Mcdonald'S Corporation v B. Awtar Singh A/L Balwant Singh Trading as MC Spicy Curry House (WA-24IP-19-05/2025)

This is an appeal by the Plaintiff, McDonald’s Corporation, against the decision of the learned Registrar of Trademarks dated 28 February 2025 (“the Decision”). By that decision, the learned Registrar dismissed the Plaintiff’s opposition against the Defendant’s application for the registration of the trademark “MC CURRY” under Trademark Application No. 03005153 in Class 29 (“the Defendant’s Mark”).

The Plaintiff’s opposition before the Registrar of Trademarks is predicated on the assertion that the Defendant’s Mark contravenes sections 14(1)(a), 14(1)(d), 19(1)(b), and 25(1) of the Trademarks Act 1976 (TMA 1976). This contention is advanced on three principal grounds: 2! ! a) The Plaintiff has cultivated a distinctive “Mc/Mac” family of marks, which have been utilised and registered in Malaysia since 1982, encompassing a broad spectrum of goods and services related to food and restaurants. b) The Defendant’s use of the “MC” prefix in conjunction with a food descriptor within Class 29 is likely to engender confusion among consumers, amount to passing off, and unjustly capitalize on the Plaintiff’s established goodwill. c) The Plaintiff’s marks are recognized as well-known trademarks within the purview of the TMA 1976 and the Trademarks Regulations 1997 (the Regulations), thereby warranting heightened protection against misuse or dilution.

Having considered the written submissions filed and after hearing the oral arguments presented by their respective learned counsel, I am of the view that this appeal ought to be allowed. The learned Registrar, with respect, erred in several material aspects of the law and fact, necessitating appellate intervention. In the reasons that follow, I will address each of the principal grounds of appeal raised by the Plaintiff. ! B. The Factual Background ! [4] The Plaintiff is a globally recognised corporation, best known for its extensive chain of fast-food restaurants, which has operated in Malaysia since 1982. It is the registered proprietor of a substantial portfolio of trademarks in Malaysia and worldwide, many of which are 3! ! characterised by the use of the prefixes “Mc” or “Mac” in conjunction with a food item or other descriptor – such as “BIG MAC”, “McCHICKEN”, “McMUFFIN”, “McRENDANG”, “McVALUE MEALS”, “McNUGGETS”, “McCRISPY”, “McEGG”, “McCAFÉ” and others – supported by corresponding registrations in Class 29 and other classes (collectively, “the McDonald’s Family of Marks”).

It is the Plaintiff’s case that, by reason of long, extensive and continuous use, this family of marks has come to be uniquely and exclusively associated with the Plaintiff in the minds of the purchasing public.

The Defendant, an individual trading as “Mc Spicy Curry House”, applied on 5.5.2003 to register the mark “MC CURRY” in Class 29. That application covers, among others, the following goods: “anchovy, preserved beans, butter, potato chips, coconut oil, corn oil, dates, edible bird’s nest, edible oils, edible fats, eggs, fish fillets, frozen fruits, jams, jellies, margarine, meat, preserved meat, milk, preserved mushrooms, pickles, peanut butter, pork, salted fish, soups, sesame oil, preserved soya bean for food, tofu, sunflower oil, tomato juice for cooking, tomato puree, tuna fish, vegetable salad, preserved vegetable and yogurt”.

The Defendant’s stance is that these are grocery-type products intended to be marketed through shops and supermarkets and not through restaurant services, and that this distinction is material to the assessment of the likelihood of confusion. 4! ! [8] The Plaintiff opposed the application before the Registrar of Trademarks. A preliminary procedural issue arose at the outset. Learned counsel contended that the Plaintiff was never served with the Defendant’s Counter-Statement and Statutory Declaration, notwithstanding that service is a mandatory step under the Regulations. On that basis, learned counsel contended that, by operation of Regulations 39 and 41, the Defendant’s application “ought to have been deemed abandoned”. Notwithstanding this complaint, the Registrar, by letter dated 13.4.2012, accepted the non-service, treated the omission as non-fatal, and invited the Plaintiff to file its Statutory Declaration in support of the opposition. I shall state my views on this procedural non-compliance in the later part of my judgment.

Turning to the substantive opposition before the Registrar, the grounds advanced by the Defendant in support of the registration of the Defendant’s Mark may be summarised as follows: i. First, the Defendant contended that the Plaintiff cannot claim exclusive rights over the prefix “MC” and thus, does not enjoy exclusivity over the “Mc” prefix. ii. Secondly, the Defendant argued that if the Plaintiff truly had exclusive rights to the “MC” prefix, it would not need to register each individual “Mc”-formative trademark. iii. Thirdly, the Defendant asserted that, because the Plaintiff does not market its products in supermarkets and retail markets, there can be no confusion between the parties’ products. 5! ! iv. Fourthly, the Defendant produced a list of trademarks extracted from the Malaysian Trademarks Register that contain the element “MC”. v. Fifthly, the Defendant claimed that the Defendant’s Mark was derived from a personal name or “name of glamour”. vi. Finally, the Defendant relied on the Court of Appeal’s decision in McCurry Restaurant (KL) Sdn Bhd v McDonald’s Corporation [2009] 3 MLJ 774 (McCurry Restaurant v McDonald’s Corporation) to suggest that the Plaintiff has lost the right to claim that the prefix “MC” belongs to it.

The learned Registrar ultimately found in favour of the Defendant. In essence, his reasons may be summarised as follows: i. The Registrar concluded that the goods of the parties were of a different “cuisine”. The Registrar took the view that the Defendant’s products comprised varieties of local raw and ready-to-eat food such as anchovies, salted fish and potato chips, whereas the Plaintiff’s products were Western fast foods such as burgers, fried chicken and fries. On that basis, he held that the Defendant did not provide or serve any goods similar to or identical with those of the Plaintiff. ii. The Registrar also noted that, despite both marks sharing the “MC” prefix, the Defendant’s Mark is a simple word mark, whereas the Plaintiff’s mark is usually depicted with the iconic golden arches “M” and the word “McDonald’s” set against a red 6! ! background. As a result, the overall representations of the two marks are distinct and easily distinguishable. iii. In reaching his conclusion that there was no likelihood of confusion, the Registrar also placed considerable reliance on the Court of Appeal’s decision in McCurry Restaurant v McDonald’s Corporation, which held that the mere choice of the name “McCurry” as a restaurant name did not, in itself, justify an inference that the defendant sought to obtain an unfair advantage from the use of the “MC” prefix. The Registrar considered that the same reasoning applied in the instant case. On that basis, the Registrar concluded that there could be no confusion in the marketplace such as would lead consumers to believe that the Defendant’s goods were those of the Plaintiff or that there was any commercial association between them. iv. Insofar as the question of passing off, the Registrar stated that the question of passing off was a matter for the courts to decide. III. The Grounds of Appeal

