiff’s Mark; and d. Information on DR. CARDIN products for the years 2009 to 2010, which contains photographs of shoes and the Plaintiff’s Mark. [22] These documents contain the Plaintiff’s Mark, and are in my view sufficient to prove the use of the Plaintiff’s Mark by the plaintiff in the course of its trade since 2009. [23] The court notes that in the documentary evidence provided, the Plaintiff’s Mark was at times used by the plaintiff with slight alterations, namely without the words “DC WHITE” or with the words “DR. CARDIN”. I find that such alterations do not affect the identity of the Plaintiff’s Mark, as the distinctive and dominant element of the Plaintiff’s Mark – the Native American device – remains intact. [24] Section 23(2) of the TMA 1976 provides that: “Where under this Act use of a registered trade mark is required to be proved for any purpose, the Court or the Registrar may, if and so far as it or he shall think right, accept use of an associated trade mark or of the trade mark with additions and alterations not substantially affecting its identity as an equivalent for such use.” (emphasis added) [25] In Tan Kim Hock Tong Seng Food Industry Sdn Bhd v Tan Kim Hock Product Centre [2016] 7 MLJ 561, the High Court adopted the principles in Re Morny Ltd’s Trade Marks (1951) 68 RPC 55, which held that trademark law recognised the undesirability of requiring proprietors of registered trademarks to maintain the precise form of embellishments or representations which at the time of application were included in the form of the mark submitted for registration. As such, the use of the trademark with alterations not substantially affecting its identity can be treated as equivalent to the use required to be proven. [26] In Tan Kim Hock Tong Seng Food Industry (supra), the dominant feature of the applicant’s registered trademark, “ ” was held to be the red “T” logo with a white coconut tree featuring an “S” logo in the middle. The court found that with or without the words “CAP POKOK KELAPA”, the dominant feature of the applicant’s registered trademark remains the coconut tree device used on the applicant’s products. The non-use of the words “CAP POKOK KELAPA” did not affect the identity of the applicant’s registered mark. Thus, it was held that there was no issue of non-use of the applicant’s registered trademark. [27] The findings of the High Court were affirmed by the Court of Appeal and the Federal Court. [28] In a related application in Tan Kim Hock Product Centre Sdn Bhd & Anor v Tan Kim Hock Tong Seng Food Industry Sdn Bhd [2022] 4 MLJ 306, the Court of Appeal found as follows on the issue of non-use of the trademark: “[61] We observe that the learned High Court judge has dealt with this issue extensively. His Lordship made a finding that the ground of non-use is not proved. In fact the learned High Court judge found that the respondent has continuously used the Registered trademark on its products albeit without the descriptive words ‘Cap Pokok Kelapa’ as provided under s 23(2) of the Trade Marks Act 1976. [62] It is instructive to refer to the decision of the Court of Appeal in Tan Kim Hock Product Centre & Anor v Tan Kim Hock Tong Seng Food Industry Sdn Bhd. This court at paras 25–26 had held: … [25] It was also the forceful submission of counsel for the TKTS Food Industry that the omission of the words — CAP POKOK KELAPA (separately and below the logo) did not affect the dominant feature or the main component of the registered mark itself, namely the large T in red with the coconut tree in white in the middle and also an encircled S also in white. It was reiterated by counsel, and we agreed with him, that the omission of the words CAP POKOK KELAPA did not affect the same continuing commercial impression a consumer of the product would have formed, namely that the product was indeed produced by or originated from TKTS Food Industry. The products of TKTS Food Industry carried the registered trademarks, albeit that the minimal alteration as recognised and countenanced by s 23(1) of the Trade Marks Act 1976. Accordingly, like the learned judge, we were of the view that, there arose no issue of suppression or non-disclosure of ‘abandonment’ of the registered trademark as alleged by the appellant. [63] The Court of Appeal decision has been affirmed by the Federal Court. In the circumstances, it is not our place to depart from a definitive finding on a matter that had been made by our apex court. (emphasis added) [29] Similarly in this case, applying section 23(1) of the TMA 1976 and following the case cited above, the court finds that the use of the Plaintiff’s Mark since 2009 with slight alterations or additions does not affect the identity of the Plaintiff’s Mark, as the distinctive and dominant element of the Plaintiff’s Mark, which is the Native American device, remains intact. [30] Thus, the court finds that the plaintiff has adequately shown that it had used the Plaintiff’s Mark since 2009. F. Issue 3: Would The Registration Of The Plaintiff’s Mark Contravene Sections 14 And 19 Of The TMA 1976? [31] The learned Registrar determined that the registration and/or use of the Plaintiff’s Mark would contravene sections 14 and 19 of the TMA

