Hakubaku Co. Ltd. v Asiamega Food Manufacturers Sdn. Bhd. (WA-24IP-23-12/2017)

The plaintiff company (Plaintiff) is a Japanese company which manufactures, among others, noodles.

In this Amended Originating Summons in Court enc. no. 19 (Expungement Application), the Plaintiff applies to Court under s 45(1)(a) of the Trade Marks Act 1976 (TMA) to expunge a trade mark (Registered Trade Mark) registered by the defendant company (Defendant) under TMA for goods in Class 30 (among others, noodles). A copy of the Registered Trade Mark is attached to this judgment as “Annexure A”. 2

The Plaintiff claims to be the first bona fide user in the course of trade (1st User) of “Hakubaku Combination Device” mark (Hakubaku Combination Device Mark) in Malaysia. A copy of Hakubaku Combination Device Mark is attached to this judgment as “Annexure B”.

The Plaintiff claims copyright in the following three works (3 Hakubaku

Hakubaku Combination Device Mark;

“Hakubaku Device” mark (Hakubaku Device Mark) (attached to this judgment as “Annexure C”); and

“Japanese Hakubaku Combination Device” mark (Japanese Hakubaku Combination Device Mark) (attached to this judgment as “Annexure D”). B. Issues

The following questions arise in this Expungement Application:

whether the Plaintiff can rely on affidavits affirmed in English by deponents in Japan (Plaintiff’s Affidavits) before a Japanese Notary Public (NP) when -

the NP’s seals on the Plaintiff’s Affidavits have been certified to be genuine by an officer of Japan’s Ministry of Foreign Affairs (Japanese Government Officer); and 3

the signatures of the Japanese Government Officer on the Plaintiff’s Affidavits have been certified to be genuine by a Consular Officer of the Malaysian Embassy in Japan (Malaysian Consular Officer). The above issue discusses -

Article 152(1), (4) and (5) of the Federal Constitution (FC) as well as s 8 of the National Languages Act 1963/1967 (NLA);

(ii) the application of O 1A, O 2 r 1(2), O 41 rr 12, 13 and O 92 r 1(1) of the Rules of Court 2012 (RC) on the admissibility of affidavits. In this respect, I am unable to find any previous Malaysian case which has construed O 41 r 13 RC; and

(iii) whether the Plaintiff is required under RC to name the translator who has translated the contents of documents exhibited in the Plaintiff’s Affidavits (Exhibits) from Japanese to English (Translator);

is the Plaintiff estopped from filing this Expungement Application on the ground that the Plaintiff did not oppose the Defendant’s application to the Registrar of Trade Marks (Registrar) to register the Registered Trade Mark (Defendant’s Application) under s 30(1)(a) TMA and reg. 37(a) of the Trade Marks Regulations 1997 (TMR)?; 4

whether the Plaintiff is aggrieved by the Registered Trade Mark so as to be entitled to file this Expungement Application under s 45(1)(a) TMA;

who was the 1st User of Hakubaku Combination Device Mark in Malaysia? In this regard -

has the Federal Court in Liwayway Marketing Corporation v Oishi Group Public Company Ltd [2017] 4 MLJ 141 laid down a rule of law that a person who has successfully applied to register a trade mark under TMA is the 1st User of the trade mark and is therefore its Common Law proprietor?;

can the Defendant allege that a document produced from a computer (exhibited in the Plaintiff’s Affidavit) is a fabrication when such an allegation is not averred in any of the Defendant’s affidavits?;

whether the Plaintiff could rely on documents which were not exhibited in the first Plaintiff’s Affidavit but were only exhibited in a subsequent Plaintiff’s Affidavit; and

can the Defendant contend that the Court cannot consider the Exhibits on the ground that the prejudicial effect of the Exhibits outweigh their probative value?;

if the Plaintiff was the 1st User of Hakubaku Combination Device Mark in Malaysia - 5

can the Defendant apply to register the Registered Trade Mark under s 25(1) TMA?; and

whether the Registered Trade Mark should be removed from the Register of Trade Marks (Register) pursuant to the first limb of s 14(1)(a) TMA on the ground that the use of the Registered Trade Mark is likely to deceive or cause confusion to the public; and

if the Defendant was the 1st User of the Registered Trade Mark in Malaysia -

whether the Plaintiff can remove the Registered Trade Mark from the Register on the ground that the Defendant has committed a tort of passing off;

does the Plaintiff own copyright in the 3 Hakubaku Marks under the Copyright Act 1987 (CA)?;

if the Plaintiff owns copyright in the 3 Hakubaku Marks, has the Defendant infringed the Plaintiff’s copyright in the 3 Hakubaku Marks pursuant to the first limb of s 36(1) read with s 13(1)(a)

if the Defendant has infringed the Plaintiff’s copyright in the 3 Hakubaku Marks, whether the Plaintiff can expunge the Registered Trade Mark from the Register under the second limb 6 of s 14(1)(a) TMA on the ground that the use of the Registered Trade Mark “would be contrary to law”. Regarding this issue, I will express my view on the third part of s 14(1)(b) TMA (a registered trade mark is not entitled to protection by a court) (not submitted by learned counsel of both parties in this case). C. Admissibility of Plaintiff’s Affidavits

The Defendant’s learned counsel, Mr. Kok Pok Chin, has submitted as follows:

the Plaintiff’s Affidavits should have been affirmed before -

a person authorized to administer oath from a Commonwealth country; or

a Malaysian Consular Officer; and

the Plaintiff’s Affidavits should have named the Translator.

Article 152(1), (4) and (5) FC do not provide for admissibility of affidavits and their exhibits. Article 152(1), (4) and (5) FC provide as follows: “National language 152(1) The national language shall be the Malay language and shall be in such script as Parliament may by law provide: Provided that - 7

no person shall be prohibited or prevented from using (otherwise than for official purposes), or from teaching or learning, any other language; and

nothing in this Clause shall prejudice the right of the Federal Government or of any State Government to preserve and sustain the use and study of the language of any other community in the Federation. …

Notwithstanding the provisions of Clause (1), for a period of ten years after Merdeka Day, and thereafter until Parliament otherwise provides, all proceedings in the Federal Court, the Court of Appeal or a High Court shall be in the English language: Provided that, if the Court and counsel on both sides agree, evidence taken in the language spoken by the witness need not be translated into or recorded in English.

Notwithstanding the provisions of Clause (1), until Parliament otherwise provides, all proceedings in subordinate courts, other than the taking of evidence, shall be in the English language.” (emphasis added).

Section 8 NLA provides as follows: “Language of Courts 8. All proceedings (other than the giving of evidence by a witness) in the Federal Court, Court of Appeal, the High Court or any Subordinate Court shall be in the national language: 8 Provided that the Court may either of its own motion or on the application of any party to any proceedings and after considering the interests of justice in those proceedings, order that the proceedings (other than the giving of evidence by a witness) shall be partly in the national language and partly in the English language.” (emphasis added). Section 8 NLA does not provide for admissibility of affidavits and their exhibits.

I reproduce below O 1A, O 2 r 1(2), O 41 rr 12, 13 and O 92 r 1(1) RC: “Regard shall be to justice O 1A In administering these Rules, the Court or a Judge shall have regard to the overriding interest of justice and not only to the technical non-compliance with these Rules. O 2 r 1(2) These Rules are a procedural code and subject to the overriding objective of enabling the Court to deal with cases justly. The parties are required to assist the Court to achieve this overriding objective. Affidavit taken outside Malaysia admissible without proof of seal O 41 r 12 A document purporting to have affixed or impressed thereon or subscribed thereto the seal or signature of a Court, Judge, notary public or person having authority to administer oaths in a Commonwealth country and in the case of any other country the seal or signature of a consular officer of a Commonwealth country in testimony of an affidavit being taken before it or him shall be admitted in evidence 9 without proof of the seal or signature being the seal or signature of that Court, Judge, notary public or person. Language of affidavit O 41 r 13 An affidavit of a deponent affirmed outside the jurisdiction may be filed in the English language and, unless the Court otherwise orders, need not be accompanied by a translation in the national language. Language of documents O 92 r 1(1) Subject to paragraph (2), any document required for use in pursuance of these Rules shall be in the national language and may be accompanied by a translation thereof in the English language, except that the translation for the purpose of Order 11, rule 6(4) and rule 7(1) shall be prepared in accordance with rule 6(5) of that Order: Provided that any document in the English language may be used as an exhibit, with or without a translation thereof in the national language.” (emphasis added).