The Plaintiff advanced its appeal on the following grounds: a) The Registrar of Trademarks had erred in law and in fact for failing to consider the preliminary objection raised by the Plaintiff with regard to the service of the Defendant’s Counter Statement and Statutory Declaration. (The Procedural Irregularity: Non-Service of the Counter-Statement) 7! ! b) The Registrar of Trademarks erred in law and in fact in not applying the correct test when comparing the goods of the Plaintiff and the Defendant. (Comparison of Goods: Error in Legal Test) c) The Registrar of Trademarks erred in law and in fact in not applying the correct test when comparing the Plaintiff’s McDonald’s Family of Marks and the Defendant’s Trademark. (Comparison of Marks: The "Family of Marks" Doctrine) d) The Registrar of Trademarks erred in law and fact by failing to consider the issue of whether the registration and use of the Defendant’s Trademark would constitute passing off in common law. (The Issue of Passing Off) e) The Registrar of Trademarks erred in law and in fact by failing to consider the relevant grounds raised by the Plaintiff concerning the well-known status of the Plaintiff’s McDonald’s Family of Marks, and by failing to consider whether the Defendant’s Trademark was nearly resembling the Plaintiff’s McDonald’s Family of Trademarks. (The Well-Known Status of the Plaintiff's Marks) f) The Registrar of Trademarks erred in law and in fact in holding that the registration of the Defendant’s Trademark application did not offend sections 14(1)(a), 14(1)(d), 19(1)(b) and 25(1) of the TMA 1976. (Defendant’s Trademark application offends sections 14(1)(a), 14(1)(d), 19(1)(b) and 25(1) of the TMA 1976). 8! ! IV. Analysis and Findings

The Procedural Irregularity: Non-Service of the Counter-Statement [12] I will first address the preliminary ground of appeal regarding the Defendant's failure to serve his Counter-Statement to the Plaintiff. The Plaintiff's counsel argued that this omission represents a significant flaw in the Defendant's application, as strict adherence to the service requirements outlined in the Regulations is mandatory. Learned counsel contended that the Registrar made an error by not giving proper consideration to this preliminary objection, which should have led to the Defendant's application being considered abandoned under the Regulations. Learned counsel for the Plaintiff underscored the imperative nature of Regulations 39 and 41, positing that the obligation to file and serve simultaneously is a prerequisite. [13] In analysing this issue, it is necessary to examine the specific provisions of Regulation 39, which reads as follows:

Within two months of the receipt of a notice of opposition filed in accordance with regulation 38, the applicant may file a counterstatement on Form TM 8 setting out the grounds on which he relies as supporting his application and the facts, if any, alleged in the notice of opposition which he admits, and shall at the same time send a copy of the counter-statement to the opponent.

If no counter-statement is filed in accordance with subregulation (1), the application shall be deemed abandoned. 9! ! [14] Similarly, Regulation 41 stipulates the evidentiary framework:

Within two months of the receipt of the opponent's evidence, the applicant shall file with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his application and shall at the same time send a copy of that evidence to the opponent.

If no evidence is filed in accordance with subregulation (1), the application shall be deemed abandoned. [Underlined Emphasis Mine] [15] I note that it is of considerable significance that the legislature has employed the imperative word "shall" in both Regulations 39 and 41. This usage renders the service of documents a mandatory obligation, rather than one that is merely directory. The concomitant requirement for simultaneous filing and service acts as a prerequisite that cannot be lightly set aside. [16] The relevant provisions of the Regulations establish a procedural framework designed to ensure that each party is afforded a fair opportunity to respond to the case against them. The requirement to serve documents upon the opposing party is not merely a formality; rather, it is a cornerstone of natural justice. This requirement guarantees that the opponent is fully informed of the case they must answer, allowing them to prepare their evidence and arguments accordingly. The Regulations intentionally distinguish between filing and service for a good reason. 10! ! [17] While the act of filing serves to notify the Registry, the act of service notifies the adversary. To collapse these two distinct requirements would render the specific obligation of service entirely nugatory. The learned Registrar’s decision to treat this omission as a mere technicality that occasioned no prejudice was, with respect, erroneous. The prejudice lies precisely in the denial of the opportunity to properly consider and respond to the contents of the unserved documents in the timely and orderly fashion contemplated by the procedural rules. While the Registrar undoubtedly possesses a degree of discretion, that discretion must be exercised judicially and in a manner that upholds rather than undermines the principles of procedural fairness. [18] In light of the mandatory character of Regulations 39 and 41 as envisaged above, I find that the Defendant’s failure to comply with the statutory requirement to properly serve the Counter-Statement and Statutory Declaration on the Plaintiff ought to have been fatal to his opposition. Such non-compliance mandates that the Defendant’s Trademark Application be deemed abandoned pursuant to the Regulations. The Registrar’s failure to address this non-compliance— let alone provide any reasoned justification for overlooking such a mandatory statutory requirement—represents a clear error in law. This glaring omission, coupled with the absence of any reasoning regarding this fundamental procedural requirement, clearly presents an appealable error.