[32] Sections 14(1)(a) provides that: “(1) A mark or part of a mark shall not be registered as a trade mark –

if the use of which is likely to deceive or cause confusion to the public or would be contrary to law …” (emphasis added) [33] Further, section 19(1)(b) of the TMA 1976 provides that: “(1) No trade mark shall be registered in respect of any goods or description of goods –

that is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same goods or description of goods or in respect of services that are closely related to those goods; or

that so nearly resembles such a trade mark as is likely to deceive or cause confusion.” (emphasis added) [34] Thus, a mark shall not be registered as a trademark if its use is likely to deceive or cause confusion to the public, or if it so nearly resembles a registered trademark of another proprietor as is likely to deceive or cause confusion. [35] The test of what constitutes the likelihood of confusion is set out in Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 2 MLJ 63, which adopted the test in The Pianotist Co Ltd (1906) 23 RPC 774. The Supreme Court affirmed the decision of the High Court, which held that the respondent’s “SISTER” mark was not confusingly similar to the applicant’s “MISTER” mark. In reaching its finding, the court applied the following test in The Pianotist (supra): “You must take the two words. You must judge them, both by their look and their sound. You must consider the goods to 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 those marks are used in a normal way as a trade mark of the goods of the respective owners of the marks.” (emphasis added) [36] The Supreme Court went on to hold that: “In the instant case, the learned trial judge had found that ‘there are two features of the two marks which are similar, namely, red in colour and split in wording’. However, having regard to the totality of the circumstances of the case, the learned judge was apparently satisfied that: there is no similarity between the two words ‘MISTER’ and ‘SISTER’ as to be likely to cause deception or confusion. The words are different. There is similarity in the second syllable but as a whole the similarity is not close enough as to be likely to cause deception or confusion. Further, the get-up of the intervener’s product is green background colour with the picture of a lady whereas the get-up of the applicant’s product is white-blue-grey background colour with the picture of a lady and a man. We are in agreement, having regard to the ‘tests’ as mentioned by Wan Adnan J in Chong Fok Shang, citing with the approval Parker J’s judgment in the The Pianotist Co Ltd, the trial judge was correct when he concluded that: Applying the above test and considering the appearance of the two marks together with their features I find that it is not likely that ordinary purchasers would be deceived into regarding the intervener’s product to be the product of the applicant.” (emphasis added) [37] Further, in considering whether allegedly similar trademarks would cause confusion to the public, the Court of Appeal in Bata Ltd v Sim Ah Ba @ Sim Teng Khor (trading as Kheng Aik Trading) [2006] 6 MLJ 445, held that similar trademarks are per se acceptable, as long as the similarities do not lead to a likelihood of confusion or deception. The Court of Appeal also held that: “[22] A possibility of confusion is not sufficient. There must be 'a real tangible danger of confusion' — see Farwell J in Re William Bailey (Birmingham) Ltd's Application 52 RPC 153 at line 24.” (emphasis added) [38] I must also stress that in determining whether there is a likelihood of deception or confusion, marks must be considered and compared as a whole, and not part by part (see Bata Ltd (supra), Elba Group Sdn Bhd v Pendaftar Cap Dagangan dan Patent Malaysia [1998] 4 MLJ 105 and Shaifubahrim bin Mohd v EM Exhibitions (M) Sdn Bhd & Anor [2012] 9 MLJ 