I am of the following view:

the previous O 41 of the Rules of the High Court 1980 (RHC) has no provision which is equivalent to O 41 r 13 RC. Hence, the following High Court cases regarding O 41 RHC should be read with caution -

NV Sumatra Tobacco Trading Co v PT Sampoerna JL Sdn Bhd [1997] 3 CLJ 946, at 958-959; and 10

Ian James Rogers v Menteri Sumber Manusia & Anor [1998] 5 MLJ 290, at 292-293;

O 41 r 13 RC has expressly provided that unless the Court otherwise orders, an affidavit of a deponent affirmed outside Malaysia may be filed in English and need not be accompanied by a translation in Malay;

O 92 r 1(1) RC applies to “any document”. The word “document” has been defined in O 1 r 4(1) RC to include an affidavit. Having said that, O 41 r 13 RC is a specific provision on the admissibility of affidavits affirmed by deponents outside Malaysia while O 92 r 1(1) RC is a general provision regarding affidavits. By virtue of the rule of statutory interpretation of “generalibus specialia derogant”, the specific O 41 r 13 RC should prevail over the general O 92 r 1(1) RC. In the Court of Appeal case of Luggage Distributors (M) Sdn Bhd v Tan Hor Teng & Anor [1995] 1 MLJ 719, at 758-759, Gopal Sri Ram JCA (as he then was) applied the maxim generalibus specialia derogant to give effect to a specific provision of the National Land Code (NLC) in preference to a general provision in NLC;

O 41 r 12 RC merely provides that the following seal or signature “shall be admitted in evidence without proof” -

a foreign Court;

a foreign Judge; 11

a foreign NP;

a person having authority to administer oaths in a Commonwealth country; and

a consular officer of a Commonwealth country. O 41 r 12 RC does not exclude the admissibility of affidavits affirmed in English (without a Malay translation) by deponents outside Malaysia pursuant to O 41 r 13 RC. This is because O 41 r 13 RC does not provide that it is subject to O 41 r 12 RC. Nor does O 41 r 12 RC contain the words “Notwithstanding O 41 r 13 RC”;

according to the proviso to O 92 r 1(1) RC, any document in English may be exhibited in an affidavit without a Malay translation; and

the above construction of O 41 r 12, 13 and O 92 r 1(1) RC is consistent with O 1A and O 2 r 1(2) RC which enables the Court to deal with cases with regard to the overriding interest of justice and not only to the technical non-compliance with RC.

Based on the above interpretation of O 1A, O 2 r 1(2), O 41 rr 12, 13 and O 92 r 1(1) RC -

there is no requirement under O 41 rr 12 and 13 RC for the Plaintiff’s Affidavits to be affirmed in Japan before - 12

a person authorized to administer oath in a Commonwealth country; or

a Malaysian Consular Officer;

the Defendant did not apply to Court for an order under O 42 r 13 RC that the Plaintiff’s Affidavits could only be admitted as evidence if the Plaintiff’s Affidavits were accompanied by a Malay translation. In fact, the Defendant had replied to all of the Plaintiff’s Affidavits. The Defendant has also filed two detailed written submissions to oppose this Expungement Application. There was therefore no prejudice to the Defendant occasioned by the fact that the Plaintiff’s Affidavits and their exhibits were solely in English;

the NP’s seals and signatures on the Plaintiff’s Affidavits shall be admitted under O 42 r 12 RC without proof of those seals and signatures. In this case, the Plaintiff had gone further and adduced the certification of the NP’s seals on the Plaintiff’s Affidavits by a Japanese Government Officer and the signatures of the Japanese Government Officer had been certified to be genuine by a Malaysian Consular Officer;

the Plaintiff’s Affidavits in Egnlish are admissible under O 42 r 13 RC;

by virtue of the proviso to O 92 r 1(1) RC, the Exhibits (in English) are not required to be translated into Malay; and 13

O 41 rr 12, 13 and O 92 r 1(1) RC do not require the Plaintiff to identify the Translator. The identity of the Translator does not ensure the accuracy of the translation of the Exhibits. If the English translation of the Exhibits was inaccurate, the Defendant should have stated as such in its affidavits and should have exhibited the correct translation (in Malay or English) of the Exhibits. This is however not the case. It is to be noted that the English translation of the Exhibits contains a certification by a Senior Executive of the Malaysian Institute of Translation & Book, Encik Jasmani Mardi, that the English translation is “true” . D. Is Plaintiff estopped from filing Expungement Application?

Mr. Kok has submitted as follows:

the Plaintiff did not object to the Defendant’s Application. Reliance had been placed by the Defendant on s 30(1)(a) TMA and reg. 37(a) TMR which provide as follows - “Registration of trade mark 30(1) TMA When an application for registration of a trade mark in the Register has been accepted and either -

the application has not been opposed and the time for opposition has expired; or 14

the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall, unless the application has been accepted in error, register the trade mark in the Register on payment of the prescribed fees in the name of the proprietor, and the trade mark so registered shall be registered as of the date of application for registration and that date shall be deemed for the purpose of this Act to be the date of registration. Opposition reg. 37 TMR Any person may, within two months from the date of any advertisement in the Gazette of an application for registration of a -

trade mark; … give notice in writing to the Registrar on Form TM 7 accompanied by the prescribed fee of opposition to the registration, and in any such case shall at the same time send a copy of the notice to the applicant.” (emphasis added); and

on 15.10.2015 the Plaintiff had applied to the Registrar to register the Hakubaku Combination Device Mark in Class 30 and Class 31 (among others, vegetables) (Plaintiff’s Applications) but the Registrar did not allow the Plaintiff’s Applications.

I am not able to accept the above contention for the following reasons: 15

in Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Ltd [2012] 6 CLJ 337, at paragraph 22, Zulkefli Makinuddin CJ (Malaya) (as he then was) delivered the following judgment in the Federal Court - [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 the English Court of Appeal’s case of Special Effects Ltd v. L’Oreal SA [2007] RPC 15 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). Based on Yong Teng Hing, the Plaintiff is not estopped from filing the Expungement Application under s 45(1)(a) TMA on the ground 16 that the Plaintiff has not opposed the registration of the Registered Trade Mark under s 30(1)(a) TMA and reg. 37(a) TMR. Nor is the Plaintiff estopped from filing this Expungement Application because the Registrar has not allowed the Plaintiff’s Applications;

in the Federal Court case of Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor, Registrar of Trade Marks (Intervener) & Another Appeal [2015] 4 CLJ 20, at paragraphs 25 and 27, Zulkefli Makinudin CJ (Malaya) held as follows - “[25] We are of the view that neither the court nor the Registrar has the discretion to allow a mark that has been wrongfully registered to continue to remain on the Register. Once the grounds for revocation or removal of a mark have been made out, the mark must be removed or expunged from the Register. … [27] On the contention of the defendants and in support of the findings of the Court of Appeal that once a mark is registered by the Registrar, it is prima facie a valid trade mark, we are of the view that this is a rebuttable presumption. Once evidence is shown that the registered mark is invalid and should not have been registered in the first place the natural remedy would be to remove the invalid mark from the Register. Registration is therefore not a defence in relation to marks that have been wrongfully entered on to the Register. On this point we would refer to the case of Industria De Diseno Textil SA v. Edition Concept Sdn Bhd [2005] 2 CLJ 357 where it was held that even where a trade mark has been properly registered, s. 45(1)(a) of the Act empowers the court to expunge or vary such a trade mark in the 17 event that it becomes confusing as a result of events subsequent to the initial registration.” (emphasis added). According to Ho Tack Sien, the registration of a trade mark and the fact that such a registration is prima facie valid under s 36 TMA, cannot bar an expungement application under s 45(1)(a) TMA when the trade mark has been wrongfully entered in the Register or when it wrongfully remains in the Register; and

if I have accepted the above contention of Mr. Kok, this will render redundant the statutory remedies of expungement of a registered trade mark provided by -

s 45(1)(a) TMA;

s 46(1)(a) TMA; and

s 46(1)(b) TMA. The relevant parts of ss 45(1)(a), 46(1)(a) and (b) TMA read as follows - “s 45