Comparison of Goods: Error in Legal Test [19] I turn now to the substantive core of this appeal. In addressing this point learned counsel for the Plaintiff contended that the Registrar erred in 11! ! his comparison of the goods covered by the Defendant’s mark with those for which the Plaintiff’s marks are used and registered. The Registrar drew what appears to be a sharp distinction: in his view, the Plaintiff trades in ready-made Western fast food sold in restaurants, whereas the Defendant proposes to trade in cooking ingredients and raw food sold in grocery stores and supermarkets. [20] In my judgment, this approach sits uneasily with the principle articulated in, In the Matter of an Application by Ladislas Jellinek for the Registration of a Trade Mark [1946] 63 RPC 59. There, it was held that: “This registration would contravene Secs. 11 and 12(1), and the Registrar should have refused it. (counsel also referred to Secs 17 and

18.) The question under Sec. 12(1) is whether the goods for which registration is sought are goods of the same description as those for which the Opponents have registered their mark, and if so, will any normal use by the Applicant lead to confusion with the Opponents’ mark, also used in a normal manner. The definition of the same description of goods is difficult, it is not dependent on the classification in the Schedules, it must be looked at from a commercial point of view, i.e., whether the goods being to the same or different trades. (Kerly, 6th edn., page 258; Dowell’s Application 43 R.P.C. 313). … The criterion is the actual description of the goods rather than how they are sold; to be goods of the same description they must come within the same description. (Sunbeam Motor Car Coy’s Application 33 R.P.C. 389; County Chemical Coy. Ld’s Application 54 R.P.C. 182; Colman (J. & J.) Ld’s 12! ! Application 46 R.P.C. 126) The evidence has shown that the Applicant’s and Opponent’s goods are wholly different, the fact that one is used in connection with the other is irrelevant different proprietors have the same mark for polish and rubber boots but polish is used on rubber boots.” [Underlined Emphasis Added] [21] This principle has been reaffirmed in our courts. In Sun Jiang Trading Sdn Bhd v Guangzhou Liby Enterprise Group Co Ltd [2022] MLJU 1788, the Court applied and explained the same line of authority in the following terms: “[23] The Pianotist’s test was reaffirmed and explained further in Re Ladislas Jellinek [1946] 63 RPC 59 as follows: “Upon the evidence which I have before me, what is the test which I have to apply in considering whether deception or confusion within the meaning of Sec. 11 is likely to occur? Mr. Burrell, on behalf of the Opponents, submitted to me the following propositions with regard to this section: (1) In all applications for registration of a trade mark the onus is on the applicant to satisfy the Registrar (or the Court) that there is no reasonable probability of confusion (2) It is not necessary, in order to find that a mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. It is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. (3) In considering the probability of deception, all the surrounding circumstances have to be taken into 13! ! consideration. (4) In applications for registration, the rights of the parties are to be determined as at the date of the application. (5) The onus must be discharged by the applicant in respect of all goods coming within the specification applied for, and not only in respect of those goods on which he is proposing to use it immediately, nor is the onus discharged by proof only that any particular method of user will not give rise to confusion; the test is: What can the applicant do? I think that these propositions are, in substance, well founded, and I would merely add, with regard to the second of them, the following extract from the judgment of the late Farwell, J., in Bailey’s case, reported in 52 R.P.C., 136, at page 153: “ I think that the Court has to be satisfied not merely that there is a possibility of confusion; I think the Court must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the Register.” [24] The tests as set out in the Pianotist and Re Jellinek had been affirmatively accepted by Malaysian Courts as seen in the Supreme Court decision of Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 2 ML J 63 and a long line of authorities. See - Elba Group Sdn Bhd v Pendaftar Cap Dagangan dan Paten Malaysia & Anor [1998] 4 MLJ 105;; [1998] 4 CLJ Supp 24 (HC) Consitex SA v TCL Marketing Sdn Bhd [2008] 3 MLJ 574; [2008] 8 CLJ 44 (HC) Keep Good Feel Corp Sdn Bhd (previously known as Fasa Bebas Sdn Bhd) & Anor v Pharma World (M) Sdn Bhd & Ors [2010] 1 MLJ 242; [2010] 2 AMR 1 (HC) Al Baik Fast Food Distribution Co SAE v El Baik Food Systems Co SA & Another Appeal [2016] 5 MLJ 768 (CoA) [25] I found that the Registrar, in rejecting the opposition raised by the Plaintiff under ss. 14 and 19 of The Trade Marks Act 1976, had correctly applied the Pianotist’s test. It can be seen from her reasoning that she compared both the Plaintiff’s and the Defendant’s marks based on the 3 aspects stated, which are – 14! !

comparison on the marks itself (where comparison was made based on the phonetic and visual representation of the marks, the totality test, and the essential features of the marks under comparison);

(ii) the goods to which the marks are applied; and

(iii) the distinguishing features or essential features found in the marks under comparison.” [Underlined Emphasis Added] [22] The salient guidance derived from the aforementioned authorities is clear. The appropriate inquiry to be conducted must be grounded in commercial reality and focused on the specifications and nature of the goods, rather than on the venues of sale or the convenience of retail classification. The determination of whether the goods are, in a legal context, of the same description (or substantially similar) must be evaluated by reference to their characteristics, intended consumers, purposes, and channels of trade. [23] Further guidance may be drawn from British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, which considered how the notion of “similar goods” is to be approached under the UK legislation. The Court explained that although the phraseology has evolved from “goods of the same description” to “similar goods”, the underlying purpose remains: to avoid conflict not only for the precise goods specified, but also for the penumbra of goods that, viewed from a commercial perspective, would lead to confusion or encroachment upon the proprietor’s legitimate sphere of protection. The Court held as follows: 15! ! “Under the old United Kingdom Act there was a conception going by the words goods of the same description as those of the registered mark. It was important when the registrar was considering whether there was a prior conflicting registration (1938 Act, section 12(1)), in considering whether a mark which had not been used might nonetheless stay on the register by reason of use for such goods (Section 26) and for several other purposes. The phrase depended on judicial gloss for its interpretation, and, as time went on, a body of examples on one side or the other built up by which people could go (See DAIQUIRI RUM Trade Mark [1969] RPC 600, HL approving lists of past decisions.) I believe that similar goods is the same sort of phrase. It not only appears in section 10(2) but is also an important matter for the registrar in considering registration. Section 5(2) forbids registration of a mark when there is an earlier identical or similar mark registered for similar goods. Actually the language of the section says “similar to those for which the earlier mark is protected”. Whether that means the registrar should consider two lots of similarity (ie what goods are similar to those of the prior registration, because it protects use of the mark for such goods, and what goods are similar to the specification of the application) is also to be left for another day. I think the sort of considerations the court must have in mind are similar to those arising under the old Act in relation to goods of the same description. I do not say this because I believe there is any intention to take over that conception directly. There plainly is not. But the purpose of the conception in the old Act was to prevent marks from conflicting not only for their respective actual goods but for a penumbra also. And the purpose of similar goods in the Directive and Act is to provide protection and separation for a similar sort of penumbra.” [Underlined Emphasis Added] 16! ! [24] Similar principles were applied in DaimlerChrysler AG v Alavi (t/a Merc) [2001] IP & T 496 (DaimlerChrysler AG), where the court addressed the interplay between similarity of goods, confusion, and reputation within the European framework. In DaimlerChrysler AG the Court observed that: “[79] This interpretation of Art 5(1)(b) seems to leave Art 5(2) (and s10(3)) for the cases where either

