Hao Pin Wei Biotech & Food Co. Ltd. v Hai Pa Wang International Group Corp (WA-24IP-18-08/2018)

This is an application to remove a trade mark from the register for non-use.

The Plaintiff is a limited company registered in Taiwan, Republic of China involved in the business of production and sales of food sauces and barbeque powder.

The Defendant is a limited company registered in the Cayman Islands involved in the business of food restaurants. Salient Facts 4. The Plaintiff is the owner of the following trade mark (“Trade Mark”): 3

The Plaintiff through its trade mark agent on 23 February 2018 made an application to the Intellectual Property Corporation of Malaysia (“MyIPO”) to register the Trade Mark in relation to seasoning sauce, seasoning powder and sate barbeque sauce under class 30 (“Application”).

The Application has however been rejected by the Registrar of MyIPO on the basis that the intended Trade Mark resembled the following Defendant’s registered trade mark “Hai Pa Wang” (registration no. 97009502) dated 12 July 1997 (“Impugned Mark”): 4 The Impugned Mark has been registered in relation to steamed dumplings, shrimp dumplings, fish dumplings, cuttlefish dumplings, ravioli, buns, bean jam buns, meat buns, Taro-jam buns, sesame jam buns, steamed bread, rice balls, bean meal, biscuits, bread, rolls(bread), cereal based snack food, ready to eat cereal, derived food bars, processed cereals, seasonings, frozen confections, ice cream, flavoured ices, farina, flour, meat pies, noodles, pastries, pies, puddings, sandwiches, hamburger sandwiches, processed wheat, yeast, tarts and twist in class 30 and valid till 12 July 2024.

Accordingly the Plaintiff appointed its agents Venovox Sdn Bhd to carry out a corporate due diligence investigation on the usage of the Impugned Mark in Malaysia. The aforesaid investigation revealed that the Impugned Mark has been used by a Hai Pa Wang Sea Food Produce, Hai Pa Wang Seafood Restaurant Sdn Bhd and HPW Ocean Park Development (formerly known as Hai Pa Wang Food Holdings Sdn Bhd) but they were either dissolved or ceased business operations. The sole Grand Hai Pa Wang restaurant operating in Sarawak is neither a registered business nor company. 5

As the result of the aforesaid investigation, the Plaintiff filed this Application which is supported by the affidavit of Kou Jung-I affirmed on 3 August 2018.

The Application came before me on 28 November 2018. The Defendant was absent. The Defendant’s solicitors and trade mark agent, Messrs Ram Rais & Partners has earlier written a letter to the Court dated 29 October 2018 stating that they received instructions to cease acting for the Defendant as well as to inform the Court that the Defendant did not wish to defend the Application.

After having read the written submissions filed by the Plaintiffs and hearing counsel, I allowed prayer (a) of the Application that the trade mark known as “Hai Pa Wang” and duly registered by the Defendant as Application Number 97009502 on 12.7.1997 and valid till 12.7.2024 be removed from the Register in respect of any of the goods or services in respect of which it was registered and prayer (b) of the Application for costs of RM10,000 subject to allocatur. 6

I now furnish below the grounds of my decision.

Based on the averments in the Plaintiff’s affidavit in support, the Plaintiff contended that the Impugned Trade Mark should be expunged or removed from the register for non usage as provided in s. 46 of the Trade Marks Act 1976 (“TMA”) which reads: “(1) 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 7

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.

Except where an applicant has been permitted under section 20 to register an identical or a nearly resembling trade mark in respect of the goods or services to which the application relates or the Court is of the opinion that the applicant can properly be permitted to register the trade mark, the Court may refuse an application made under subsection (1)-

in relation to any goods, if there has been, before the relevant date or during the relevant period, as the case may be, use in good faith of the trade mark by the registered proprietor of the trade mark for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered; and

in relation to any services, if there has been, before the relevant date or during the relevant period, as the case may be use in good faith of the trade mark by the registered proprietor of the trade mark for the time being in relation to services of the same description, being services in respect of which the trade mark is registered. 8

Where in relation to goods or services in respect of which a trade mark is registered -

the matter referred to in paragraph (1)(b) are shown as far as regards failure to use the trade mark in relation to goods to be sold or otherwise traded in in a particular place in Malaysia (otherwise than for export from Malaysia) or in relation to goods to be exported to a particular market outside Malaysia; and

a person has been permitted under section 20 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to the use in relation to goods to be sold or otherwise traded in in that place (otherwise than for export from Malaysia) or in relation to goods to be exported to that market, or the Court is of the opinion that that person might properly be permitted to register the trade mark, the Court may, on application by that person, direct that the registration of the first-mentioned trade mark shall be subject to such conditions, amendments, modifications or limitations as the Court thinks proper for securing that that registration shall cease to extend to use of the trade mark in relation to goods to be sold or otherwise traded in in that place (otherwise than for export from Malaysia) or in relation to goods to be exported to that market.