Subject to the provisions of this Act -

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 18 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 if thinks fit; … s 46 Provisions as to non-use of trade mark

Subject to this section and to section 57, the Court may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods or services in respect of which it is registered on the ground -

that the trade mark was registered without an intention in good faith, on the part of the applicant for registration or, if it was registered under subsection 26(1), on the part of the body corporate or registered user concerned, to use the trade mark in relation to those goods or services and that there has in fact been no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or registered user of the trade mark for the time being up to the date one month before the date of the application; or

that up to one month before the date of the application a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or registered user of the trade mark for the time being.” (emphasis added). 19 E. Whether Plaintiff is aggrieved by Registered Trade Mark

Regarding the meaning of an aggrieved person in s 45(1)(a) TMA, in Doretti Resources Sdn Bhd v Fitters Marketing Sdn Bhd & Ors [2017] 5 MLRH 1, I have followed two tests (2 Tests) laid down by the Federal Court in McLaren International Ltd v Lim Yat Meen [2007] 7 MLJ 581 (at paragraph 22) and Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia (Pendaftar Cap Dagangan Malaysia, interested party) [2015] 6 MLJ 465 (at paragraph 28). It was decided in Doretti Resources, at paragraph 28, as follows: “28. In deciding whether the 3 Companies are aggrieved by the Registered Mark under s 45(1)(a) TMA, I am bound by the following 2 tests laid down by the Federal Court:

in [McLaren International], Abdul Aziz FCJ has decided as follows - “[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.” …; and

Azahar Mohamed FCJ held as follows in Mesuma Sports, at paragraph 28 - 20 “[28] ... 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 Plaintiff has the burden under s 106 of the Evidence Act 1950 (EA) to prove that the Plaintiff is aggrieved by the Registered Trade Mark under s 45(1)(a) TMA - please see X1R Global Holdings Sdn Bhd &

Anor v Y-Teq Auto Parts (M) Sdn Bhd [2016] 5 MLRH 41, at paragraph This is because whether the Plaintiff is aggrieved or not by the Registered Trade Mark is “especially within the knowledge” of the Plaintiff as provided in s 106 EA.

The Plaintiff has satisfied the 2 Tests and discharged the onus under s 106 EA to prove that the Plaintiff is aggrieved by the Registered Trade Mark within the meaning of s 45(1)(a) TMA. This decision is premised on the following evidence and reasons:

the Plaintiff is aggrieved by the Registered Trade Mark as understood in the first limb of the meaning of aggrieved person in McLaren International (actual use of trade mark in the course of trade) because there is evidence of the Plaintiff’s 1st User of Hakubaku Combination Device Mark in Malaysia - please see paragraph 22 below; 21

the Plaintiff is aggrieved by the Registered Trade Mark as explained in the second limb of the meaning of aggrieved person in McLaren International because the Plaintiff has a genuine and present intention to use the 3 Hakubaku Marks in the course of trade in Malaysia; and

the Plaintiff is aggrieved by the Registered Trade Mark in the sense explained in Mesuma Sports. This is because the Plaintiff is the 1st User of Hakubaku Combination Device Mark in Malaysia and is therefore its Common Law proprietor (please see paragraph 22 below). Accordingly, the Plaintiff’s Common Law ownership of Hakubaku Combination Device Mark has been adversely affected by the Registered Trade Mark.

Mr. Kok has relied on the judgment of Zulkefli Makinuddin CJ (M) in the Federal Court case of LB (Lian Bee) Confectionary Sdn Bhd v QAF Ltd [2012] 4 MLJ 20 to contend that the Plaintiff is not aggrieved by the Registered Trade Mark because the Plaintiff has infringed the Registered Trade Mark. I am not able to accede to this submission for reasons stated in Munchy Food Industries Sdn Bhd v Huasin Food Industries Sdn Bhd [2018] MRLHU 342, at paragraph 18, as follows: “18. Based on LB (Lian Bee) Confectionary Sdn Bhd v QAF Ltd [2012] 4 MLJ 20, Mr. Indran has contended that Defendant is not aggrieved by Plaintiff’s LEXUS Mark because the Defendant’s use of Lex Mark has infringed the Plaintiff’s LEXUS Mark under s 38(1)(a) TMA and such a use cannot be considered by the court pursuant to the principle 22 of construction in bona partem. With respect, I am unable to accept such a construction for the following reasons:

the facts in LB (Lian Bee) Confectionary can be clearly distinguished from this case as follows -

in the High Court in LB (Lian Bee) Confectionary, at paragraph 1, the respondent company had successfully obtained a trade description order in respect of the use of the trade mark in question (TDO) under the then applicable Trade Descriptions Act 1972;

the appellant company’s appeal against the TDO had been dismissed by the Court of Appeal and the appellant company did not obtain leave of the Federal Court in respect of the TDO - LB (Lian Bee) Confectionary, at paragraphs 2 and 3. Accordingly, any use of the trade mark in question by the appellant company in LB (Lian Bee) Confectionary contravenes the TDO and cannot be considered in deciding whether the appellant company is aggrieved by the respondent company’s registered trade mark under s 46(1)(b) TMA; and

in this case, the Plaintiff has not obtained a “false trade description” order under the present Trade Descriptions Act 2011 in respect of the use of Plaintiff’s LEXUS Mark. As such, Defendant’s use of Lex Mark is, presently, not unlawful and the Defendant is therefore not disentitled from applying to court under s 45(1)(a) TMA to expunge Plaintiff’s LEXUS Mark from the Register (Expungement Application); and

if I have accepted Mr. Indran’s above submission, a mere suit that a party has infringed a registered trade mark under s 38(1)(a) TMA will disqualify the party from being aggrieved by the registered trade 23 mark and will disentitle the party from making an Expungement Application under ss 45(1)(a), 46(1)(a) and/or (b) TMA. The above contention -

is contrary to the 2 Tests as laid down by our apex court;

defeats the purpose of ss 45(1)(a), 46(1)(a) and (b) TMA and will render redundant such statutory provisions; and

may cause an injustice to parties who have legitimate grounds to file an Expungement Application.” (emphasis added). F. Who was 1st User of Hakubaku Combination Device Mark in Malaysia?

In Mesuma Sports, at paragraphs 37-47, Azahar Mohamed FCJ has decided in the Federal Court that the 1st User of a trade mark is its Common Law proprietor and is therefore entitled to apply to the Registrar to register the trade mark under s 25(1) TMA. Section 25(1) TMA provides as follows: “Registration 25(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may make application to the Registrar for the registration of that mark in the Register in the prescribed manner.” (emphasis added). 24

According to s 36 TMA, the fact that the Defendant is registered as proprietor of the Registered Trade Mark shall be prima facie evidence of the validity of its original registration. In view of s 36 TMA as well as ss 101(1), (2) and 102 EA, the Plaintiff has the legal and evidential burden to prove on a balance of probabilities that the Plaintiff is the 1st User of Hakubaku Combination Device Mark in Malaysia - please see GS Yuasa Corp v GBI Marketing Sdn Bhd [2017] 8 MLJ 166, at paragraph 20. F(1). Does Defendant’s Application (leading to registration of Registered Trade Mark) mean that Defendant is 1st User of Registered Trade Mark?

