Poo Trading Import & Export Sdn Bhd v B.P. Yew Heng Fruits Sdn Bhd (WA-24IP-33-08/2024)

POO TRADING IMPORT & EXPORT SDN BHD [Company No.: 199701022355 (437852-P)]

FRUITGLO SDN BHD [Company No.: 201701008369 (1222534-H)]

TAM CHEE MING [NRIC No.: 690923-01-5691] …DEFENDANTS [THROUGH COUNTERCLAIM] 3! ! GROUNDS OF JUDGMENT (Enclosure 1 and Counterclaim Enclosure 6) A. INTRODUCTION AND PARTIES [1] This case concerns a dispute over the rightful ownership and use of a panda device mark used in connection with the sale of mandarin oranges in Malaysia, specifically a type of mandarin orange known as "Lukan" or "Tangor". The central issue before this Court is whether the Defendant/Respondent's Registered Trademark bearing Registration No. TM2021036177 in Class 31 ("the Respondent's Offending Mark") should be invalidated under Sections 47(3)(b) and 47(6) of the Trademarks Act 2019 ("TMA 2019"), and whether the Respondent's counterclaim for trademark infringement against the Plaintiff/Applicant and the Second and Third Defendants in the Counterclaim should succeed. [2] The Applicant, Poo Trading Import & Export Sdn Bhd is a company incorporated in Malaysia which is involved in the business of importing, exporting, and trading in fruits, including mandarin oranges. [3] The Respondent, B.P. Yew Heng Fruits Sdn Bhd, is also a company incorporated in Malaysia and is engaged in the business of trading in fruits, including mandarin oranges. The Respondent is the registered proprietor of the Respondent's Offending Mark in Class 31. 4! ! [4] The Second Defendant in the Counterclaim, Fruitglo Sdn Bhd, is a company engaged in various businesses, particularly as a wholesaler and retailer of fruits, plants, agricultural, and natural products of various kinds. The Third Defendant in the Counterclaim, Tam Chee Ming, is an employee of the Second Defendant in the Counterclaim, holding the position of general manager. [5] The proceedings before this Court consist of two components: a) the Applicant's Originating Summons (Enclosure 1) seeking the invalidation and removal of the Respondent's Offending Mark from the Register of Trademarks; and b) the Respondent's Counterclaim (Enclosure 6) against the Applicant (as First Defendant), Fruitglo Sdn Bhd (as Second Defendant), and Tam Chee Ming (as Third Defendant) for trademark infringement in relation to the Applicant's use of its Tangor Panda Mark. B. BACKGROUND FACTS Parties [6] Both the Applicant and the Respondent are competitors in the business of importing, distributing, and selling mandarin oranges in Malaysia. [7] Both parties have been selling mandarin oranges using packaging that prominently features a panda device mark. 5! ! [8] The Applicant's mark, referred to throughout these proceedings as the "Applicant's Tangor Panda Mark" or simply the "Tangor Panda Mark," consists of a device of a panda used on packaging for mandarin oranges . The Applicant contends that it has been using this Tangor Panda Mark in the course of trade in Malaysia since as early as circa 2009/2010. [9] The Respondent's Offending Mark , bearing Trademark Registration No. TM2021036177, is also a panda device mark registered in Class 31 in the name of the Respondent. The said mark was applied for on 23 December 2021 and was subsequently registered. Both parties have acknowledged, and it is not in dispute, that the Respondent's Offending Mark is confusingly similar, if not substantially identical, to the Applicant's Tangor Panda Mark. [10] This concession is of critical importance. The parties' dispute does not concern whether the marks are similar as they clearly are, and both sides accepted this. The issue then is who has the prior and superior right to use the panda device mark in connection with the sale of mandarin oranges in Malaysia. 6! ! The Dispute [11] In January 2024, the Second Defendant in the Counterclaim procured mandarin oranges from the Applicant for sale in conjunction with the Chinese New Year season. The mandarin oranges obtained from the Applicant inherently came with packaging bearing the Applicant's Tangor Panda Mark. On or around 9 January 2024, the Third Defendant (Tam Chee Ming), acting in his capacity as general manager of the Second Defendant, shared and posted images of the mandarin oranges containing product descriptions, logos, and contact numbers of the Second Defendant on his personal Facebook page to promote the sale of the products. [12] Shortly thereafter, the Respondent contacted the Second Defendant and informed them of an alleged infringement of the Respondent's registered trademark. A letter of demand dated 11 January 2024 was issued by the Respondent's solicitors, asserting that the Second Defendant had infringed the Respondent's Panda Trademark. Upon receiving the letter of demand, and without any admission of liability, the Second and Third Defendants promptly withdrew all the mandarin orange products from the open market and removed all advertising images from Facebook. [13] The Applicant subsequently filed the present Originating Summons on 26 August 2024, seeking, inter alia, an order under Sections 47(3)(b) and 47(6) of the TMA 2019 for the Respondent's Offending Mark to be removed and/or invalidated from the Register of Trademarks. The Respondent counterclaimed against the 7! ! Applicant, the Second Defendant, and the Third Defendant for trademark infringement. C. THE APPLICANT'S CASE [14] The Applicant's case, is premised on two principal grounds:

The registration of the Respondent's Offending Mark should be invalidated by virtue of the rule of law protecting an unregistered trademark or other sign used in the course of trade, including under the law of passing off, due to the Applicant's earlier right in and/or earlier use of its Tangor Panda Mark since as early as circa 2009/2010 under Section 47(3)(b) read with Section 24(4)(a) of the TMA 2019.

The registration of the Respondent's Offending Mark was obtained by way of fraud or misrepresentation to the Registrar of Trade Marks under Section 47(6) of the TMA 2019. [15] The Applicant further contended that it is the rightful and common law proprietor of the Tangor Panda Mark by virtue of its longstanding use in Malaysia. On this basis, the Applicant submitted that the Respondent should not be entitled to register the Respondent's Offending Mark and claim monopoly on the panda device mark which is confusingly similar, if not identical, to the Applicant's Tangor Panda Mark. 8! ! [16] In defence of the Respondent's Counterclaim, the Applicant asserted that it has not infringed the Respondent's Offending Mark because: i. the Applicant has an earlier right and use of the Tangor Panda Mark predating the Respondent's registration; ii. the Applicant's use of the mark constitutes bona fide use of its own mark; and iii. the defence under Section 55(2)(a) of the TMA 2019, which provides that the use of an earlier right in a particular locality is not an infringement, applies to the Applicant's circumstances. D. THE RESPONDENT'S CASE [17] The Respondent's case can be summarized as follows:

The Respondent alleges that one Mr. Liu Wen Qing of Her Zhong Trading Sdn Bhd ("Her Zhong Trading") is the originator or first user of a panda device mark for the sale of mandarin oranges in Malaysia, and that the Respondent was granted permission by Mr. Liu to sell mandarin oranges using the panda-branded packaging.