Where in relation to services in respect of which a trade mark is registered- 9

the matters referred to in paragraph (1)(b) are shown as far as regards failure to use the trade mark in relation to services provided in a particular place in Malaysia; and

a person has been permitted under section 20 to register an identical or a nearly resembling trade mark in respect of those services under a registration extending to the use in relation to services provided in that place, or the Court is of the opinion that that person might properly be permitted to register the trade mark, the Court may, on application by that person, direct that the registration of the first-mentioned trade mark shall be subject to such conditions, amendments, modifications or limitations as the Court thinks proper for securing that that registration shall cease to extend to use of the trade mark in relation to services provided in that place.

An applicant is not entitled to rely for the purpose of paragraph

(1)(b) or for the purpose of subsection (3) or (3A) on any failure to use a trade mark if failure is shown to have been due to special circumstances in the trade and not to an intention not to use or to abandon the trade mark in relation to the goods to which the application relates.”

The Plaintiff referred to the case of Godrej Sara Lee Ltd v Siah Teong Teck & Anor (No. 2) [2008] 7 CLJ 24 that the Plaintiff is 10 an aggrieved person. In that case, Ramly Ali J (now FCJ) held as follows: “[12] Section 46(1) of the Act has been inserted into the Act to prevent applications being made by any person, limiting it to those who have a genuine interest in the matter. In other words, the applicant by virtue of this section has to show locus standi in the matter by showing an interest in the mark. This could be addressed and clarified with reference to the cases on point. [13] In Fazaruddin Ibrahim v. Parkson Corporation Sdn. Bhd. [1997] 2 CLJ 863, Abdul Malik Ishak J opined that the phrase "person aggrieved" should be construed liberally. His Lordship went on to state that this would include: any person whose own application for registration is obstructed by the opposing party in the suit... [14] In Service Master (M) Sdn. Bhd. v. MHL Servicemaster Sdn. Bhd. & Anor [1998] 1 CLJ 459, Kamalanathan Ratnam JC (as his Lordship then was) stated that "an aggrieved person" would be all persons who are in some way or other substantially interested in having the mark removed. This would include all persons who would be substantially damaged if the mark remained. 11 [15] In Trina Trade Mark [1977] RPC 131, the court in UK held that by reason of the fact that the applicant's trade mark was blocked by the disputed trade mark made the applicant an aggrieved party. [16] On the facts of this case, it is obvious from the affidavit of Virkar that the trade mark of the applicant has been objected to on the basis of the disputed trade mark. This is found in para. 10 and exh. BSV2 of the affidavit of Virkar. The disputed trade mark thus stands in the way of the applicant's registration and if not for the disputed trade mark, the applicant's trade mark would proceed to registration. This under the established principles and case law clearly makes the applicant an aggrieved party. The applicant thus has the necessary locus standi to bring this action and seeks for the removal of the 1st respondent's trade mark from the register maintained under the Trade Marks Act 1976.” In the recent Federal Court case of Liwayway Marketing Corporation v Oishi Group Public Co Ltd [2017] 5 CLJ 133, Balia Yusof Wahi FCJ held as follows: “[10] In dealing with the issue of aggrievedness, learned counsel for Liwayway submitted that in order to satisfy the test as to whether the applicant falls within the definition of "a person aggrieved" in the said provision, Oishi Group must first show that it has either used before a mark that is identical with or similar to the registered mark sought to be 12 expunged or at the very least had a genuine intention to use the mark in the near future. [11] Our courts are replete with decisions on this issue. We will start with the case of McLaren International Ltd v. Lim Yat Meen [2009] 4 CLJ 749 wherein this court upon considering the judgment of Chan Sek Keong JC in Re Arnold D Palmer [1986] 1 LNS 11; [1987] 2 MLJ 681 and the authorities cited therein, agreed that: A person aggrieved is a person who has used his mark as a trademark - or who has genuine and present intention to use his mark as a trademark - in the course of a trade which is the same or similar to trade of owner of the registered trade mark that the person wants to have removed from the register. [12] McLarren International was referred to and reaffirmed in the case of LB (Lian Bee) Confectionary Sdn Bhd v. QAF Ltd [2012] 3 CLJ 661. At p. 671 of the report, this court had explained the following: A "person aggrieved" under s. 46(1) of the TMA need not be a person with any specific right. A "person aggrieved" in this context may include someone with simply a bona fide intention to use a trade mark that is registered but which has not been used by the registered proprietor or any registered user for a continuous period of not less than three years up to one month before the date of an application under s. 46(1)(b) of the TMA to expunge. On this point in the case of McLaren International Ltd v. Lim Yat Meen [2009] 4 CLJ 749, Abdul 13 Aziz Mohamad FCJ in delivering the judgment of this court had this to say: [21] Re Arnold D Palmer is an authority (out of several) that is heavily relied on by the respondent to deny that the appellants are a person aggrieved. In that case, the applicant sought the removal from the register of a trade mark on the ground of non-user. On whether the applicant was a person aggrieved, Chan Sek Keong JC, after considering the speeches of Lord Herschell and Lord Watson in the House or Lords in Powell's Trade Mark [1894] 11 RPC 4; [1984] AC 8, and the manner in which subsequent judges reacted to the opinions of the said Law Lords in Lever Bros, Port Sunlight Ltd v. Sunniwite Products Ltd [1949] 66 RPC 84, Consort Trade Mark [1980] RPC 160, and Wells Fargo Trade Mark [1977] RPC 503 concluded as follows: On the basis of these decisions, it is plain that the applicant will fail in this appeal unless he can show that he has used his trade mark in the course of a trade which is the same as or similar to that of the respondents or that he has a genuine and present intention to use the mark as a trademark. But the evidence shows none of these things, as the Registrar has found... [22] We understand that passage as lying 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 14 the trade of the owner of the registered trademark that the person wants to have removed from the register. (emphasis added) Thus a "person aggrieved" may have no rights at all but merely a genuine intention to use a trade mark that is registered but which has not been used by the registered proprietor. [13] More recently, in the case of Mesuma Sports Sdn Bhd v. Majlis Sukan Negara Malaysia; Pendaftar Cap Dagangan Malaysia (Interested Party) [2015] 9 CLJ 125; [2015] 6 MLJ 465, Azahar Mohamad FCJ delivering the judgment of this court reiterated: A person aggrieved is a person who has used his mark as a trademark or who has genuine and present intention to use his mark as a trademark in the course of a trade which is the same as or similar to the registered trademark that the person wants to have removed from the register. The person must be someone who has some element of legal interest, right or legitimate expectation in its own mark which is being substantially affected by the presence of the registered trademark. The interest and right must be legal or lawful.”