Mr. Kok contends that the Defendant is the 1st User of the Registered Trade Mark by reason of the Defendant’s Application (which is filed on 23.9.2013 and is subsequently allowed by the Registrar). Mr. Kok relies on the Federal Court’s judgment delivered by Balia Yusofi FCJ in Liwayway Marketing, at paragraph 16, as follows: “[16] Learned counsel for Liwayway further submitted that not only the trademarks were not dissimilar, but also claimed that Oishi Group was a subsequent user of the trademark. Liwayway was the first to assert its rights via the trademark filing/registration which was done in the absence of any prior user at that point of time. Oishi Group’s trademark only came to be used in 2013, long after Liwayway had used and registered its trademark in 2003. Based on that, it was submitted that Liwayway ought to be recognised as the common law proprietor of the trademark, making reference to the English Chancery Division case 25 of In re Hudson’s Trade-Marks (1886) 32 Ch D 311 where Cotton LJ said that a person who first designed and first printed or formed a trademark was to be considered as the proprietor of it.” (emphasis added).

I cannot accept the above submission for the following reasons:

before Liwayway Marketing, the Federal Court has decided as follows in Yong Teng Hing, at paragraph 7 - “[7] … It must also be noted that under [TMA] priority to a trade mark is not necessarily accorded to the first party or the first user to file the trade mark. We agree with the submission of learned counsel for the respondent that the entitlement to a trade mark is dependent on a number of factors. Such factors for consideration are whether the applicant is the bona fide proprietor of the trade mark pursuant to s. 25 of the Act and whether the trade mark qualifies for registration pursuant to s. 10 of the Act particularly whether the mark is distinctive of the applicant. A factor to be also considered is whether the trade mark shall be prohibited from registration pursuant to other provisions of the Act, such as ss. and 19 of the Act.” (emphasis added). Premised on Yong Teng Hing, a successful application to register a trade mark under TMA does not confer any priority on the applicant. Having said that, the registration of a trade mark attracts the application of ss 36 (prima facie validity of registered trade mark) 26 and 37 TMA. According to s 37 TMA, if a registered trade mark has been valid for more than 7 years from the date of its original registration, the registered trade mark shall be taken to be valid unless an applicant [who applies to Court to remove the registered trade mark from the Register under s 45(1)(a) TMA] can prove any one or more of the three exceptions in s 37(a), (b) or (c) TMA - please see the judgment of James Foong JCA (as he then was) in the Court of Appeal case of Bata Ltd v Sim Ah Ba & Ors [2006] 3 CLJ 393, at paragraphs 20, 21 and 23. In this case, the Registered Trade Mark is registered on 23.9.2013, less than seven years before the filing of this Expungement Application (on 13.12.2017). Hence, the Defendant cannot avail itself of s 37 TMA;

s 3(2)(a) to (c) TMA have provided the meaning of “use” of a trade mark as follows - “3(2) In this Act -

references to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark;

references to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods; and 27

references to the use of a mark in relation to services shall be construed as references to the use thereof as a statement or as part of a statement about the availability or performance of services.” (emphasis added). A mere application to the Registrar to register a trade mark does not constitute “use” of the trade mark under s 3(2)(a) to (c) TMA. If I have accepted the above submission, this means that a person (X) has priority to a trade mark due to the mere fact of X’s successful registration of a trade mark without X’s “use” of the trade mark within the meaning of s 3(2)(a) to (c) TMA. This will in turn encourage the undesirable practice of “trade mark squatting” as explained in Hyundai Motor Co v Sun Yuen Rubber Manufacturing Co Sdn Bhd [2017] 1 LNS 731, at paragraphs 24(4) and 62(2);

Liwayway Marketing, at paragraphs 8, 9 and 41, only concerns two questions of law regarding s 46(1)(b) TMA. Liwayway Marketing does not concern an application to remove a registered trade mark from the Register under s 45(1)(a) TMA (such as this case). The following cases have held that an application under s 46(1) TMA is different from s 45(1)(a) TMA -

the Federal Court’s decision in McLaren International, at paragraph 7; and

Hyundai Motor, at paragraph 15; and 28

Mr. Kok has only cited a submission of learned counsel for the appellant in Liwayway Marketing. The Federal Court has not decided in Liwayway Marketing that a successful application to register a trade mark means that the registered owner of the trade mark is the 1st User of the trade mark. F(2). Plaintiff is 1st User of Hakubaku Combination Device Mark in Malaysia

The Plaintiff has the legal and evidential burden to prove that the Plaintiff (not the Defendant) is the 1st User of Hakubaku Combination Device Mark in Malaysia - Ooi Siew Bee & Ors v Zhu Ge Kong Ming Sdn Bhd & Anor [2017] 2 AMR 161, at paragraph 63. I find as a fact that the Plaintiff has succeeded to discharge the onus to prove that the Plaintiff is the 1st User of Hakubaku Combination Device Mark in Malaysia. This decision is based on the following evidence and reasons:

Mr. Shanmugasundaram s/o Nagalingam (Mr. Shan) is a Manager of the Administration Department of Isetan of Japan Sdn. Bhd. (Isetan). Mr. Shan has affirmed two affidavits in court enc. no. 23 (Mr. Shan’s 1st Affidavit) and court enc. no. 30 (Mr. Shan’s 2nd Affidavit). According to Mr. Shan’s 1st Affidavit, among others -

Isetan’s sales of the Plaintiff’s noodles bearing the Hakubaku Combination Device Mark (Plaintiff’s Goods) in Malaysia have been recorded in Isetan’s computer system named “Open Retail System” (Isetan’s Computer System); and 29

Mr. Shan’s 1st Affidavit has exhibited printouts from Isetan’s Computer System which showed Isetan’s sales of the Plaintiff’s Goods. Mr. Shan’s 2nd Affidavit stated that Isetan sold the Plaintiff’s Goods in Malaysia on 6.6.2013 [before the Defendant’s Application (23.9.2013)]. This averment is supported by extracts of Isetan’s sales reports of the Plaintiff’s Goods (Extracts) which have been printed out from Isetan’s Computer System. The Extracts have been exhibited in Mr. Shan’s 2nd Affidavit;

I attach great weight to the Extracts because -

as affirmed in Mr. Shan’s 2nd Affidavit, Isetan has no relationship with the Plaintiff. Isetan is a big and reputable departmental store which sells various goods (not confined to the Plaintiff’s Goods) in Malaysia. Isetan also has many suppliers of goods other than the Plaintiff. The Defendant has also not adduced any credible evidence to doubt Isetan’s impartiality in this case. The following facts do not constitute any cogent ground to doubt Isetan’s independence -

the fact that the Defendant’s solicitors have served a demand dated 4.4.2018 on Isetan which threatens to commence a suit based on an infringement of the Registered Trade Mark; and 30

(ii) Isetan is owned by Japanese company;

there is no reason to suspect that Mr. Shan has affirmed false affidavits to support this Expungement Application [which is an offence punishable under s 193 of the Penal Code (PC)]. Nor is there any evidence to show that Isetan or Mr. Shan has made a “made a false document” (in the form of the Extracts) within the meaning of s 464(a) PC;