(a)there is deception but the goods are dissimilar or (b) there is no likelihood of deception (in the sense that nobody will be confused as to the origin of the goods in question) but the defendant is taking a free ride on the claimant's reputation. It entails a wide-ranging enquiry. But it places emphasis on the factors which go to deciding the extent and strength of a reputation capable of supporting a passing-off action. Thus, if the defendant is guilty of passing-off, I suspect that there must be a strong case for infringement under Art 5(1)(b). That is not to say that there will be no infringement under 5(1)(b) if there is no passing-off, since the comparison is still mark for sign in this sense, that additional matter which prevents confusion in fact (such as a statement 'These are not the claimant's goods' can in certain circumstances prevent passing-off, but will not, as I understand it, prevent infringement). Nonetheless, as I have said elsewhere, this is not an investigation into passing off, but an investigation of the similarity between mark and sign on the one hand and specification of goods and defendant's goods on the other. …

It would be idle to pretend that I do not approach the considerations outlined in (2) above with trepidation. A finding of confusion in fact, or passing-off, may not be sufficient to establish that the mark and the sign, or the goods, are sufficiently similar. Or it may tip the scales. As Jacob J pointed out in Treat, there is nothing new in trying to identify goods that are 17! ! similar to the goods comprised within the specification on an objective basis. There is, as he said, much in common with the concept of 'goods of the same description' in the law before the 1994 Act (see subsection 12(1) (prior registration) and section 26 (prior use) in the 1938 Act). A number of objective criteria were established, starting with the well-known exposition in Jellinek's Appln (1946) 63 RPC 59 at 70(Romer J). The case is to do with shoe polish and boots and shoes: 'Now taking firstly into consideration the nature of the goods which are now in question, it seems to me that boots and shoes on the one hand differ in their nature at least as widely as the nature of semolina differs from that of mustard; the compositions of the two commodities are wholly different and distinct from one another; secondly, it seems to me that the respective uses of the articles have to be taken into account in considering whether they should be regarded as goods of the same description. The mere fact that polish is applied to boots and shoes for the purpose of cleaning them and giving them a smart appearance seems to me to be quite irrelevant in this connection.” [Underlined Emphasis Added] [25] The same analytical reasoning is evident in R M [1999] Lexis Citation 7506, where the tribunal first delineated the specifications of the competing marks and then applied the statutory test to the goods that remained in issue. The structured approach—identifying the operative specifications, confining the inquiry to those items, and then engaging in the statutory comparison—ensures that like is compared with like, and that the assessment is anchored to the commercial realities reflected in the specifications. 18! ! [26] A similar, methodical comparison was undertaken in EASYLIFE [2003] Lexis Citation 3849, where the court evaluated the services by reference to their stated specifications and, guided by considered factors such as the nature of the services, their end-users, their methods of use, and whether they are in competition or complementary. That exercise underscores the central point: the comparison must be principled, commercially realistic, and faithful to the specifications in issue, rather than being driven by retail context or sales channel alone. The following passage from the judgement is instructive: “… Comparison of services 49) The specification of the registration is for: investment services; life assurance services; pension services; banking services Three of the earlier trade marks include financial and insurance services in their specifications. I have no doubt that the latter services encompass the services of the registration and so the services are identical. A fourth trade mark's specification includes the travellers cheques and insurance services. I am of the view that insurance services will encompass life assurance services and so at least in relation to these services there is identity. Travellers cheques I will discuss below in relation to the fifth trade mark. 50) The fifth trade mark is easyLife. Not surprisingly easyGroup build a lot on this trade mark. In claiming that the services of the registration are similar to the goods and services encompassed by easyLife, Mr Roberts highlighted the following goods and services: printed matter, travellers cheques 19! ! advertising; business management; business administration; office functions; publicity, promotional services, import-export agency services, business information services, organising exhibitions for commercial or advertising purposes. I have also taken into account travel agency services. 51) The European Court of Justice in Canon held in relation to the assessment of the similarity of goods and/or services, that the following factors, inter alia, should be taken into account: their nature, their end users and their method of use and whether they are in competition with each other or are complementary.” [27] Drawing strength from the authorities cited in the preceding paragraphs, I concur with the Plaintiff’s stance in that the Registrar of Trademarks adopted an unduly narrow and artificial approach in compartmentalising the respective goods and trade channels. The established legal test, as consistently upheld in the authorities discussed, demands a more holistic and commercially realistic assessment. This requires the court to consider not only the current use of the marks but also the potential for brand extension and the reasonable assumptions a consumer might make. The pivotal question is whether the goods are of such a nature that the public could reasonably believe they originate from the same source. [28] Applying this proper approach, a comparative analysis must be conducted between the goods covered by the Plaintiff’s McDonald’s Family of Marks and those sought to be registered by the Defendant. The Plaintiff’s marks in Class 29 encompass a range of goods, including but not limited to meat, pork, fish, eggs, and milk—some of 20! ! which are identical to the goods listed in the Defendant’s Trademark Application. When the correct test is applied, it becomes evident that the overlap in goods is significant. [29] Instead of adhering to this established test, the Registrar erroneously relied on the case of McCurry Restaurant v McDonald’s Corporation. This reliance was misplaced. The learned Registrar concluded that the type of cuisine in the present case was different, despite no such distinction being reflected in the specifications. The proper test requires an objective comparison of the goods as specified, and neither party’s specifications make any reference to “local food products” or “Western (fast) food.” The specifications clearly show an overlap of identical goods, making the comparison straightforward. The Defendant’s application seeks registration for goods that are identical to those already covered by the Plaintiff’s marks in Class 29. In such cases, no complex similarity assessment is necessary; the goods are identical as a matter of law. [30] It is also critical to note that the McCurry Restaurant v McDonald’s Corporation case dealt exclusively with the use of the “McCurry” trademark as the name of a restaurant. In that case, the evidence demonstrated that the parties’ restaurants were distinct in nature and offered different types of cuisine. Importantly, there was no use of the “Mc” prefix in relation to any goods or food items by McCurry Restaurant (KL) Sdn Bhd. In contrast, the present case concerns the Defendant’s application for goods in Class 29, which directly overlap with the Plaintiff’s McDonald’s Family of Marks. The Registrar failed to recognize that the legal and factual circumstances in McCurry 21! ! Restaurant v McDonald’s Corporation are fundamentally different from those in the present dispute. [31] In fact, the Court of Appeal’s decision in McCurry Restaurant v McDonald’s Corporation supports the Plaintiff’s position here. The Court of Appeal specifically noted that a different conclusion might have been reached if the “McCurry” trademark had been used in relation to food items rather than as the name of a restaurant. This observation is directly relevant to the present case, where the Defendant seeks to register a trademark for goods in Class 29. The Registrar’s failure to appreciate this critical distinction led to a fundamental misapplication of both the facts and the law, resulting in an erroneous decision. [32] In my considered view, the Registrar failed to apply the broader and commercially realistic test required. The distinction between ready-made food and cooking ingredients is not as clear-cut as suggested. It is common for food and beverage companies to extend their brands from restaurant services to retail products, such as sauces, marinades, and other ingredients. A consumer familiar with the Plaintiff’s “Mc” branding on a variety of food products could reasonably assume that a product branded “MC CURRY” is a new line of curry-related ingredients or meal kits offered by the Plaintiff. [33] The Registrar’s failure to account for the commercial realities of brand extension and consumer perception represents a significant error in the analysis. 22! !