The Respondent claims to have commenced use of its panda device mark in Malaysia since around the year 2010 or earlier, 9! ! which it asserts is earlier than or contemporaneous with the Applicant's use of the Tangor Panda Mark.

As the registered proprietor of the Respondent's Offending Mark, the Respondent asserted that it is the rightful owner and is entitled to the exclusive use of the said mark in Malaysia.

The Respondent contended that the Applicant failed to establish the tort of passing off and has slept on its rights by not registering the Tangor Panda Mark.

The Respondent submitted that the Applicant has failed to adduce evidence to support the contention that the Respondent's Offending Mark was obtained by fraud or misrepresentation.

By way of counterclaim, the Respondent alleges that the Applicant, the Second Defendant, and the Third Defendant have infringed the Respondent's Offending Mark by marketing, promoting, distributing, selling, and offering for sale mandarin oranges bearing the Applicant's Tangor Panda Mark without the Respondent's consent. E. THE ISSUES FOR DETERMINATION [18] Having carefully considered the parties' submissions and the evidence before this Court, the following issues arise for determination: 10! !

Whether the Applicant is an "aggrieved person" within the meaning of Section 47 of the TMA 2019, and therefore has standing to bring the application for invalidation?

(ii) Whether the Applicant is the first user and common law proprietor of the Tangor Panda Mark in Malaysia?

(iii) Whether the Respondent has established earlier use of its panda device mark in Malaysia, including through the alleged first use by Her Zhong Trading?

(iv) Whether the Applicant is entitled to seek protection of its mark under the law of Passing Off?

Whether the registration of the Respondent's Offending Mark was obtained by fraud or misrepresentation under Section 47(6) of the TMA 2019?

(vi) Whether it is inequitable for the Applicant to seek invalidation of the Respondent's Offending Mark?

(vii) Whether the Applicant, the Second Defendant, and the Third Defendant have infringed the Respondent's Offending Mark as alleged in the Counterclaim? [19] I shall now address each of these issues in turn. 11! !

Whether the Applicant is an "aggrieved person" within the meaning of Section 47 of the TMA 2019, and therefore has standing to bring the application for invalidation [20] Section 47 of the TMA 2019 requires that an application for invalidation of a registered trademark be made by an "aggrieved person." Section 47 of the TMA 2019 provides as follows:

“Invalidation of registration by Court …

The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person on the ground that –

there is an earlier trademark under subsection 24(1), (2) or (3); or

there is an earlier right under subsection 24(4). …

The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person or the Registrar on the ground of fraud in the registration or that the registration was obtained by misrepresentation. ……” [Underlined Emphasis Mine] [21] The threshold question, therefore, is whether the Applicant qualifies as such. [22] The term "aggrieved person" has been judicially considered in a number of Malaysian authorities. The leading authority is the Federal Court decision of McLaren International Limited v. Lim Yat Meen [2009] 4 CLJ 749. The Appellant in this case is the proprietor of the mark “McLaren” in England, a mark which has been 12! ! long associated with the high octane world of Formula One racing. The Respondent on the other hand is the registered proprietor of the trade mark “McLaren” in Malaysia since 11 April 1992 in respect of goods in Class 25. Abdul Aziz Mohamad FCJ, in explaining the term “aggrieved person” in Section 45(1)(a) of the repealed Trade Marks Act 1976 (TMA 1976), held the following: "[22] We understand that passage as laying down the principle that a person aggrieved is a person who has used his mark as a trade mark – or who has a genuine and present intention to use his mark as a trade mark – in the course of a trade which is the same as or similar to the trade of the owner of the registered trade mark that the person wants to have removed from the register." [23] The Federal Court in McLaren has adopted a considerable restrictive approach in determining the question of a “person aggrieved”. An applicant is required to prove that he has used his mark as a trade mark or has a genuine and present intention to use his mark as a trademark in the course of a trade which is similar to the trade of the owner of the registered trade mark. [24] Premised on the principle set out in McLaren (supra) and the Court made a similar finding in a relatively recent case of Nalli Ramanathan & Anor (both suing as a firm, Nalli Chinnasami Chetty) v. Nalli's Silk Saris Traders Sdn Bhd & Anor (Nalli Sdn Bhd, intervener) [2023] MLJU 832. The facts of Nalli Ramanathan are these: The plaintiff, a long-established saree and silk textile business, discovered through a MyIPO search that the trademarks in Classes 24 and 25 were registered in the name of “Nilli’s Silks 13! ! Saris Traders Sdn Bhd,” a company that did not in fact exist. The plaintiff then found a similarly named company, “Nalli’s Silks Saris Traders Sdn Bhd,” located nearby, and suspected that this second company was the true owner of the marks. The second defendant later confirmed that suspicion. [25] The plaintiff filed an originating summons seeking to revoke the trademarks for non-use under section 46 of the TMA 2019 and, alternatively, to invalidate them under section 47. An intervener, Nalli Sdn Bhd, entered the proceedings claiming that the second defendant had assigned the marks to it in 2008, although that alleged assignment was itself disputed in separate proceedings. [26] On the evidence adduced, the Court found that the plaintiff qualified as an aggrieved person for the purposes of both sections 46 and 47 of the TMA 2019. The evidence showed that the plaintiff is a long-established business, having been founded in 1928, with no evidence to the contrary, and that it has been formally recognised through its Acknowledgment of Registration of Firm dated 26 April