84). [39] The courts have also found there to be no likelihood of deception and/or confusion between two marks, purely on the basis that they contained elements which convey the same broad idea. In In The Matter of Shamrock & Co.’s Application (1907) 24 RPC 569, it was held that a mark comprising a device of a shamrock leaf with its stalk continuing so as to form “and Company” was not confusingly similar to a mark comprising an inverted shamrock leaf with the words “MW and Company”. In a more recent case, Polo / Lauren Co LP v United States Polo Association [2002] SLR 326, the Singapore High Court examined two marks containing the device of a polo player. One of the differences between the two marks is that one had the letters “USPA” as part of the composite mark. The court held that this difference was sufficient to draw a clear distinction between the two marks. [40] Guided by the cases cited above, and after careful consideration of the Plaintiff’s Mark and the Defendant’s Mark and comparing the marks as a whole, the court finds that although there are similarities between them, these similarities do not lead to a likelihood of deception or confusion. Although both marks contain the Native American device, the marks are not identical and contain some differences between them: a. The figures on the Plaintiff’s Mark and the Defendant’s Mark face the opposite direction. b. The phonetic elements of the Plaintiff’s Mark, “DC WHITE”, are pronounced and distinct. The Defendant’s Mark does not contain any phonetic element. c. The Plaintiff’s Mark features the plaintiff’s distinctive “ ” logo on the headphone. The Defendant’s Mark on the other hand contains an italicised letter “M” on the headphone. [41] As such, the court finds that the plaintiff’s use of the Plaintiff’s Mark does not confuse or deceive the public into believing that the plaintiff’s goods are connected or associated with the defendant, as there are distinctive and distinguishing features between them. [42] The court had also considered evidence of the first use of the Plaintiff’s Mark and the Defendant’s Mark, and had earlier concluded that the Plaintiff’s Mark was first used in 2009, while there is insufficient evidence of the first use of the Defendant’s Mark. As such, it is the court’s finding that on the balance of probabilities, the similarities between the two marks arise as a result of the defendant’s attempt to imitate the Plaintiff’s Mark. As such, the defendant’s claim that the Plaintiff’s Mark will be confused with the Defendant’s Mark is without basis, since it is more likely than not that the Defendant’s Mark will be confused with the Plaintiff’s Mark. [43] The defendant also argued that the plaintiff is prohibited from registering the Plaintiff’s Mark, which contains the Native American device, as section 35(1) of the TMA 1976 grants an exclusive right to the defendant to use the Native American device. [44] I find this argument to be misconceived. Section 35(1) of TMA 1976 provides that: “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.” (emphasis added) [45] It is clear that section 35(1) grants the defendant the exclusive right to use the Defendant’s Mark. However, this exclusive right does not extend to the Native American device which forms part of the Defendant’s Mark. The defendant’s exclusive right to use is limited to the Defendant’s Mark as registered, and this right is enforceable against marks that are identical or confusingly similar to the Defendant’s Mark. The court finds that section 35(1) of the TMA 1976 does not restrict the plaintiff from registering the Plaintiff’s Mark, as long as the Plaintiff’s Mark is distinct and distinguishable from the Defendant’s Mark. [46] With the findings as set out, it is my considered view that the registration of the Plaintiff’s Mark would not contravene sections 14(1)(a) and 19(1)(b) of the TMA 1976. G. Issue 4: Is the Plaintiff’s Mark Distinctive And Registrable Under Section 10 Of The TMA 1976? [47] The learned Registrar found that the Plaintiff’s Mark is not registrable as it lacks distinctiveness. In coming to this finding, the learned Registrar relied on section 10 of the TMA 1976. [48] Section 10 provides that a trademark registered or proposed to be registered must be distinctive. The provision further states as follows: “(2A) For the purposes of this section, "distinctive", in relation to the trade mark registered or proposed to be registered in respect of goods or services, means the trade mark must be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registration.