Comparison of Marks: The "Family of Marks" Doctrine [34] Perhaps the most significant error lay in the learned Registrar’s approach to comparing the marks. The analysis appears to have been confined to a simple, side-by-side comparison of “MC CURRY” with the standalone “McDonald’s” mark, with emphasis on visual differences. With respect, that mode of inquiry is erroneous. In this regard, I find that the Plaintiff’s case is not anchored to any single mark; it rests on the cumulative effect of its McDonald’s Family of Marks. [35] I find that the Registrar erred in law and in fact by failing to undertake a proper comparison of the conflicting marks, particularly by omitting to consider the full constellation of the Plaintiff’s “Mc/Mac + food descriptor” marks (for example, McChicken, McNuggets, McMuffin, McRendang, McCafe), which, through long and intensive use, have established a distinctive pattern in the minds of consumers. The Defendant’s use of the “MC” prefix with the food descriptor “CURRY” fits squarely within that pattern; the average consumer is therefore likely to perceive “MC CURRY” as another member of the same brand family. [36] In my judgment, the “family of marks” doctrine recognises that a proprietor may, through extensive and consistent use of a common element or prefix across a range of products, generate a distinctive associative link in the public’s mind. When consumers encounter a new sign bearing the same characteristic prefix, they are more likely to assume an association with the established family. The proper inquiry, therefore, is not to pit the Defendant’s Mark against any single mark of the Plaintiff, but to assess whether the Defendant’s Mark would, in the 23! ! perception of the public, be taken as another member of that family. What matters here is that, through sustained commercial use, the plaintiff has developed a distinctive family of marks incorporating the “MC”/“Mac” prefix; that use has led consumers to associate such prefixes with the Plaintiff. It bears emphasis that, as a matter of principle, “family of marks” is a consideration that features at the likelihood-of-confusion stage (the assessment of similarity being a mark-for-mark comparison), and the proprietor asserting a family must adduce sufficient evidence of use across a sufficient number of “family” members to anchor that association in the minds of consumers. This evidential discipline operates as a safeguard against abuse of the doctrine. (Refer case of Monster Energy Company v Glamco Co, Ltd[2018] SGHC 238) [37] In Torremar Trade Mark [2003] RPC 4, the following was held:- “18 Each of the earlier trade marks cited by the opponent must be considered in turn for the purpose of determining whether it prevents acceptance of the contested application for registration under s.5(2) of the Act. 19 In each case the question to be determined is whether there are similarities (in terms of marks and goods) which would combine to create a likelihood of confusion if the earlier trade mark and the sign subsequently presented for registration were used concurrently in relation to the goods for which they are respectively registered and proposed to be registered.” [38] In the case of The Infamous Nut Co Ltd’s Trade Marks [2003] RPC 7, the following part in the decision is instructive: 24! ! “35 It is impermissible for s.5(2)(b) collectively to group together several earlier trade marks in the proprietorship of the opponent. 36 Section 5(2)(b) speaks of registration being refused on the basis of an earlier trade mark (as defined by s.6). Thus where the opponent relies on proprietorship of more than one earlier trade mark, the registrability of the applicant’s mark must be considered against each of the opponent’s earlier trade marks separately (ENER-CAP Trade Mark [1999] RPC 362). 37 In some circumstances, it may be possible for the opponent to argue that an element in the earlier trade mark has achieved enhanced distinctiveness in the eyes of the public because it is common to a “family of marks” in the proprietorship and use of the opponent (AMOR, Decision no. 189/199 of the Opposition Division, OHIM O.J. 2/2000, p.235).” [Underlined Emphasis Added] [39] Similar principles were applied in EASY FLEX [2003] Lexis Citation 3848 [EASY FLEX], where the Court, drawing on Torremar Trademark [2003] RPC4, emphasised that each earlier mark must be assessed in turn, yet acknowledged that distinctiveness may be enhanced by membership of a recognisable brand family. The core question remains whether the similarities—considered against the relevant specifications—would induce the public to believe that the goods come from the same or economically linked undertakings. In the case of EASY FLEX, the court held the following: - “… 42) The trade marks to be compared are: 25! ! easyGroup's trade marks B&W's application EASYJET EASY easy extras ) easyExtras ) EASY EXTRAS ) series of four EASYEXTRAS ) EASYVALUE ) series of two EasyValue ) [Editor's note: illustration not reproduced] EASYFLEX 43) Mr Roberts referred to the decision of Mr Hobbs QC, sitting as the appointed person in Torremar Trade Mark [2003] RPC 4 and in particular the comments at paragraphs 18 – 25: “18 Each of the earlier trade marks cited by the opponent must be considered in turn for the purpose of determining whether it prevents acceptance of the contested application for registration under s.5(2) of the Act. 19 In each case the question to be determined is whether there are similarities (in terms of marks and goods) which would combine to create a likelihood of confusion if the earlier trade mark and the sign subsequently presented for registration were used concurrently in relation to the goods for which they are respectively registered and proposed to be registered. 20 The objection cannot be upheld if it does not appear that the public could believe that the goods supplied under the marks in contention come from the same undertaking or, as the case may be, from economically-linked undertakings: Case C-39/97 Canon Kabushiki Kaisha v Metro- 26! ! Goldwyn-Mayer inc. [1998] E.C.R. I-5507, paragraphs 26 to 30. 21 When (as contemplated by s.5(2)(b) of the Act) the marks in i23ssue are not identical, they need to be distinctively similar in order to be capable of inducing such a belief in the mind of the average consumer of the goods concerned.” [40] Drawing reference from the above, I find that the Registrar’s restriction of the assessment to a single trademark from the Plaintiff’s McDonald’s Family of Marks demonstrates a clear error in the application of established legal principles. Had the Registrar of Trademarks considered all the Plaintiff’s other McDonald’s Family of Marks coupled with the fact that there is overlap in the goods of interest of the parties, the Registrar of Trademarks would have come to the conclusion that the Defendant’s Trademark is likely to be perceived as an extension of the Plaintiff’s McDonald’s Family of Marks. [41] In fact, the courts have consistently established clear principles for assessing similarity of trademarks in the context of family of marks. In McDonalds Corp v Macri Fruit Distributors [2000] ATMO 37, the court held that: - “No single trade mark from this list bears a sufficient resemblance to either McSALAD or McFRESH, by means of either phonetic or visual comparison, to find that the applicant's marks are deceptively similar to one of the opponent's registered marks on that basis. However, this does not totally rule out a finding of deceptive similarity between the applicant's marks and the opponent's marks. This is illustrated in the statement in John Fitton & Co. Ltd's Application 66 RPC 110 at 113 by the Assistant-Comptroller, Mr S. E. Chisholm: 27! ! With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source. The type of confusion outlined here is founded on a perception that, within the context of the circumstances of the market-place, the applicant's marks are seen as being an extension of the opponent's registered trade marks due to a common element in the marks that leads to a conclusion that they identify the same trader. In the present circumstances the opponent has a family of 78 registered trade marks containing a word which has a prefix of Mc-. Of these 78 registered marks, 17 also have another common element. The second common element is that they consist of, or contain, words in which the prefix Mc-has been conjoined with a word which is either the name of the goods or services being sold, or a description of a quality or characteristic of the goods. The 17 trade marks to which I refer are EGG McMUFFIN, McFEAST, MAYOR McCHEESE, McCHICKEN, McRIB, CHICKEN McNUGGETS, McPIZZA, SHANGHAI McNUGGETS, SAUSAGE McMUFFIN, McCOLA, McBURGER, McMUFFIN, McNUGGET BUDDIES, THE McBIG ONE, McCAFE, McVALUE MEAL and McVEGETABLE. Taken together, I believe that the family of 17 marks above, with one important proviso, supplies a sufficient expectation that any trade mark prefixed 28! ! by Mc-which is conjoined to a word, which describes either the goods or services themselves or a quality or characteristic of the goods, would form part of the opponent's family of marks.” [42] In the case of McDonald’s Corporation v David Bellamy [2004] ATMO 26, the following part of the decision is instructive: - “33. I consider that the opposed trade mark is deceptively similar to the opponent’s trade mark for the following reasons: · The ‘Mac/Mc’ prefix trade marks owned and/or used by the opponent are ubiquitous and of some long standing. They are widely and immediately recognised, as is the opponent’s practice of coining additional trade marks which incorporates this prefix. · The opponent does not restrict its coinage of trade marks to ‘MacFood’ trade marks but owns and/or uses trade marks which include an indication of the intended consumers as the ‘suffix’ – for example the trade marks ‘McKids’ and ‘McBaby’, the latter of which is at least deceptively similar to the opposed trade mark, albeit for different goods. · The opposed trade mark is not a surname incorporating the element ‘Mac’ or Mc’ such as the word McManus, which would be in all likelihood be seen as being unconnected with the opponent, nor is the ‘suffix’ entirely unconnected with the goods as it denotes the intended consumers of the goods. It is very much a member of the family of trade marks coined by the opponent and, indeed, the opponent has a McBaby trade mark which it has registered. · Mr Maxwell at the hearing conceded that the derivation of the opposed trade mark was by reference to the surname McDonald, albeit that the applicant sought to make reference to the nursery rhyme “Old MacDonald had a farm …” I am quite certain that a great portion of 29! ! the consumers of goods under the opponent’s trade mark (who are also intended consumers of the goods under the applicant’s proposed trade mark) are young children who do not have the capacity or sophistication to make this distinction; nor is the distinction apparent in the opposed trade mark.