the Plaintiff has exhibited an advertisement posted on 23.8.2011 in the website of “Cornell Malaysia” which shows the Plaintiff’s Goods as one of the ingredients for a recipe “Cha Soba with Minced Meat and Mushroom” [Cornell Website’s Posting (23.8.2011)]. The Defendant has submitted that the Cornell Website’s Posting (23.8.2011) is a fabrication (Defendant’s Allegation). I cannot accept the Defendant’s Allegation because the Defendant’s affidavits did not contain the Defendant’s Allegation. Gopal Sri Ram JCA decided as follows in Luggage Distributors, at 739-740 - “If counsel who had conduct of the case in the court below had raised the failure of the respondents to timeously take out civil proceedings to enforce the claim, Encik Das may have, if necessary by seeking an adjournment, put in additional evidence on affidavit to show why such proceedings had not been commenced. It would have then 31 been up to the judge to determine whether the explanation proffered was good and, even if it was not, whether the respondents ought to be given an extension of time to commence proceedings, as was done in Jit Kaur. The failure of the appellant to raise the delay point at first instance has therefore deprived the respondents of an opportunity to offer an evidentiary rebuttal to it. Stated in this way, the matter then becomes a question of natural justice.” (emphasis added). The Defendant’s failure to state the Defendant’s Allegation in its affidavits, has deprived the Plaintiff of its right (in accordance with the second rule of natural justice) to reply to the Defendant’s Allegation in the Plaintiff’s Affidavit. Accordingly, the Defendant is not permitted to raise the Defendant’s Allegation in this case. The Cornell Website’s Posting (23.8.2011) is made by a third party without any interest in the outcome of this Expungement Application. The Defendant was at liberty to write to the administrator of Cornell Website and inquire about the veracity of the Cornell Website’s Posting (23.8.2011). This was however not done by the Defendant. There is no reason why I should disbelieve the Cornell Website’s Posting (23.8.2011). As such, the Cornell Website’s Posting (23.8.2011) supports the truth of the contents of the Extracts; and 32

the Plaintiff has exhibited printouts from its computer records which showed the annual sales of the Plaintiff’s Goods in Malaysia since 2010 (Plaintiff’s Computer Printouts). I am mindful that the Plaintiff’s Computer Printouts are self-serving. I only rely on the Plaintiff’s Computer Printouts to lend assurance to the truth of the contents of the Extracts and Cornell Website’s

as explained in paragraph 35 below, the Plaintiff owns copyright in the 3 Hakubaku Marks. The Plaintiff would not have expended time, effort and expense to create copyright in the 3 Hakubaku Marks unless the Plaintiff intends to use the 3 Hakubaku Marks in the course of its trade;

the following circumstances negative the Defendant’s claim to be the 1st User of the Registered Trade Mark -

the Defendant did not exhibit any document to prove its “use” of the Registered Trade Mark on the Defendant’s goods (Defendant’s Goods) in Malaysia within the meaning of s 3(2)(a) and (b) TMA. A bona fide commercial entity which uses a trade mark in the course of trade and has registered the trade mark under TMA, will have no hesitation to exhibit all documents which evidence such a use; 33

“Hakubaku” is a Japanese character which means “white barley”. There is no reason why the Defendant would use the Registered Trade Mark when -

the Defendant did not create the Registered Trade Mark;

(ii) the Defendant has no business in Japan;

(iii) the Defendant is a Malaysian company without any Japanese director and shareholder; and

(iv) there is no commercial nexus between the Defendant and the Registered Trade Mark; and

the Plaintiff’s solicitors have sent a demand dated 25.4.2017 to the Defendant (Plaintiff’s Demand) which stated that, among others -

the Plaintiff is the proprietor of the Hakubaku Combination

(ii) the Plaintiff has used the Hakubaku Combination Device Mark in Malaysia “since at least 2008”;

(iii) the Plaintiff owns copyright in the Hakubaku Combination Device Mark;

(iv) the Defendant does not own the Registered Trade Mark; and 34

the Defendant shall voluntarily apply to the Registrar to cancel the registration of the Registered Trade Mark and if the Defendant fails to do so, the Plaintiff will file the Expungement Application. The Defendant did not reply to the Plaintiff’s Demand. Such a failure is most telling. In a commercial setting, when one business entity (Y) alleges a particular matter regarding the business against another business entity (Z), Z’s failure to deny Y’s allegation may amount to Z’s admission of Y’s allegation - please see Gopal Sri Ram JCA’s judgment in the Court of Appeal case of David Wong Hon Leong v Noorazman bin bin Adnan [1995] 4 CLJ 155, at 159; and

the circumstances elaborated in the above sub-paragraphs (4)(a) to

show that the Defendant has “hijacked” the Plaintiff’s Hakubaku Combination Device Mark for an unlawful purpose, namely to pass off the Defendant’s Goods in Malaysia as the Plaintiff’s Goods. In this regard, I rely on the Federal Court’s judgment in Yong Teng Hing, at paragraph 14, as follows - “[14] It is also to be noted from the Hummel 's case the Court of Appeal held that evidence of slight use of the trade mark in the country is sufficient to establish distinctiveness and therefore entitlement to the trade mark. On this point the case of The Seven Up Co v. OT Limited & Anor [1947] 75 CLR 203 was cited with 35 approval by the Court of Appeal in the Hummel 's case, inter alia as follows: The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seized upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader.” (emphasis added).

The relevant date is 23.9.2013 (the date the Defendant’s Application was filed with the Registrar) - please see Yong Teng Hing, at paragraph 7. As the Plaintiff is the 1st User of Hakubaku Combination Device Mark in Malaysia on 6.6.2013 (before 23.9.2013), the Plaintiff is its Common Law owner. Hence, on 23.9.2013 the Defendant has no right under s 25(1) TMA to register the Registered Trade Mark - please see Mesuma Sports. On this ground alone, the Expungement Application is allowed with costs. F(3). Defendant’s submission regarding Extracts

Mr. Kok has contended that no weight should be attached by the Court to the Extracts because - 36

the Extracts were not exhibited in the first Plaintiff’s Affidavit but were only exhibited in a subsequent Plaintiff’s Affidavit; and

the prejudicial effect of the Extracts outweigh their probative value (Probative Value vis-à-vis Prejudicial Effect Test).

Firstly, the RC does not provide that a document is only given weight by the Court if the document is exhibited in the first affidavit and not in a subsequent affidavit. Nor is there such a provision in case law. Whether the Court attaches weight to an exhibit is a question of fact which does not depend on which affidavit contains the exhibit. In this case, I have given great weight to the Extracts for reasons elaborated in the above sub-paragraph 22(2).

Secondly, the Probative Value vis-à-vis Prejudicial Effect Test is only applicable in criminal and not civil cases - please see, for example, the Court of Appeal’s judgment delivered by Kamardin Hashim JCA in Public Prosecutor v Ahmad Firdaus bin Zulkifli [2017] 3 MLJ 492, at paragraph 24. I am of the view that the Probative Value vis-à-vis Prejudicial Effect Test is only applicable in criminal trials so as to ensure that accused persons are not prejudiced by admissibility of evidence when the probative value of such evidence is outweighed by its prejudicial effect. There is no basis to apply the Probative Value vis-à-vis Prejudicial Effect Test in civil cases. G. Whether use of Registered Trade Mark is likely to deceive or confuse public 37

The relevant part of s 14 TMA is reproduced below: “Prohibition on registration 14(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;

if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law; …” (emphasis added).

As the Plaintiff is the 1st User of the Hakubaku Combination Device Mark in Malaysia, there is a second ground to remove the Registered Trade Mark from the Register. This second ground is that the use of the Registered Trade Mark “is likely to deceive or cause confusion to the public” [the first limb of s 14(1)(a) TMA] with regard to the Defendant’s Goods and Plaintiff’s Goods (Likelihood of Deception/Confusion). The Plaintiff bears the legal and evidential burden to prove a Likelihood of Deception/Confusion - Syarikat Faiza Sdn Bhd & Anor v Faiz Rice Sdn Bhd & Anor [2017] MLJU 1595, at paragraph 101. I am satisfied that the Plaintiff has discharged the onus to prove a Likelihood of Deception/Confusion as follows:

the Defendant’s Goods (noodles) are the same as the Plaintiff’s Goods - please see Romer J’s (as he then was) judgment in the 38 English High Court case of Re Ladislas Jellinek (1946) 63 RPC 59, at 70;

the customers of the Plaintiff’s Goods and Defendant’s Goods are the same - please see Mohd. Yusoff Mohamed SCJ’s decision in the Supreme Court in Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 1 CLJ (Rep) 344, at 347;

the trade channels of the Plaintiff’s Goods and Defendant’s Goods are the same in the sense that the retailers for the Plaintiff’s Goods and Defendant’s Goods are the same - Re Ladislas Jellinek, at p. 70;