In the premises, I am satisfied that the Plaintiff is an aggrieved person for purposes of the TMA because the registration of its intended Trade mark has been obstructed by the Defendant. I also find that the Plaintiff has genuine interest in registering the Trade 15 Mark because the Plaintiff has generated substantial goodwill and reputation through extensive usage of the Trade Mark as well as the trade name “Hai Pao Wang” in marketing and promoting its business products globally including in Malaysia. The Trade Mark and trade name “Hai Pao Wang” thus in my view deserved intellectual property protection against unlawful misappropriation.

Moreover and as revealed by the Plaintiff’s appointed agent Venovox Sdn Bhd in its report entitled Corporate Due Diligence Report dated February 2018, I find that the Hai Pa Wang Sea Food Produce, Hai Pa Wang Seafood Restaurant Sdn Bhd, HPW Ocean Park Development (formerly known as Hai Pa Wang Food Holdings Sdn Bhd) and Grand Hai Pa Wang restaurant that possibly used the Impugned Trade Mark are unlikely from their disclosed shareholding connected with the Defendant. This is corroborated by the Defendant’s absence with intention not to defend the Application as seen from the letter from Messrs Ram Rais & Partners. In addition and more pertinently, I find the Hai Pa Wang Sea Food Produce which was a partnership no longer renewed it business registration since 27 July 1996. The Hai Pa Wang Seafood Restaurant Sdn Bhd and HPW Ocean Park 16 Development (formerly known as Hai Pa Wang Food Holdings Sdn Bhd) were dissolved and their last activity recorded in the searches in the Companies Commission of Malaysia was in 2006 and 1987 respectively. Finally the Grand Hai Pa Wang restaurant was neither a registered business nor company. According to Venovox Sdn Bhd, that restaurant was a set up in the Grand Continental Hotel in Sarawak and has probably now been subsumed into it and hence also ceased to exist.

In the circumstances, I find and hold that the Impugned Mark was not used in good faith in relation to the goods and services of its registered proprietor for a continuous period of not less than three years up to a month before the filing of the Application.

Consequently, I am satisfied that the Plaintiff has made out a meritorious application within the ambit of s. 46(1)(b) of the TMA. 17

It is for the foregoing reasons that I allowed the Application as so ordered. Dated this 7 December 2018 t.t LIM CHONG FONG JUDGE HIGH COURT KUALA LUMPUR COUNSEL FOR THE PLAINTIFF: CHUNG CHEE YIEN