I further consider that use of the opposed trade mark would be likely to deceive or cause confusion because of the reputation of the opponent’s trade marks for the following reasons: · The opposed goods mirror those in respect of which the opponent has registrations and in fact uses its trade marks. It is unrealistic, in the light of this, to suppose that the presentation, marketing and promotion of the applicant’s goods is not in the same manner as that of the opponent: it is an option open to the applicant and inherent in the application – it is one of the ‘notional use’ potentials latent in the application which I must consider: Berlei Hestia, above. It is not apparent on the application that the applicant does not wish to open a restaurant or restaurants. The Canadian case to which Mr Maxwell refers me (McDonald's Corp. v. Coffee Hut Stores Ltd.) is predicated upon the fact that it was quite apparent from the opposed specification of goods that the applicant would not be selling foodstuffs from a restaurant. Such is not the case here.” [43] The above-cited authorities lend credence to the fact that, when properly applied, the family-of-marks doctrine requires recognition of the Plaintiff’s brand architecture and the associative power of the common prefix. Had the Registrar appreciated those factual and legal considerations, the conclusion should have been that the Defendant’s mark is likely to deceive or cause confusion by suggesting that it belongs to, or is otherwise connected with, the Plaintiff’s McDonald’s Family of Marks. In this connection, I reiterate that the doctrine is not a shortcut: it operates—where a sufficient body of “family” use is 30! ! proven—at the confusion stage, and only upon evidence capable of demonstrating that consumers perceive the shared element as a badge of common trade origin. [44] In this case, the common element is the “MC” prefix. The Plaintiff has adduced substantial evidence of its use across numerous products and the Defendant’s mark adopts that very prefix. In this regard, learned counsel for the Defendant contended that “MC” should be read phonetically as “emcee” rather than “Mac”, and that the mark should thus be taken as “emcee curry” rather than “McCurry”. With respect, I find such a submission unconvincing. In the marketplace, absent the Defendant’s preferred phonetic instruction, the mark is visually and structurally indistinguishable from the format deployed by the Plaintiff. The average consumer does not engage in such nuanced phonetic parsing; seeing the “MC” prefix attached to a food descriptor (“CURRY”), the natural inference is a connection to the McDonald’s brand. [45] In my considered view, the standard is that of the average consumer with imperfect recollection. Such a consumer does not analyse marks with forensic precision; it is the overall impression that matters. By appropriating the most distinctive and ubiquitous feature of the Plaintiff’s branding system, the Defendant’s mark creates a powerful— and, in my view, deceptive—association. Learned counsel for the Plaintiff is therefore correct to submit that consumers would reasonably perceive the Defendant’s mark as an extension of the McDonald’s Family of Marks. In these circumstances, I find that the learned Registrar erred in failing to recognise and apply the family-of-marks 31! ! doctrine, resorting instead to a narrow comparison that took insufficient account of the commercial reality of the Plaintiff’s brand architecture.