The Plaintiff’s business is in silk textiles and sarees, and it has used the Plaintiff’s Mark for many years in the course of that trade. [27] The High Court found that the plaintiff’s commercial presence is substantial, with more than 30 stores in India and additional stores in Singapore, the United States, and Canada, as well as an online business conducted through Nalli.com. The plaintiff’s Mark has also been registered in several jurisdictions, including Singapore, the United States, the United Kingdom, Canada, the EEC, the UAE, Australia, and New Zealand. Taken together with its intention to register the plaintiff’s Mark in Malaysia, these facts satisfied the 14! ! Court that the plaintiff had a real and legitimate interest affected by the impugned registration, and therefore had standing as an aggrieved person. [28] Next, is the case of Golden Goose S.P.A v. Kenso Corporation (M) Sdn Bhd [2023] 1 LNS 425. This case concerned an application by Golden Goose to revoke four Malaysian trademarks registered by the defendant in Classes 18 and 25 for non-use under section 46(1)(b) of the TMA 2019. Golden Goose had already registered its marks in many countries for leather goods, clothing, footwear, and related products. However, when it applied to register those marks in Malaysia, MyIPO refused the applications because of the defendant’s earlier registered “Goose” marks in the same classes. Golden Goose then investigated the defendant’s actual use of those marks and found that the defendant appeared to be using “Golden Goose” only for agricultural chemicals and fertilisers, not for goods in Classes 18 and 25. It therefore brought an originating summons to revoke the defendant’s registrations for non-use. [29] The High Court found that Golden Goose was an “aggrieved person” with standing to bring the action. It had used its Golden Goose mark internationally for goods in the same classes, had registrations around the world, and had been directly blocked from registering in Malaysia because of the defendant’s marks. [30] Guided by the above pronouncements and in applying the McLaren test to the present case, I am satisfied that the Applicant is an aggrieved person for the following reasons: 15! !

Since 1997, the Applicant has been engaged in the business of importing, exporting, and trading fruits, including mandarin oranges, in Malaysia. The Applicant's trade is identical to the Respondent's, as both are engaged in the business of selling mandarin oranges within Malaysia.

The Applicant has demonstrated, through the adduced affidavit evidence, continuous use of the Tangor Panda Mark in the course of trade for the sale of mandarin oranges in Malaysia since approximately 2009/2010. This constitutes actual and demonstrable use for a period exceeding 14 years, and not merely a professed intention to use the mark.

The Applicant's use and registration of its Tangor Panda Mark is significantly hindered by the Respondent's registration of the Offending Mark. Should the Applicant continue to use its Tangor Panda Mark on its mandarin orange product in Malaysia, it would undoubtedly expose itself—or, worse, its local distributors and customers. This is precisely the scenario in the the case here, where a counterclaim was launched against the Second Defendant, to whom the Applicant supplied mandarin oranges bearing the Tangor Panda Mark—to allegations of trademark infringement by the Respondent.

Similar to the facts in Nalli Ramanathan and Golden Goose (supra), the Applicant's pending trademark application for its Tangor Panda Mark has received a provisional refusal from the Registrar of the Intellectual Property Corporation of Malaysia (MyIPO) on the grounds that the Applicant's Tangor Panda Mark 16! ! is identical and/or confusingly similar to the Respondent's Offending Mark, and therefore should not be registered pursuant to Section 24(2)(b) of the TMA 2019. As such, given that the Registrar has objected to the registration of the Applicant's Tangor Panda Mark precisely on the ground that it is identical and/or confusingly similar to the Respondent's Offending Mark, the Applicant should be regarded as an aggrieved party and afforded the opportunity to challenge the validity of the Respondent's Offending Mark. [31] In sum, given the identity of trade, the identity of goods, and the Applicant's established use of a confusingly similar mark, I have no hesitation in finding that the Applicant satisfies the threshold requirement of being an "aggrieved person" under Section 47 of the TMA 2019. The proper inquiry remains whether the Applicant has used the mark or has a genuine and present intention to use it in the same or similar trade, and whether its lawful interest is substantially affected by the impugned registration. [32] In view of the above, I find that the Applicant is an aggrieved person within the ambit of Section 47 of the TMA 2019 in respect of Class 31 or related goods and has the locus standi to bring this action against the Respondent. The Applicant has discharged the legal onus in proving that it is an aggrieved person having a real, genuine and present intention to use and register its Tangor Panda Mark in Class 31 in the course of trade which is the same or similar to the trade of the Respondent wherein the Respondent’s Offending Mark is used. 17! ! ii) Whether the Applicant is the first user and common law proprietor of the Tangor Panda Mark in Malaysia [33] The question of who is the first user and common law proprietor of a trademark is of fundamental importance in the context of invalidation proceedings under Section 47(3)(b) of the TMA 2019. Under Malaysian law, the first to use a mark in the course of trade acquires common law rights in that mark, and such rights are capable of defeating a subsequent registered proprietor's claim. [34] Section 47 of the TMA 2019 provides that a registered trademark may be declared invalid by the Court where there exists an earlier trademark or an earlier right, including common law rights. In particular, section 47(3)(b) recognises “earlier rights” as a basis for invalidation, while section 47(6) further allows invalidation on grounds of fraud or misrepresentation. These provisions must be read together with section 24, which sets out the relative grounds for refusal of registration. Section 24(4) makes clear that registration must be refused where the use of a mark is prevented by existing legal rights, including those arising under the law of passing off or other earlier proprietary interests. [35] The relevant parts of section 47 of the TMA 2019 are reproduced as follows: “Invalidation of registration by Court 47. …

The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person on the ground that – 18! !

there is an earlier trademark under subsection 24(1),

or (3); or

there is an earlier right under subsection 24(4). …

The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person or the Registrar on the ground of fraud in the registration or that the registration was obtained by misrepresentation. …….” [ Underlined Emphasis added] [36] Section 24 of the TMA 2019 provides as follows:

“Relative grounds for refusal of registration …

Subject to subsection (6), the Registrar shall refuse to register a trademark if, or to the extent that, its use in Malaysia is prevented –

by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade including under the law of passing off; or

by virtue of an earlier right other than those referred to in paragraph (a) or in subsections (1) to (3) including under the law copyright or industrial designs.” [Underlined Emphasis added]. [37] The leading authority on the law of first use and common law proprietorship in Malaysia is the case of Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia (Pendaftar Cap Dagangan Malaysia, Interested Party) [2015] 6 MLJ 465 (Mesuma). This case has been consistently recognized and cited as the primary 19! ! authority for the legal principles concerning first use and common law proprietorship. [38] The facts of Mesuma are that, since 1990, the defendant had been a contract supplier of sporting apparel and equipment to the plaintiff, a statutory body established under the National Sports Council of Malaysia Act 1971. In 2005, the Ministry of Youth and Sports, together with the Plaintiff and 59 Icons Sdn Bhd, organised a new jersey design competition to create a new motif and colour scheme for Malaysian national sports attire, with the Ministry reserving ownership over all submitted designs. On 14 November 2005, the winning "tiger stripes" design was officially launched, and the Ministry subsequently entrusted the plaintiff with the rights, ownership, and management of the design. On 9 July 2009, the defendant registered the tiger stripes design as Trade Mark Nos. 09011365 (Class 18) and 09011366 (Class 25) under the TMA 1976 for sporting apparel and accessories, and later admitted that the registered marks were entirely adapted from the Plaintiff's design. [39] On or around 15 January 2010, the plaintiff applied to register the same design, but the Registrar objected on the ground that the defendant had earlier claimed to be the first user. Thereafter, the plaintiff commenced proceedings in the High Court alleging passing off, registered design infringement, and copyright infringement, and seeking rectification of the defendant's registered trademarks under sections 45(1)(a) and 46(1) of the TMA 1976. The High Court, followed by the Court of Appeal, found in favour of the plaintiff. On appeal, the Federal Court dismissed the defendant's appeal and affirmed the decisions of the lower courts. 20! ! [40] The Federal Court in Mesuma reasoned that, based on irrefutable evidence, the defendant only became involved due to its appointment to produce and supply sports attire bearing the tiger stripes design to the plaintiff. The defendant first used the tiger stripes design as a supplier upon appointment by the plaintiff. The defendant was appointed by the plaintiff to manufacture sports attire carrying the tiger stripes design, with the first invoice issued on 11 December 2006 by the defendant, all of which was paid by the plaintiff for the Asian Games in Doha. The plaintiff was, in fact and in law, the first user of the tiger stripes design. [41] At all material times, the contractual position of the defendant was that of a supplier to the plaintiff through the defendant's appointment to manufacture and produce the tiger stripes design trademark. The plaintiff had used the tiger stripes design "in the course of trade" when it appointed the defendant as a contract supplier of the goods bearing the tiger stripes design. In its activities, the plaintiff had used the tiger stripes design since 2005. [42] The Federal Court emphasised that common law proprietorship is not founded on who first conceptualised the mark, but on who first used it distinctively as a trademark in the course of trade. In that context, the Court reaffirmed the established position that the first user of a mark is entitled to it at common law. The Court further observed that it is not unlawful under the legislation for a Malaysian trader to become the registered proprietor of a foreign mark for similar goods if that mark had not been used in Malaysia. The Federal Court, therefore, concluded that common law trademark rights and any passing off claim are premised on the factual 21! ! requirement of distinctive use in trade, and that he who first uses the trademark owns it at common law, entitling him to apply for registration as a bona fide applicant. [43] The Federal Court in Mesuma placed reliance, among others, on two cases regarding the principle of first user and common law proprietorship. The first case is the High Court's decision in Fazaruddin bin Ibrahim v Parkson Corporation Sdn Bhd [1997] 4 MLJ 360, and the second case is the Court of Appeal decision in Lim Yew Sing v Hummel International Sports & Leisure A/S [1996] 3 MLJ 7. [44] In relation to the case of Fazaruddin bin Ibrahim, the Federal Court in paragraph [39] of Mesuma held as follows: [39] The law governing the foundation, which led to common law proprietorship over a trademark or source identifier, as we have summarised above, has been well settled. The case of Fazaruddin bin Ibrahim v Parkson Corp Sdn Bhd [1997] 4 MLJ 360 reiterates the established legal position under common law that a first user of a mark is lawfully entitled to use the said mark. In the case of Fazaruddin bin Ibrahim v Parkson Corp Sdn Bhd, the court held that in common law, the first person who uses a trademark becomes the proprietor of the mark. Abdul Malik Ishak J (as he then was) said the following: The basic common law principle is this: the first person who uses a trademark of an appropriate type within a country becomes the proprietor of the mark (Re Registered Trade Mark ‘Yanx’ ex p Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at p 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at p 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 22! !

59 ALJR 77 at p 83). It is said that a person who becomes proprietor of a trademark in this way is entitled at common law to restrain a person who later commences to use the trademark. [45] In relation to the case of Lim Yew Sing, the Federal Court in paragraph [40] of Mesuma held that: [40] In the case of Lim Yew Sing v Hummel International Sports & Leisure A/S [1996] 3 MLJ 7, the Court of Appeal held that there was nothing unlawful under the Act for a Malaysian trader to become the registered proprietor of a foreign mark used for similar foreign goods provided that the foreign mark had not been used at all in Malaysia. Mahadev Shanker JCA said: Trade mark law is very territorial in many aspects. So, it will be useful to keep in the forefront of our minds that, however distasteful it may be for a trader in one country to appropriate the mark of a foreign trader who is using that mark in a foreign country, there is nothing unlawful under the Trade Marks Act 1976 for a Malaysian trader to become the registered proprietor of a foreign mark used for similar foreign goods provided that the foreign mark has not been used at all in Malaysia. [46] The concept of “use” of a trade mark in the course of trade is illuminated by section 7 of the TMA 2019. Section 7 of the TMA 2019 provides: “References to use of a trademark 23! !

References to the use of a trademark shall be construed as references to the use of a printed or other visual or non-visual representation of the trademark.

References to the use of a trademark in relation to goods shall be construed as reference to the use of the trademark upon, or in physical or other relation to, the goods.

References to the use of a trademark in relation to services shall be construed as references to the use of the trademark as a statement or as part of a statement about the services.