In determining whether a trade mark is capable of distinguishing as aforesaid, regard may be had to the extent to which –

the trade mark is inherently capable of distinguishing as aforesaid; and

by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid.” (emphasis added) [49] Illinois Tool Works, Inc v Pendaftar Cap Dagangan, Malaysia [2009] 9 MLJ 101 is instructive on the question of distinctiveness. The court held as follows: “[56] In this case, in rejecting the appellant’s application the registrar was of the view that the appellant trademark was not distinctive; and therefore not registrable. [57] The court finds otherwise. The appellant had never used its trade mark to describe its goods. The words used are not descriptive in nature that relates to the goods in question. In coming to its conclusion on this issue, the registrar had broken up the appellant’s mark into its individual and separate component namely ‘HIGH’, ‘TEMP’ and ‘RED’, when the registrar was supposed to consider the mark ‘HIGH TEMPT RED’ in one singular fashion and as one singular word as applied by the appellant. [58] In the matter of An application by the Diamond T Motor Company to (Register A Trade Mark (Diamond T case) (1921) 38 RPC 373, the court clearly stated that the correct test is as follows: ... in order to ascertain whether the applicant’s mark is registrable trademark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the applicants from those of other manufactures, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves under paras (1)–

(4). Now it has often been said that it is wrong, in judging whether a combination mark is distinctive or not, to dissect the mark, and to show that each of its component parts is not distinctive in itself and then, as the result of this process to conclude that the mark as a whole is not distinctive. … [63] The undisputed fact is that the appellant is the person who coined or created its trademark. The appellant had been using the mark since 1999 until now (ten years). Sales reached millions of ringgit. No one in the public or in the relevant industry or trade ever use or desire to use the same mark. No one has ever filed or registered any trademark that is identical or even similar to it. There is no likelihood of anyone wanting to use the same or similar mark like the appellant. There was no complaint received by the appellant over this course of trade from anyone, without improper motive, be it from the public at large or from the trade/industry, that its mark is descriptive of anything. Only the appellant had used its mark for the past 10 years. The registrar in fact had accepted the appellant’s mark as distinctive in another trademark registration (02005833). The appellant’s mark singularly has no meaning other than as a trademark. [64] The appellant’s mark is therefore distinctive of the appellant. It does not describe its goods. It is not descriptive in any trademark sense. It is peculiar and odd. It is a rare if not an uncommon mark. There was no evidence adduced by the registrar to show that the mark was commonly used or can be understood by the public at large as descriptive of silicone for asbestos, cork, gasket or felt. The appellant’s mark is distinctive. It has no direct or obvious meaning when applied on the goods in question. [65] By reason of the above, the court finds that the appellant’s mark is distinctive and therefore registrable under s 10(1)(e) of the Act.” (emphasis added) [50] In Yong Sze Fan v Sharifah binti Mohd Tamin [2008] 7 MLJ 803 also examined the test of distinctiveness, finding as follows: “[27] In deciding inherent distinctiveness, the case of W & G Du Cros Ltd’s Application (1913) 30 RPC 660 can be relied upon. It was held by Lord Parker at p 671 as follows: The applicant for registration in effect says ‘I intend to use this mark as a trademark ie, for the purpose of distinguishing my goods from the goods of other persons’, and the Registrar or the court has to determine, before the mark is admitted to registration, whether it is such a kind that the applicant, quite apart from the effects of registration, is likely to attain the object he has in view. The applicant’s chance of success in this respect, must, I think largely depend upon whether other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the same mark, or some mark closely resembling it, upon or in connection with their own goods. [28] Flowing from this argument, it is clear that since TAMIN is not the normal or usual way of describing the goods of interest, other traders without improper motive need not use the mark to describe similar goods. Emphasis is added to the word improper motive as the use by the applicants in this case cannot count as their use is not as a descriptor but to gain some unlawful advantage to the detriment of the respondents.” (emphasis added) [51] The court further found that the extensive use of the “TAMIN” mark by the respondents and their predecessors-in-title shows that the mark is factually as well as inherently distinctive. [52] Thus, applying section 10 of the TMA 1976 and guided by the cases cited, the court finds the Plaintiff’s Mark to be distinctive, in that it is