the Registered Trade Mark and Hakubaku Combination Device Mark are used in the same manner upon the Defendant’s Goods and Plaintiff’s Goods respectively - please see the Privy Council’s judgment delivered by Lord Fraser in Solavoid Trade Mark [1977] RPC 1, at 31 (an appeal from New Zealand);

a visual comparison of the Registered Trade Mark and Hakubaku Combination Device Mark reveals the following striking similarities -

both the Registered Trade Mark and Hakubaku Combination Device Mark have an identical device in red; and

the Registered Trade Mark has the same word “Hakubaku” in the same red colour as in Hakubaku Combination Device Mark; 39

when the Registered Trade Mark and Hakubaku Combination Device Mark are pronounced, both trade marks sound the same;

applying the “general recollection test” as explained by Thomson LP in the Federal Court case of MI & M Corporation & Anor v A Mohamed Ibrahim [1964] 1 MLJ 392, at 394 (an appeal from Singapore), a reasonable purchaser of Japanese noodles with an average memory and an imperfect recollection, is likely to be deceived and/or confused between the Defendant’s Goods (which bear the Registered Trade Mark) and Plaintiff’s Goods (which have the Hakubaku Combination Device Mark);

the Registered Trade Mark and Hakubaku Combination Device Mark share the same idea or concept - Solavoid Trade Mark, at p. 30; and

the Court should take into account all the circumstances of the case - Bata, at p. 407. The circumstances explained in the above sub-paragraphs 22(4)(a) to (c) and (5) support the inference that the Defendant has intended to cause a Likelihood of Deception/Confusion. H. Assumption that Defendant is 1st User of Registered Trade Mark in Malaysia

In the event that I have erred in finding that the Plaintiff is the 1st User of the Hakubaku Combination Device Mark in Malaysia, I shall now discuss 40 the contention by the Plaintiff’s learned counsel, Ms. Janini Rajeswaran. Ms. Janini has submitted that the Registered Trade Mark should be expunged from the Register on the following two grounds under the second limb of s 14(1)(a) TMA (contrary to law):

the Defendant has passed off the Defendant’s Goods bearing the Registered Trade Mark as the Plaintiff’s Goods; and/or

the Plaintiff owns copyright in the 3 Hakubaku Marks and such a copyright has been infringed by the Defendant’s use of the Registered Trade Mark. H(1). Has Defendant committed tort of passing off?

Section 35(1) TMA provides as follows: “Rights given by registration 35(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.” (emphasis added).

Until the Registered Trade Mark is removed from the Register under s 45(1)(a) TMA, the Defendant “shall” have the “exclusive right” to use the 41 Registered Trade Mark under s 35(1) TMA. Such a statutory right negatives the commission of the tort of passing off by the Defendant regarding the use of the Registered Trade Mark. As such, I cannot expunge the Registered Trade Mark from the Register based on the tort of passing off under the second limb of s 14(1)(a) TMA. H(2). Does Plaintiff own copyright in 3 Hakubaku Marks?

Section 6 CA provides that no copyright shall subsist in a work otherwise than by virtue of CA.

The 3 Hakubaku Marks are “drawings” which fall within the definition of “graphic works” in s 3(a) CA. Hence, the 3 Hakubaku Marks are “artistic works” within the meaning of s 3(a) CA and are eligible for copyright under s 7(1)(c) CA.

The Plaintiff has the legal and evidential burden to satisfy this Court that copyright in the 3 Hakubaku Marks vests in the Plaintiff - Chuah Aik King v Keydonesoft Sdn Bhd [2018] 10 CLJ 354, at paragraph 25.

The Plaintiff has successfully discharged the onus to prove that it owns copyright in the 3 Hakubaku Marks (Plaintiff’s Copyright). This decision is premised on the following evidence and reasons:

the Plaintiff had filed an affidavit affirmed on 14.12.2017 (Court enc. no. 3) by Mr. Yoshiaki Nishiya, the Plaintiff’s General Manager of Overseas Business Department (Plaintiff’s 1st Affidavit) which stated that, among others - 42

the Plaintiff owns copyright in Hakubaku Device Mark and Japanese Hakubaku Combination Device Mark since 2005; and

ownership of copyright in Hakubaku Combination Device Mark in Malaysia belongs to the Plaintiff since 2008. True copies of the 3 Hakubaku Marks have been exhibited in the Plaintiff’s 1st Affidavit. According to s 42(1)(a) CA, the Plaintiff’s 1st Affidavit “shall be admissible in evidence” and “shall be prima facie evidence” of the Plaintiff’s Copyright - please see Jeffrey Tan FCJ’s judgment in the Federal Court case of Dura-Mine Sdn Bhd v Elster Metering Ltd & Anor [2015] 1 CLJ 887, at paragraphs 12 and 29. Section 42(1) CA provides as follows: “42(1) An affidavit … made before any person having authority to administer oath by or on behalf of any person claiming to be -

the owner of the copyright in any works eligible for copyright under this Act stating that -

at the time specified herein copyright subsisted in such work;

(ii) he or the person named therein is the owner of the copyright; and

(iii) a copy of the work annexed thereto is the true copy thereof; … 43 shall be admissible in evidence any proceedings under this Act and shall be prima facie evidence of the facts contained therein.” (emphasis added). The Defendant has not adduced any evidence regarding the creation of the Registered Trade Mark. No evidence has been led by the Defendant regarding how copyright in the Registered Trade Mark is vested in the Defendant. Nor did the Defendant adduce any affidavit pursuant to s 42(1) CA to prove that on a prima facie basis, the Defendant owns copyright in the Registered Trade Mark. Accordingly, I hold that the prima facie evidence of the Plaintiff’s Copyright as affirmed in the Plaintiff’s 1st Affidavit -

has not been rebutted by the Defendant; and

(ii) has been proven by the Plaintiff on a balance of probabilities; and/or

additionally or alternatively, I find that the Plaintiff’s Copyright has been proven as follows -

sometime in 2005, the Plaintiff has entered into an “Outsourcing Agreement” (Agreement) with Brandworx Co. Ltd. (Brandworx). Brandworx is now known as Bravery & Brands Co. Ltd. The Agreement has been exhibited in the Plaintiff’s Affidavit. Pursuant to the Agreement, an employee of Brandworx, Ms. Michiko Kuzuhara (Ms. Michiko) has created 44 the

in 2008, Ms. Michiko has created Hakubaku Combination

the creation of the 3 Hakubaku Marks by Ms. Michiko has been confirmed by an affidavit affirmed on 14.12.2017 (Court enc. no. 4) by Mr. Kiyoshi Homma, Brandworx’s President and Representative Director (Mr. Kiyoshi). According to Mr. Kiyoshi -

the 3 Hakubaku Marks were created by Brandworx pursuant to the Agreement and/or commission by the Plaintiff (Plaintiff’s Commission). Stamp duty had been paid in Japan for the Agreement;

(ii) the Plaintiff had paid in Japanese Yen to Brandworx for the creation of the 3 Hakubaku Marks; and

(iii) except for the relevant copies of the Plaintiff’s “Auxiliary Books” (exhibited in the Plaintiff’s 1st Affidavit) (Plaintiff’s Records), Brandworx did not retain any documentary evidence to prove the Plaintiff’s Commission;

Brandworx and Mr. Kiyoshi have no interest in this case. There is no reason for Mr. Kiyoshi to affirm false affidavits under s 193 PC to prove the Plaintiff’s Copyright. Furthermore, I fail to see why Brandworx and Mr. Kiyoshi would fabricate the Agreement 45 (an offence under s 193 PC), especially when stamp duty on the Agreement has been paid in Japan. Accordingly, I accept the contents of Mr. Kiyoshi’s affidavits to prove the following -

according to s 3(c) CA, an “author” of an artistic work (other than a photograph) is its “artist”. In this case, Ms. Michiko was the artist of the 3 Hakubaku Marks. There is fulfillment of - (ia) s 7(3)(a) CA (sufficient effort has been expended to make the 3 Hakubaku Marks original in character); and (ib) s 7(3)(b) CA [the 3 Hakubaku Marks has been recorded or otherwise reduced to “material form” (defined in s 3 CA to include “any form (whether visible or not) of storage from which the work …, or a substantial part of the work … can be reproduced”)]; and

(ii) Ms. Michiko had created the 3 Hakubaku Marks in the course of her employment by Brandworx and in accordance with the Plaintiff’s Commission. Hence, the Plaintiff is the owner of copyright in the 3 Hakubaku Marks pursuant to s 26(2)(a) CA as interpreted in Aktif Perunding Sdn Bhd v ZNVA & Associates Sdn Bhd [2018] 7 MLJ 692, at paragraph 33. Section 26(1) and (2) CA state as follows - 46 “26(1) Copyright conferred by section 10 shall vest initially in the author.