Any aural representation of a trademark shall be construed as references to the use of the trademark. ……” [Emphasis added] [47] Importantly, it is not enough that a mark is merely created or exists in the abstract; it must be used on or in relation to goods in the course of trade. In Mesuma (supra), at paragraphs [50]–[52], the Federal Court approached the issue through the statutory definition of a trade mark under the repealed section 3 of the TMA 1976 and highlighted that the operative words are “in the course of trade”. The Court explained that the mark must be used so as to indicate a connection in trade between the goods and the person using it, i.e. to indicate origin/source. The Court also noted that “trade” is a wide term and, applying ordinary meaning principles it encompasses business conducted for profit and commercial transactions. [48] Although Mesuma discussed section 3 of the repealed TMA 1976, the same concept remains relevant under the TMA 2019. Section 3 24! ! of the TMA 2019 defines “trade mark” broadly as any sign capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of others. Read together with section 7, the statutory framework under the TMA 2019 continues to centre trademark rights on distinctive use (or intended use) in the course of trade [49] The Federal Court in McLaren also recognized that the use of a mark in the course of trade is the foundation of trademark rights. Abdul Aziz Mohamad FCJ emphasized that the operative concept is use "in the course of trade" wherein the mark must be used in connection with the trading of goods or services to indicate that the goods or services bearing the same mark originate from the same source. [50] In synthesising the principles discussed above, it is evident that Malaysian trademark law places central importance on actual use in trade as the foundation of proprietary rights. The statutory framework under sections 24 and 47 of the TMA 2019 operates in tandem with common law doctrines to ensure that rights accrued through genuine commercial use are protected against later registrations obtained without legitimate entitlement. The jurisprudence, particularly as articulated in Mesuma, reinforces that trademark protection is ultimately grounded in marketplace reality rather than formal registration alone, thereby safeguarding both traders and the integrity of the register. 25! ! [51] I now turn to examine the evidence adduced by the Applicant to establish its claim as the first user of the Tangor Panda Mark in Malaysia. [52] It is the Applicant’s case that it has been using the Tangor Panda Mark in the course of trade for the sale of mandarin oranges in Malaysia since as early as circa 2009/2010. The Applicant had in its affidavits, adduced the following evidence to show that it has earlier rights in the Applicant’s Tangor Panda Mark due to its extensive use of the said mark since circa 2009 / early 2010 in Malaysia:

Sample purchase orders, supplier’s invoices and bills of lading for the importation and purchase of mandarin oranges by the Applicant from its suppliers in China since end of 2009, 2010 and 2011 for sale in Malaysia;

Inventory reports (Detailed Stock Item Movement Report) in years 2009 and 2011, as well as lists of stock purchases of the mandarin orange bearing the Applicant’s Tangor Panda Mark from the Chinese suppliers by the Applicant in years 2010 – 2024;

Copies of photographs all dated January 2011 showing the stocks of mandarin oranges packaged with boxes bearing the Applicant’s Tangor Panda Mark (with the Panda device) imported from China and stored in the Applicant’s warehouse; 26! !

Copies of photographs dated 2011 and 2012 showing the consignment of mandarin oranges packaged with boxes bearing the Applicant’s Tangor Panda Mark (with the Panda device) and the unloading of the same at the Applicant’s warehouse;

A printout of the email dated 07.10.2013 showing order placed by the Applicant to the Chinese supplier for mandarin oranges bearing the Applicant’s Tangor Panda Mark, DoReMi mark and ަФՙ (Chun Zhi Ye), with attaching document showing the proposed draft cardboard box design and packaging;

A printout of the email dated 19.10.2013 attaching the approved cardboard box design and packaging bearing the Applicant’s Tangor Panda Mark for mandarin oranges in different sizes (i.e. S, M and L);

The Applicant’s customers’ postings and photographs on social media depicting the mandarin oranges packaged with boxes bearing the Applicant’s Tangor Panda Mark (with the Panda device) since year 2015;

Newspaper article from Nanyang Siang Pau (Nanyang Business Daily) dated 13.01.2011 reporting on the Applicant’s sales of mandarin oranges in Malaysia, including but not limited to, those marketed and sold under the brand name “DoReMi” and the Applicant’s Tangor Panda Mark; 27! !

Applicant’s cardboard box packaging and its design thereof in respect of its mandarin oranges bearing the Applicant’s

Evidence of promotional, marketing and advertisement materials of the Applicant’s mandarin oranges product bearing or packaged using the Applicant’s Tangor Panda Mark for the past years; and

Evidence of substantial sales of the Applicant’s product marketed, distributed and sold under the Applicant’s Tangor Panda Mark in Malaysia for the years 2010 up to 2024, with the earliest invoice adduced dated 27 January 2010. [53] I am satisfied, upon reviewing the totality of the evidence adduced by the Applicant, that the Applicant has established on a balance of probabilities that it has been using the Tangor Panda Mark in the course of trade in Malaysia since as early as circa 2009/2010. The evidence is consistent, corroborated by contemporaneous documentation, and has not been effectively rebutted by the Respondent. [54] In reaching this conclusion, I found that the evidence shows that the Applicant's use of the Tangor Panda Mark has been continuous and uninterrupted from circa 2009/2010 to the present day. There are no unexplained gaps in the evidence that would undermine the Applicant's claim of continuous use. 28! ! [55] The Applicant's evidence demonstrates that its mandarin oranges bearing the Tangor Panda Mark have been distributed and sold across Malaysia, including through distributors and dealers in various states. The volume and value of trade evidenced is significant and consistent with the operations of an established fruit importer and trader. [56] The invoices, trade documents, and packaging photographs are contemporaneous records that were created in the ordinary course of business. Such documents carry significant evidential weight, as they were not created for the purpose of litigation. [57] Through its longstanding use of the Tangor Panda Mark, the Applicant has built up a reputation and goodwill among its customers, distributors, and dealers in Malaysia. The panda device mark has become a source identifier associated with the Applicant's mandarin oranges. [58] I am therefore satisfied that the Applicant has discharged its burden of proving that it is the first user and common law proprietor of the Tangor Panda Mark in Malaysia. The Applicant's use of the mark predates the Respondent's registration of the Offending Mark on 23 December 2021 by over a decade. iii) Whether the Respondent has established earlier use of its panda device mark in Malaysia, including through the alleged first use by Her Zhong Trading [59] The Respondent contended that it has been selling mandarin oranges with panda packaging similar or identical to the Applicant's 29! ! Tangor Panda Mark within Malaysia since around the year 2010 or earlier. To support this claim, the Respondent relies on the following evidence:

Exhibit "A-3" (Respondent's 1st Affidavit in Reply): Invoices in relation to the Respondent's products issued by the Respondent's supplier(s) from the year 2012 to 2024.