capable of distinguishing products which the plaintiff is or may be connected to in the course of trade, from goods and services in which no such connection exists. This finding is made after taking the following into account: a. The Plaintiff’s Mark is not the normal or usual way of describing the plaintiff’s goods, namely footwear and other similar goods. Thus, there would be no need for other traders to use the mark to describe similar goods. Traders who use the mark to describe similar goods would likely have improper motives for doing so. b. The Plaintiff’s Mark is inherently distinctive and uniquely associated with the plaintiff. It is peculiar, uncommon and stands out as rare in the marketplace. c. The image of the Defendant’s Mark appears to be a photograph captured from an unverifiable source, as opposed to an original artistic creation. This is in contrast to the Plaintiff’s Mark which looks to be an original artistic creation. d. There is sufficient evidence to prove that the plaintiff had been using the Plaintiff’s Mark since 2009. This is in contrast to the defendant’s evidence that it had used to the Defendant’s Mark since 1996, which the court found to be insufficient. Thus, on the balance of probabilities, the plaintiff is likely to have been the one who had created the Native American device. e. As the plaintiff has demonstrated extensive use of the Plaintiff’s Mark since 2009, the Plaintiff’s Mark is also factually distinctive due to its widespread recognition. [53] As such, the court finds there to be no confusing similarity between the Plaintiff’s Mark and the Defendant’s Mark. The Plaintiff’s Mark is fully capable of distinguishing the plaintiff’s goods from similar products of other traders, including the defendant. The Plaintiff’s Mark is inherently distinctive, and has also acquired additional factual distinctiveness through its extensive use, advertising and promotion. [54] Thus, the court finds the Plaintiff’s Mark to be registrable under section 10 of the TMA 1976. H. Issue 5: Was There A Pattern Of Bad Faith By The Defendant In Its Previous Trademark Registration Attempts? [55] It is in evidence that the defendant had sought to register trademarks that closely imitate, both visually and conceptually, established and well-known trademarks. These include marks closely resembling the “Fitflop”, “Roxy” and “Quiksilver” marks. The defendant’s attempts were subsequently faced with opposition, and some marks were abandoned. This conduct indicates a strategy to capitalise on the reputation and goodwill of established brands. [56] With the court’s finding that the plaintiff had been using the Plaintiff’s Mark continuously and extensively since 2009, the defendant would likely have had actual or constructive knowledge of the Plaintiff’s Mark. As such, the defendant’s use of a mark that is similar to the Plaintiff’s Mark gives rise to the inevitable conclusion that the same strategy undertaken by the defendant for other established brands – namely, capitalising on their goodwill and reputation – was adopted in the registration of the Defendant’s Mark. [57] It is also worth noting that there is no clear explanation given by the defendant as to why it had used a mark similar to the Plaintiff’s Mark for its goods. In Yong Teng Hing b/s Hong Kong Trading Co v Walton International Ltd [2012] 6 MLJ 609, the Federal Court found the lack of a plausible explanation for the appellant’s choice of the mark to be an indication that the appellant did not independently devise the mark himself. The court held as follows: “[17] We noted that the Court of Appeal in the present case had also made a crucial finding of fact that the appellant had not ‘independently devised the mark himself’. The Court of Appeal held that the appellant had tried to obtain the benefit of the worldwide reputation of the respondent. In our view such a finding is not unreasonable bearing in mind that the appellant had failed to offer any plausible explanation on his choice of mark which is identical to the respondent’s mark.” (emphasis added) [58] A similar case presents itself before this court, where the defendant had attempted to obtain the benefit of the plaintiff’s goodwill and reputation in registering the Defendant’s Mark, which is similar to the Plaintiff’s Mark. [59] From the evidence before the court, I find there to be a pattern of bad faith in the defendant’s filing of trademark applications similar to the marks of well-known brands, which includes the Plaintiff’s Mark. I. Decision [60] From the totality of the evidence before this court, the court finds that the plaintiff has proven its case that the learned Registrar had erred both in fact and in law in allowing the Defendant’s Opposition. [61] As such, the court allowed the originating summons and set aside the decision of the learned Registrar dated 18 March 2024. The court ordered costs of RM30,000 to be paid by the defendant to the plaintiff. Dated 12 December 2024 ADLIN ABDUL MAJID Judge High Court of Malaya Kuala Lumpur Counsel: Plaintiff : Michael Soo (together with Annabelle Koh) of Messrs. Shook Lin & Bok Defendant : PC Kok (together with Ng Pau Chze) of Messrs. PC Kok & Co