Notwithstanding subsection 27(6), where a work -

is commissioned by a person who is not the author’s employer under a contract of service or apprenticeship; or

not having been so commissioned, is made in the course of the author’s employment, the copyright shall be deemed to be transferred to the person who commissioned the work or the author’s employer, subject to any agreement between the parties excluding or limiting such transfer.” (emphasis added). I am not persuaded by Mr. Kok’s contention that the Plaintiff should have obtained an affidavit from Ms. Michiko to prove that she is an employee of Brandworz. Firstly, the Plaintiff’s Commission is adequately proven by Mr. Kiyoshi’s affidavits. Secondly, the contents of Mr. Kiyoshi’s affidavits are supported by documentary evidence in the form of the Agreement and Plaintiff’s Records. Thirdly, it was inconceivable for Ms. Michiko to claim copyright in the 3 Hakubaku Marks when her employer (Brandworx) did not do so at any time. Lastly, if Ms. Michiko 47 owns copyright in the 3 Hakubaku Marks, the Plaintiff would have acknowledged such a copyright ownership and if the Plaintiff fails to do so, Ms. Michiko would have commenced a suit for copyright infringement against the Plaintiff in Japan;

s 59A(1) CA provides that the “Minister” (defined in s 3 CA as the Minister charged with the responsibility for intellectual property) may make regulations which applies CA to specified countries (Specified Countries). Pursuant to s 59A CA, the Minister has made Copyright (Application to Other Countries)

according to reg. 2 of the Regulations, Specified Countries refer to countries which are members of the Berne Convention for the Protection of Literary and Artistic Works 1886 (Berne Convention). Regulation 3(a) of the Regulations states that the provisions of CA shall apply to, among others, artistic works which are first published in Specified Countries. Japan is a member of the Berne Convention and is therefore one of the Specified Countries for the purpose of the Regulations; and

the 3 Hakubaku Marks were created by Ms. Michiko (a Japanese citizen) in Japan. Copyright in the 3 Hakubaku Marks shall vest in the Plaintiff by reason of the application of any one of the following provisions of the Regulations - 48

the 3 Hakubaku Marks were first published in Japan within the meaning of reg. 3(a) of the Regulations;

(ii) regulation 3(e) of the Regulations provides that s 26(2)(a) CA shall apply to Ms. Michiko, a citizen in Japan, a Specified Country; and/or

(iii) s 26(2)(a) CA shall apply to Broadworz and the Plaintiff by virtue of reg. 3(f) of the Regulations (provisions of CA shall apply to “bodies corporate incorporated under the laws” of the Specified Countries as they apply to bodies corporate established in Malaysia). In the High Court case of Honda et al v DNC Asiatic Holdings Sdn Bhd & Ors and another suit [2018] 9 MLJ 251, at paragraph 37, Azizah Nawawi J has applied regs. 2 and 3(e) of the Regulations to decide that, among others, a Japanese citizen (who has created the drawing in question) has copyright in the drawing. H(3). Whether Defendant’s use of Registered Trade Mark has infringed Plaintiff’s

Sections 36(1) and 37(1) CA provide as follows: “Infringements 49 36(1) Copyright is infringed by any person who does, or causes any other person to do, without the licence of the owner of the copyright, an act the doing of which is controlled by copyright under [CA]. Action by owner of copyright and relief 37(1) Infringements of copyrights and the prohibited acts under sections 36A and 36B shall be actionable at the suit of the owner of the copyright and, in any action for such an infringement or prohibited act, the court may grant the following types of relief: …” (emphasis added).

As explained in the above paragraph 35, the Plaintiff owns copyright in the 3 Hakubaku Marks. Hence, the Plaintiff is entitled under s 37(1) CA to sue the Defendant for an infringement of the Plaintiff’s Copyright.

It was decided in Motordata Research Consortium Sdn Bhd v Ahmad Shahril bin Abdullah & Ors [2017] 7 AMR 560, at paragraphs 49 and 50, that s 36(1) CA has the following two limbs:

when a person (A) does an act which is controlled by copyright under CA without the licence of the copyright owner (1st Limb); and

when a person (other than A) “causes” A to do an act which is controlled by copyright under CA without the licence of the copyright owner (2nd Limb).

According to s 13(1)(a) CA, copyright in an artistic work shall be the exclusive right to control in Malaysia the “reproduction” (defined widely in 50 s 3 CA) in any “material form” (interpreted in s 3 CA) of the whole work or a substantial part thereof. This case concerns only the 1st Limb (not the 2nd Limb) - whether the Defendant has done an act which is controlled by the Plaintiff’s Copyright without a licence from the Plaintiff. This question depends on whether the Defendant has reproduced in material form (in the Registered Trade Mark) the 3 Hakubaku Marks in their entirety or a substantial part thereof within the meaning of s 13(1)(a) CA read with the 1st Limb [Copyright Infringement (1st Limb)].

In the High Court case of Megnaway Enterprise Sdn Bhd v Soon Lian Hock [2009] 3 MLJ 525, at paragraph 41, Low Hop Bing J (as he then was) decided that a plaintiff can only prove Copyright Infringement (1st Limb) by establishing all the following three elements:

there is a sufficient objective similarity between the copyrighted work and the impugned work (1st Element);

there is a causal connection between the copyrighted work and the impugned work in the sense that the impugned work has been copied from the copyrighted work (2nd Element); and

what has been copied in the impugned work must constitute a substantial part of the copyrighted work (3rd Element). The above test has been applied by Dr. Badariah Sahamid JCA in the recent Court of Appeal case of Elias bin Idris v Mohd Syamsul bin Md Yusof & Ors [2018] MLJU 970, at paragraph 31. 51

I am satisfied that the Plaintiff has proven all the three ingredients of Copyright Infringement (1st Limb) as follows:

there is a sufficient objective similarity between the 3 Hakubaku Marks and the Registered Trade Mark because the latter has the same Hakubaku device in the same red colour as found in the 3 Hakubaku Marks;

once the Plaintiff has proven the 1st Element, there is a rebuttable presumption that the Defendant has copied the 3 Hakubaku Marks (rebuttable presumption that the 2nd Element has been established) and the evidential burden then shifts to the Defendant to disprove the 2nd Element by proving that the Registered Trade Mark has been created by the Defendant independently of the 3 Hakubaku Marks - Megnaway Enterprise, at paragraph 43. In this case, the Defendant has not adduced any evidence to prove that the Defendant has created the Registered Trade Mark without copying the 3 Hakubaku Marks. In fact, I am of the view that the rebuttable presumption (the Defendant had copied the Registered Trade Mark from the 3 Hakubaku Marks) is fortified by the reasons elaborated in the above sub-paragraphs 22(4)(a) to (c) and (5); and

the 3rd Element is fulfilled in this case because the Registered Trade Mark has copied a substantial part of the 3 Hakubaku Marks, namely the Hakubaku device in red. 52 Premised on the above evidence and reasons, the Defendant’s use of the Registered Trade Mark on the Defendant’s Goods has infringed the Plaintiff’s Copyright (Defendant’s Copyright Infringement). H(4). Can Plaintiff expunge Registered Trade Mark based on Defendant’s Copyright Infringement?