Part of Exhibit "A-15" (Respondent's 2nd Affidavit in Reply): The Respondent's cash bill for the sale of mandarin oranges in February 2013, with Chinese characters "ⰱ᯿" (mandarin oranges) and "⇃⊧" (panda) visible.

Exhibit "A-4" (Respondent's 1st Affidavit in Reply): The Respondent's promotion of its products via numerous Facebook postings from the year 2016. [60] While I accept that the Respondent has engaged in the sale of mandarin oranges using panda-branded packaging, the critical question is whether the Respondent can establish use predating the Applicant's demonstrated use since circa 2009/2010. [61] After careful consideration of the documentary evidence presented by the Respondent, it is clear that the Respondent has failed to demonstrate, with the requisite degree of certainty, that they were the first to use the Respondent's Offending Mark in the course of trade within Malaysia. The Respondent has not substantiated its 30! ! claim of having commenced use of the Offending Mark prior to 2010. I am fortified in arriving at this conclusion for the following reasons:

There is simply no documentary evidence adduced by the Respondent to show the use of the Respondent’s Offending Mark on or before January 2010, i.e. the Applicant’s first use of the Applicant’s Tangor Panda Mark in the course of trade in

The invoices dated from year 2016 – year 2024 adduced by the Respondent in Exhibit “A-2” of the Respondent’s affidavit are for the sale of various fresh produce products not limited to mandarin oranges and are not all relevant to the present proceeding;

Exhibit "A-3" of the Respondent's affidavit merely presents purported invoices and telegraphic transfer slips issued by the Respondent's supplier in China for the sale of mandarin oranges or tangerines. Critically, it lacks any specific reference to the panda mark, and the earliest document allegedly dates back only to 2012.

The veracity of the three cash bills in Exhibit “A-15” — purportedly issued by Respondent to its customers in 2013 for the sale of mandarin oranges or tangerines bearing Respondent's Offending Mark is highly suspect, given their handwritten and unsigned nature. Moreover, these cash bills, being dated 2013, are patently insufficient to demonstrate 31! ! Respondent's use of Respondent's Offending Mark as early as 2010, as alleged.

Exhibit “A-4” of the Respondent’s affidavit contains photos uploaded on the Respondent’s Facebook page from circa 2016 to 2024 only and this again fortifies the Applicant’s argument that the Respondent’s alleged use of the Respondent’s Offending Mark does not commence prior to 2010; and

It is pertinent to note that the Respondent has only adduced profit and loss statements pertaining to the alleged sales of its mandarin oranges using the Respondent’s Offending Mark from the year of 2016 and not the year before (see: Exhibit “A- 13” in the Respondent’s affidavit). If the Respondent’s contention that their alleged use of the Respondent’s Offending Mark has commenced in 2010 or earlier, it should be able to adduce the relevant profit and loss statements dating back to year 2010 or earlier. [62] Notwithstanding my above findings, even taking the Respondent's evidence at its highest, the earliest that the Respondent can demonstrate actual use of the panda device mark in the course of trade is 2012. This is at least two years after the Applicant's demonstrated first use circa 2009/2010. In this regard, I find that the Respondent has failed to adduce any compelling evidence— whether invoices, receipts, packaging photographs, advertising materials, or other contemporaneous documentation to substantiate use of the panda device mark prior to the Applicant's first use. 32! ! [63] I am also mindful that the Respondent's claim of use "since around the year of 2010 or earlier" is couched in imprecise language. The word "around" introduces a degree of uncertainty that is insufficient to overcome the Applicant's more specific and well-documented claim of use since 2009/2010. In a dispute over first use, certainty and documentary support are paramount. [64] Accordingly, I find that the Respondent has failed to establish, on a balance of probabilities, that its use of the panda device mark predates the Applicant's use of the Tangor Panda Mark. [65] A significant aspect of the Respondent's case is its reliance on the alleged first use by one Mr. Liu Wen Qing of Her Zhong Trading. The Respondent contended that the use or adoption of a mark similar or identical to the Respondent's Offending Mark in the sale of mandarin oranges within Malaysia originated from Mr. Liu Wen Qing since the late 1990s to early 2000s in the state of Johor and neighbouring regions. It is the Respondent’s case that its director, Mr. Cher Seng Ngee, sought and obtained permission from Mr. Liu to sell mandarin oranges using the panda-branded packaging, and that Mr. Liu even introduced Mr. Cher to his China supplier. [66] In support of this claim, the Respondent produced Exhibit "A-16" of the Respondent's 2nd Affidavit in Reply (Enclosure 13), which purportedly showcases one of Her Zhong Trading's mandarin orange packages dating back to December 2009. 33! ! [67] I have carefully considered the Respondent's submissions on this point and find them to be without merit. [68] The mere production of an image or copy of mandarin orange packaging purportedly dating back to 20 December 2009 does not, constitute evidence of use of the panda device mark as a trademark in the course of trade in Malaysia. As the Court of Appeal held in Mesuma (supra), for a mark to be used as a trademark, it must be used "in the course of trade to indicate that the goods bearing the same mark originate from the same source." [69] The Respondent has not adduced any cogent evidence to demonstrate that Her Zhong Trading actually sold mandarin oranges in Malaysia using the panda device mark in 2009 or at any time prior to the Applicant's first use. There is no evidence of:

Invoices or receipts showing sales by Her Zhong Trading of mandarin oranges bearing the panda device mark;

(ii) Customer orders, purchase records, or delivery orders evidencing that Her Zhong Trading's customers in Malaysia purchased mandarin oranges identified by the panda device mark;

(iii) Advertising or promotional materials used by Her Zhong Trading in Malaysia featuring the panda device mark;

(iv) Distribution records, warehouse records, or logistics documentation showing the movement of mandarin oranges 34! ! bearing the panda device mark by Her Zhong Trading within Malaysia;

Financial records, accounts, or tax returns of Her Zhong Trading reflecting revenue from the sale of mandarin oranges under the panda device mark;