The Issue of Passing Off [46] Now, moving on to the issue of passing off, learned counsel for the Plaintiff submitted that the registration and use of the Defendant’s Mark would constitute passing off. Learned counsel argued that the Registrar erred in failing to consider the issue of whether the registration and/or use of the Defendant’s Trademark would constitute passing off in common law contrary to section 14(1)(a) of the TMA 1976. [47] The classic trinity of goodwill, misrepresentation, and damage provides the framework for this analysis. [48] I have considered this point in contention and hereby agree with the Plaintiff’s stance that its goodwill in the “Mc/Mac” family is long-standing and substantial, and that the adoption of “MC CURRY” on overlapping food products is inherently calculated to lead consumers to believe in a trade connection, licensing arrangement, or brand extension. It is clear to me that such misrepresentation would inevitably damage or dilute the distinctiveness of its marks and expose it to reputational risk from the Defendant’s products. The Registrar should have considered the issue of passing off when it was raised before him. [49] In this regard, I find that the Registrar’s erroneous position in refusing to deal with the issue of passinf is inconsistent with established judicial authorities. In Hup Seng Perusahaan Makaan (M) Sdn Bhd v Lam 32! ! Soon Edible Oils Sdn Bhd & Anor [2019] MLJU 422 , Lim Chong Fong J held as follows:- “[36] As to the Plaintiff’s other grounds of appeal no. (ix),

and (xi), I observed that the learned Registrar did not deal with them save for ground no. (x) that she has no jurisdiction because her function is only to decide on registration matters of a trade mark but a passing off action under common law is for the decision of the court. Since there has been no decision made by the learned Registrar on these grounds of appeal, they cannot be dealt with here because this Appeal is a review and not a re-hearing afresh. In any event, there is no necessity to do so in view of my findings above in respect of grounds of appeal no. (i) to (viii). But for completeness, I am of the view that the learned Registrar nevertheless has jurisdiction to deal with common law passing off as this would be within the ambit of contrary to law pursuant to s.14(1)(a) of the TMA.” !! [50] The court in the case of EL Baik Food Systems Co. S.A. v Pendaftar Cap Dagangan, Malaysia & Anor [2019] MLJU 552 has also applied the above principle in deciding whether the Registrar of Trademarks has jurisdiction to consider the issue of passing off in opposition proceedings. The following part in the decision is instructive:- ! “[20] As I have alluded to in Hup Seng Perusahaan Makanan (M) Sdn Bhd v Lam Soon Edible Oils Sdn Bhd & Anor (supra), I hold that the Registrar of Trade Marks has the jurisdiction and power to deal with passing off to oppose the application for trade mark registration pursuant to s.14(1)(a) of the TMA for being contrary to law. Accordingly, it is also the duty and hence imperative upon the Registrar to deal with it whenever raised by any party in the opposition proceedings. It is provided as follows in s. 14 (1)(a) of the TMA: 33! ! “14. Prohibition on registration

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; …” The phrase “contrary to law” has not been defined in the TMA but it will certainly in my opinion include anything unlawful or in violation of a statute or subsidiary legislation. Examples include the tort of passing off and copyright infringement connected with trade marks.” [51] The Plaintiff’s goodwill in its McDonald’s Family of Marks is indisputable. The prefix “Mc” is the very badge of that goodwill. The question of misrepresentation hinges on whether the use of “MC CURRY” is likely to lead the public to believe that the Defendant’s goods are the goods of the Plaintiff or are in some way economically connected to the Plaintiff. The use of the “MC” prefix is a direct and calculated appropriation of the Plaintiff’s distinctive branding, designed to create a link in the consumer’s mind. [52] Damage would inevitably follow. The Plaintiff would lose control over its reputation, and the distinctiveness of its famous prefix would be diluted. Any issues with the quality of the Defendant’s products would unjustly tarnish the Plaintiff’s hard-won reputation. The registration of the Defendant’s Mark would effectively provide statutory sanction for an act that the common law would restrain as passing off. Registration should therefore be refused under section 14(1)(a) of the TMA 1976, on the ground that the mark’s use would be likely to deceive or cause confusion. ! 34! ! [53] Flowing the above authorities, it is clear that the Registrar of Trademarks must consider all relevant provisions of the TMA in determining the registrability of a trademark. This includes section 14(1)(a) of the TMA which stipulates that a trademark shall not be registered if its use would be, among others, contrary to law. As acts of passing off constitute acts contrary to law as a matter of settled principle, it would be incumbent upon the Registrar to consider this ground in determining registrability if it is so raised in the course of the opposition. The stand taken by the Registrar is thus an obvious error in law.