Mr. Kok has relied on the Federal Court’s decision in Mesuma Sports to submit that -

copyright ownership in a trade mark is not relevant to determine ownership of the trade mark; and

copyright ownership in a trade mark is not a basis to expunge a registered trade mark from the Register.

I am of the following view regarding Mesuma Sports:

the principal question of law which arises in Mesuma Sports, at paragraphs 20 and 32, is whether a claim for Common Law ownership of a trade mark under s 25(1) TMA depends on -

who has created the trade mark; or

who is the 1st User of the trade mark?;

the Federal Court has answered the above principal question in Mesuma Sports, at paragraphs 37-47, by deciding that the 1st User of the trade mark (not the creator of the trade mark) is its Common 53 Law proprietor for the purpose of the registration of the trade mark under s 25(1) TMA. Mr. Kok is therefore correct in his contention that Mesuma Sports has decided that copyright ownership in a trade mark is not relevant in the determination of ownership of the trade mark; and

questions regarding the application of the second limb of s 14(1)(a) TMA (contrary to law) and the third limb of s 14(1)(b) TMA (not be entitled to protection by any court of law) did not arise in Mesuma Sports. Accordingly, I am unable to accede to Mr. Kok’s contention that Mesuma Sports has held that copyright ownership in a trade mark cannot be a basis to expunge a registered trade mark from the Register.

The second limb of s 14(1)(a) TMA uses the term “law”. Part I of the Interpretation Acts 1948 and 1967 (IA) applies to TMA - please see s 2(1)(a) IA (TMA is enacted after 18.5.1967). According to s 3 IA (in Part 1 IA), “law” has the meaning assigned by Article 160(2) FC. Article 160(2) FC has defined “law” as follows: “ “law” includes written law, the common law in so far as it is in operation in the Federation or any part thereof, and any custom or usage having the force of law in the Federation or any part thereof;” (emphasis added). 54 “Written law” is defined in s 3 IA to include, among others, Acts of Parliament. Based on the interpretation of “law” in Article 160(2) FC and the definition of “written law” in s 3 IA, it is clear that the term “law” in the second limb of s 14(1)(a) TMA includes Acts of Parliament (such as CA). Consequently, the second limb of s 14(1)(a) read with s 45(1)(a) TMA confer power on the Court to remove a registered trade mark from the Register if the registered trade mark is contrary to an Act of Parliament (such as CA). This interpretation is supported by Syarikat Faiza, at paragraph 90, as follows: “90. I accept the Defendants’ submission that if the 1st Plaintiff’s Rice Packagings and Faiza Logo have infringed the 2nd Defendant’s copyright, the court has the power under s 45(1)(a) TMA to expunge the Plaintiffs’ Registered Trade Marks from the Register under paragraph

(would be contrary to law) and/or paragraph (b) (would otherwise not be entitled to protection by any court of law) of s 14(1) TMA. The following cases support the above construction of ss 14(1)(a) and/or (b) read with s 45(1)(a) TMA:

Whitford J’s judgment in the English High Court case of Karo Step Trade Mark [1977] RPC 255, at 273. Karo Step concerned s 11 TMA 1938 (UK) which was similar to s 14(1)(a) and (b) TMA. Section 11 TMA 1938 (UK) provided as follows - “It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of 55 justice, or would be contrary to law or morality, or any scandalous design.” (emphasis added); and

Karo Step has been followed by Chao Hick Tin J (as he then was) in the Singapore High Court in Re AUVI Trademark; Auvi Pte Ltd v Seah Siew Tee & Anor [1992] 1 SLR 639.” (emphasis added).

Based on the above construction of the second limb of s 14(1)(a) read with s 45(1)(a) TMA and the cases cited in the above paragraph 44, I have no hesitation to expunge the Registered Trade Mark from the Register because the use of the Registered Trade Mark is contrary to CA (due to the Defendant’s Copyright Infringement). H(5). Whether Registered Trade Mark is entitled to protection by Court

In this case, both parties did not submit on the application of the third limb of s 14(1)(b) TMA (a registered trade mark is not entitled to protection by a Court). Hence, I did not have the benefit of learned counsel’s assistance on this point. Nonetheless, based on Syarikat Faiza, I remove the Registered Trade Mark from the Register pursuant to the third limb of s 14(1)(b) read with s 45(1)(a) TMA because the Registered Trade Mark is not entitled to protection by any Court (by reason of the Defendant’s Copyright Infringement). 56 I. Does Court have a discretion not to expunge Registered Trade Mark?

Once a plaintiff has established a ground for the removal of a registered trade mark from the Register, the Court has no discretion but to remove the registered trade mark from the Register under s 45(1)(a) TMA - Ho Tack Sien, at paragraph 25.

A summary of the above decision is as follows:

the Plaintiff’s Affidavits (in English) are admissible under O 42 r 13 RC and the Exhibits (in English) need not be accompanied by a Malay translation [by reason of the proviso to O 92 r 1(1) RC]. There is no requirement under RC for -

the Plaintiff’s Affidavits to be affirmed in Japan before -

a person having authority to administer oaths in a Commonwealth country; or

(ii) a Malaysian Consular Officer; and

the Translator to be named in the Plaintiff’s Affidavits;

the Plaintiff is not estopped from filing this Expungement Application on the ground that the Plaintiff has not opposed the Defendant’s Application under s 30(1)(a) TMA and reg. 37(a) TMR; 57

applying the 2 Tests, the Plaintiff is aggrieved by the Registered Trade Mark and is therefore entitled to file the Expungement Application under s 45(1)(a) TMA;

the Federal Court in Liwayway Marketing has not laid down a rule of law that a person who has successfully applied to register a trade mark under TMA is the 1st User of the trade mark and is therefore its Common Law owner;

the Plaintiff is the 1st User of Hakubaku Combination Device Mark in Malaysia and is therefore its Common Law proprietor. Accordingly, the Registered Trade Mark is expunged from the Register because -

the Defendant could not have lawfully registered the Registered Trade Mark under s 25(1) TMA; and/or

pursuant to the first limb of s 14(1)(a) TMA, the use of the Registered Trade Mark on the Defendant’s Goods causes a Likelihood of Deception/Confusion with the Plaintiff’s Goods which bear the Hakubaku Combination Device Mark; and

if it is assumed that the Defendant is the 1st User of the Registered Trade Mark in Malaysia and is its Common Law owner -

in view of s 35(1) TMA (which confers exclusive right on the Defendant to use the Registered Trade Mark), the Registered Trade Mark cannot be expunged from the Register pursuant to 58 the second limb of s 14(1)(a) TMA based on the tort of passing off;

copyright in the 3 Hakubaku Marks vests in the Plaintiff by virtue of s 26(2)(a) CA read with regs. 2, 3(a), (e) and (f) of the Regulations;

the Defendant’s use of the Registered Trade Mark has infringed the Plaintiff’s Copyright under the first limb of s 36(1) CA read with s 13(1)(a) CA;

the Defendant has committed Copyright Infringement (1st Limb) by reproducing a substantial part of the 3 Hakubaku Marks in the Registered Trade Mark; and

in view of the Defendant’s Copyright Infringement, the Registered Trade Mark shall be expunged from the Register pursuant to -

the second limb of s 14(1)(a) TMA because the use of the Registered Trade Mark is contrary to CA; and/or

(ii) the third limb of s 14(1)(b) TMA on the ground that the Registered Trade Mark is not entitled to protection by any Court.

Premised on the above evidence and reasons, the Expungement Application is allowed with costs. 59 WONG KIAN KHEONG Judge High Court (Commercial Division) Kuala Lumpur DATE: 27 DECEMBER 2018 Counsel for Plaintiff: Ms. Janini Rajeswaran & Ms. Sarah Ho Yixin (Messrs Sreenevasan) Counsel for Defendant: Mr. Kok Pok Chin & Ms. Ng Pau Chze (Messrs PC Kok & Co)