(vi) Any affidavit or statutory declaration from Mr. Liu Wen Qing himself or any officer of Her Zhong Trading confirming the use of the panda device mark in the course of trade in Malaysia. [70] The absence of any of the above categories of evidence is telling. A single photograph of packaging, without more, is incapable of establishing that the panda device was used as a trademark in the course of trade. Equally important, the existence of a piece of packaging does not, without corroborating evidence of actual commercial use, satisfy this requirement. The packaging could have been a prototype, a sample, or packaging used for an entirely different purpose. Absent evidence of actual trading activity and bona fide sales to actual customers within the Malaysian market, the record falls short of establishing Her Zhong Trading's use of the panda device mark as a trademark in the course of trade. [71] I note, importantly, that Mr. Liu Wen Qing himself did not affirm any affidavit in these proceedings. The Respondent's assertion that Mr. Liu gave permission to the Respondent's director, Mr. Cher Seng Ngee, to use the panda packaging, and that Mr. Liu introduced Mr. Cher to his China supplier, is entirely based on the say-so of Mr. Cher himself. There is no direct evidence from Mr. Liu confirming 35! ! these assertions. In the absence of any affidavit or statutory declaration from Mr. Liu Wen Qing, the Respondent's narrative regarding the alleged origin of the panda device mark from Her Zhong Trading remains unverified and uncorroborated. [72] Furthermore, even were I to accept (which I do not) that Her Zhong Trading had at some point used the panda device mark on mandarin oranges, this would not assist the Respondent's case. The issue before this Court is not whether Her Zhong Trading used the mark, but rather whether the Respondent or the Applicant possesses the earlier right to the mark. The Respondent is not Her Zhong Trading; Her Zhong Trading is a separate legal entity. The Respondent's own position is that it obtained only "permission/consent" to sell, yet no written license or assignment was produced. The Respondent has not produced any written licence, assignment, or other legal instrument evidencing a transfer or grant of trademark rights from Her Zhong Trading to the Respondent. A mere oral "permission" to sell mandarin oranges with panda packaging, even if proven, does not constitute an assignment of trademark rights or proprietary interest in a mark. [73] In Yong Sze Fun & Anor v. Syarikat Zamani Hj Tamin Sdn Bhd & Ors [2007] 4 CLJ 308, the Court of Appeal recognized that the person who first used a mark in trade is its rightful proprietor. If Her Zhong Trading were the first user (which is not established), then it would be Her Zhong Trading and not the Respondent who would hold the proprietary rights. The Respondent cannot piggyback on the alleged use by a third party to claim earlier rights for itself without establishing a proper legal chain of title. 36! ! [74] Even more significantly, the Respondent's own position is self-contradictory. By claiming that the panda device mark "originated" from Her Zhong Trading, the Respondent implicitly concedes that the Respondent is not the creator or originator of the mark. Yet the Respondent proceeded to register the mark in its own name as the Respondent's Offending Mark, without any evidence of having obtained a valid assignment of rights from Her Zhong Trading. This raises serious questions about the bona fides of the Respondent's registration, which I will address in greater detail in the section on fraud and misrepresentation below. [75] For all the above reasons, I find that the Respondent's reliance on Her Zhong Trading's alleged prior use is a red herring that does not advance the Respondent's case. The Respondent has failed to establish, through cogent and admissible evidence, that Her Zhong Trading was the first user of the panda device mark as a trademark in the course of trade in Malaysia. Even if such use were established, it would not bring any benefit to the Respondent in the absence of a valid assignment or transfer of rights. [76] In view of the above, I find that the Applicant has discharged its legal burden in showing its earlier use of the Applicant’s Tangor Panda Mark. Accordingly, the Respondent has failed to adduce evidence to prove first use of the Respondent’s Offending Mark in Malaysia. Hence, the Respondent’s Offending Mark should be invalidated pursuant to Section 47(3) read together with Section 24(4) of the TMA 2019 due to the Applicant’s earlier right in the Applicant’s Tangor Panda Mark. 37! ! iv) Whether the Applicant is entitled to seek protection of its mark under the law of Passing Off [77] It follows that if the Applicant is able to prove to this Honourable Court that it is the common law proprietor of the Applicant’s Tangor Panda Mark, it is also entitled to seek protection of its mark under the law of passing off. Learned counsel for the Applicant placed reliance on the Federal Court’s decision in Mesuma. The Federal Court in Mesuma held as follows: “[46] Thus, the well-settled legal requisites necessary for the acquisition of common law trademark rights over an indicator and identifier for the commencement of any passing off cause of action has always been premised on a factual requirement for the distinctive use of the indicator or identifier in a trademark sense in the course of trade. [47] So we would hold that he who first uses a trademark owns the said trademark under common law and that such common law ownership would in turn entitle him to file for trademark application as a bona fide applicant, pursuant to s 25(1) of the Act.” [ Underlined Emphasis Mine] [78] The elements of passing off that must be present and satisfied in a passing off action were delineated in the seminal English case of Erven Warnink v Townend & Sons (Hull) Ltd [1980] RPC 31, which was applied and followed by our then Supreme Court in Seet Chuan Seng & Anor v Tee Yih Jia Foods Manufacturing Pte Ltd [1994] 3 CLJ 7, at p. 15, as follows: 38! ! “The principle of law regarding passing off has been plainly stated by Lord Parker in Spalding v Gamage 9 ‘and that is, that nobody has any right to represent his goods as the goods of somebody else’. It is therefore wrong for a trader to conduct his business as to lead to the belief that his goods or business are the business of another. For an authority on passing off, we could do no better than to quote the words of Lord Diplock in the leading speech in Erven Warnink v Townend & Sons (Hull) Ltd 2 [at p 742]: My Lords, AG Spalding & Bros v AW Gamage Ltd 84 LJ Ch 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off:

a misrepresentation; (2) made by a trader in the course of trade; (3) to prospective customers of his or ultimate consumers of goods or services supplied by him; (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.” [Emphasis added] [79] Lord Diplock’s formulation in Erven Warnink v Townend & Sons of a passing off action has subsequently been simplified and reduced to three elements by Lord Oliver in the UK House of Lords’s decision in Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341, in the following manner: 39! !