The Well-Known Status of the Plaintiff's Marks [54] The Plaintiff’s marks are undoubtedly “well-known trademarks” within the meaning of the TMA 1976. The learned Registrar appears to have accepted this, but failed to accord this status its proper weight. The protection afforded to well-known marks is broader than that for ordinary marks. It extends to preventing the registration of similar marks even for dissimilar goods or services, provided that the use of the later mark would indicate a connection between those goods and the proprietor of the well-known mark, and is likely to damage the proprietor’s interests. Learned counsel for the Plaintiff drew this Court’s attention to the scale of its worldwide and Malaysian operations, extensive advertising and promotion, and numerous foreign decisions recognising the fame of the McDonald’s marks, all of which, he submitted, demonstrate that the Plaintiff’s trademarks are “well-known” within Malaysia. 35! ! [55] In this case, even if one were to accept the Registrar’s flawed finding that the goods are dissimilar, the well-known status of the McDonald’s Family of Marks would still be a formidable barrier to the registration of the “MC CURRY” mark. The use of the “MC” prefix would undeniably indicate a connection to the Plaintiff. The public would naturally assume a licensing agreement, a brand extension, or some other form of commercial association. This connection would dilute the distinctive character of the Plaintiff’s well-known marks and allow the Defendant to trade on the back of the Plaintiff’s reputation. This is precisely the kind of damage that the enhanced protection for well-known marks is designed to prevent. e) Defendant’s Trademark application offends sections 14(1)(a), 14(1)(d), 19(1)(b) and 25(1) of the TMA [56] Upon a thorough examination of the facts and the applicable statutory framework, it becomes evident that the registration of the Defendant’s Trademark Application would contravene several key provisions of the TMA 1976. Specifically, the application offends sections 14(1)(a), 14(1)(d), 19(1)(b), and 25(1) of the TMA 1976. It is my considered view that the learned Registrar of Trademarks erred in law and in fact by dismissing the Plaintiff’s Opposition. I shall now elaborate on the specific grounds of opposition that ought to have been upheld. i. Contravention of Section 14(1)(a) – Likelihood of Deception and Passing Off [57] To reiterate the point I have alluded to earlier, section 14(1)(a) of the TMA prohibits the registration of a trademark if its use is likely to 36! ! deceive or cause confusion. I find that the Plaintiff’s case rests on two distinct but related limbs under this provision. [58] First, the Defendant’s trademark, which employs the prefix “MC”, bears a conspicuous and misleading similarity to the Plaintiff’s well-established “McDonald’s Family of Marks”. This family of marks, consistently identified by the “Mc” or “Mac” prefix, has, through extensive use, become uniquely and ubiquitously associated with the Plaintiff in the minds of the public. The use of a nearly identical prefix by the Defendant is therefore highly likely to deceive or cause confusion. The public may be led to erroneously believe that the Defendant’s goods or services originate from, are licensed by, or are in some other way commercially connected to the Plaintiff. This creates a clear risk of misattribution, thereby offending section 14(1)(a). [59] Second, this section also encompasses the common law tort of passing off. The Plaintiff has, over many years, cultivated substantial goodwill in its business, which is intrinsically identified with its Family of Marks. This goodwill is a valuable proprietary asset. The registration and subsequent use of the Defendant's mark would amount to a misrepresentation to the public, creating a likelihood of damage to the Plaintiff's goodwill. By attempting to register a mark that leverages the distinctive character of the Plaintiff's established brand identity, the Defendant seeks to pass off its business as that of, or as being associated with, the Plaintiff. Such a registration would be contrary to law—in this instance, the common law of passing off—and is therefore impermissible under section 14(1)(a). 37! ! ii. Contravention of Section 19(1)(b) – Conflict with an Earlier Trademark [60] Section 19(1)(b) of the TMA provides a further ground for opposition. It prohibits the registration of a trademark if it is identical or similar to an earlier trademark and is to be registered for goods or services identical or similar to those for which the earlier trademark is protected, creating a likelihood of confusion on the part of the public. [61] In the present case, the Defendant's trademark is not merely similar but so nearly resembles the Plaintiff’s McDonald’s Family of Marks. Furthermore, the mark is intended for use in relation to goods that are either identical or of a similar description to those offered by the Plaintiff. The confluence of these factors—similarity of marks and similarity of goods—creates an undeniable likelihood of confusion among members of the trade and the consuming public. The registration of the Defendant’s mark would therefore be contrary to and in direct violation of section 19(1)(b). iii. Contravention of Section 14(1)(d) read with Section 25(1) – Protection of Well-Known Marks [62] Further, had the Registrar of Trade Marks considered the evidence in relation to the well-known status of the Plaintiff’s McDonald’s Family of Marks, the Registrar would have concluded that the evidence conclusively establishes that the Plaintiff's marks are well-known in this jurisdiction, fulfilling the criteria prescribed under the TMA and the associated regulations. Section 14(1)(d), read in conjunction with Section 25(1), provides enhanced protection for such marks. It 38! ! prohibits the registration of a mark that is identical to or similar to a well-known mark if its use would indicate a connection with the proprietor of the well-known mark and is likely to damage the interests of that proprietor. [63] The Defendant’s mark is, at the very least, similar to the Plaintiff's well-known marks. Its use would invariably indicate a connection to the Plaintiff, trading on the reputation and recognition that the Plaintiff has painstakingly built. This connection is not only misleading but is also likely to dilute the distinctive character of the Plaintiff's marks and damage its commercial interests. Consequently, the registration of the Defendant's mark would offend section 14(1)(d) of the TMA. [64] In my considered view, given the confusing and deceptive similarity between the Defendant’s Trademark and the Plaintiff’s McDonald’s Family of Marks, the Defendant cannot claim to be the bona fide proprietor of the Defendant’s Trademark, thereby offending section 25(1) of the TMA 1976. V. Conclusion [65] In summary, I find that the learned Registrar erred in law and in fact on multiple grounds. He was wrong to dismiss the procedural failure of service as a mere technicality. He applied an incorrect and unduly narrow test when comparing the goods and trade channels of the parties. Most significantly, he failed to appreciate the power of the Plaintiff’s family of marks and instead conducted an inappropriate comparison, thereby failing to recognise the high likelihood of confusion. Consequently, his conclusions under sections 14 and 19 of the TMA cannot be sustained. The Defendant’s Mark is likely to deceive or cause confusion and is confusingly similar to the Plaintiff’s earlier registered marks. Its registration would be contrary to law as it would facilitate passing off. [66] For these reasons, the appeal is allowed with costs of RM 10,000. The decision of the learned Registrar of Trademarks dated 28 February 2025 is hereby set aside. An order is granted that the Plaintiff’s Opposition is upheld and that the Defendant’s Trademark Application No. 03005153 for the mark “MC CURRY” be refused. Dated this 19th day of November 2025. EDWIN PARAMJOTHY MICHAEL MUNIANDY JUDICIAL COMMISSIONER COMMERCIAL DIVISION (NCC 7) HIGH COURT OF MALAYA KUALA LUMPUR Counsel: For the Plaintiff : Mr. Indran Shanmuganathan and Ms. Sim Sook Eng (Messrs Shearn Delamore & Co.) For the Defendant : Dr. Shamsher Singh Thind (Messrs SS Thind)