Goodwill;

Misrepresentation; and

Damage. [80] The classic formulation of the tort of passing off, known as the "classical trinity," which was set out by Lord Oliver in Reckitt & Colman Products, and has been consistently adopted by the Malaysian Courts. The three elements are:

Goodwill: The plaintiff must establish that it possesses goodwill or reputation attached to the goods or services which it supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which its particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services.

Misrepresentation: The plaintiff must demonstrate a misrepresentation by the defendant to the public (whether intentional or not) leading or likely to lead the public to believe that goods or services offered by the defendant are the goods or services of the plaintiff.

Damage: The plaintiff must demonstrate that it suffers or is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the 40! ! source of the defendant's goods or services is the same as the source of those offered by the plaintiff.

Goodwill [81] I have already found that the Applicant has used the Tangor Panda Mark in the course of trade in Malaysia since as early as 2009 or 2010 in relation to the sale of mandarin oranges. The evidence shows that, over a period exceeding 14 years, the Applicant has consistently and continuously used the Tangor Panda Mark in connection with the importation, distribution, and sale of mandarin oranges in Malaysia. By virtue of this longstanding use, the Applicant has established substantial reputation and goodwill in the Tangor Panda Mark among its customers, distributors, and dealers. [82] The panda device mark, as used by the Applicant on its mandarin orange packaging, has become a source identifier — that is to say, consumers and trade purchasers associate the panda device with mandarin oranges originating from or distributed by the Applicant. The evidence of consistent use, volume of sales, and geographic spread of distribution all support the finding that the Applicant has established goodwill in the Tangor Panda Mark in Malaysia. [83] Since on or around 2010, the Applicant contended that it has been importing mandarin oranges from China in boxes bearing the Applicant's Tangor Panda Mark, which was designed for the Applicant. These mandarin oranges are then sold in Malaysia to 41! ! members of the trade and the public through selected distributors and customers. The quantity of mandarin oranges imported and packaged using the Applicant's Tangor Panda Mark is as follows (measured in cartons): [84] The Applicant has led evidence demonstrating that its annual sales of mandarin oranges packaged under the Applicant's Tangor Panda Mark are also substantial: Financial Year Annual Sales Figures (in MYR) 2010 1,604,350.60 2011 1,503,426.30 2012 1,552,177.35 2013 1,550,916.47 2014 1,938,426.40 42! ! 2015 1,359,695.10 2016 934,979.80 2017 964,087.30 2018 984,634.40 2019 759,487.10 2020 713,460.00 2021 434,776.60 2022 979,206.10 2023 1,285,207.10 2024 1,166,808.60 [85] The Applicant presented compelling evidence demonstrating that cumulative sales figures from 2010 to 2024 exceeded MYR 17.7 million. This, coupled with consistent, uninterrupted year-on-year importation and sale of mandarin oranges under the Tangor Panda Mark for over 14 years, demonstrates that the Applicant has cultivated a substantial amount of goodwill in Malaysia for the Tangor Panda Mark. Over this extensive period, the trade and consuming public have unequivocally come to associate the panda device on mandarin orange packaging with a product originating from, or connected with, the Applicant. [86] In this regard, case laws have established that even minimal trading activity is sufficient to generate goodwill. This is illustrated in the case of!!Compagnie Generale Des Eaux v Compagnie Generale Des Eaux Sdn Bhd [1993] 1 MLJ 55, at p. 57, where Abdul Malek J (as he then was), in deciding whether the plaintiff, a foreign multinational company has goodwill in Malaysia, held as follows: 43! ! No doubt the defendant had registered the name about one month before the plaintiff applied for the registration but the plaintiff's involvement in this country five years before that date is in my opinion more than sufficient to establish goodwill, reputation and presence in Malaysia. This view was despite the further argument by learned counsel for the defendant, on the original date for decision, that the plaintiff had not fulfilled the requirements stipulated for the registration of a representative office and had in fact not established a representative office here. However, in my opinion, this did not prohibit them from carrying on business through its joint venture company, which was what in fact they were doing. I was also of the view that it did not matter that the name is generic because being in the French language, any person here dealing with either party would certainly have thought that the other party in this action was the same company." [87] Further, in!Mesuma, the Federal Court found that the respondent, namely the Majlis Sukan Negara, albeit being a non-trading entity, had established substantial goodwill and reputation through sports promotional and advancement activities in the purchase and distribution of sports goods bearing the tiger stripes designs to Malaysian athletes. By using the design in the course of trade, the Court was satisfied that the respondent owned the goodwill generated thereby in relation to it. As early as in 2005 (where the respondent had appointed manufacturers to supply sports attire bearing the design), the Court found that the respondent had acquired goodwill and intended to use the design as a mark in the course of trade, even if there was no evidence of any immediate use. 44! ! [88] The Mesuma decision is particularly instructive in the present case. In Mesuma, the Federal Court adopted a broad and purposive interpretation of the expression "in the course of trade," holding at paragraph [52] that the word "trade" must be given its plain and ordinary meaning. The Court further held that a mark must be used in the course of trade to indicate that the goods bearing the same mark originate from the same source. Applying that principle to the present facts, the Applicant's use of the Tangor Panda Mark on the packaging of mandarin oranges which were then imported, distributed and sold to members of the trade and public in Malaysia clearly constitutes use "in the course of trade." There can be no doubt that the Applicant's business of importing and selling mandarin oranges under the Tangor Panda Mark is a trade conducted for profit, and the panda device has been consistently deployed as a badge of origin to distinguish the Applicant's mandarin oranges from those of other traders. [89] I also find it pertinent to observe that the nature of the Applicant's trade that is the importation and sale of mandarin oranges is a seasonal business closely associated with Chinese New Year festivities. It is well known that mandarin oranges are a staple gift and auspicious fruit during the Chinese New Year period in Malaysia. Notwithstanding the seasonal nature of the trade, the Applicant has demonstrated that it has sustained its commercial activity under the Tangor Panda Mark for every year since 2010. The seasonal nature of the trade does not diminish the goodwill attached to the mark; on the contrary, the consistent annual recurrence of sales under the mark reinforces the association in the minds of the trade and public between the panda device and the Applicant. 45! ! [90] The Applicant's counsel has correctly submitted, and I accept, that the sheer volume of mandarin oranges imported, packaged, promoted and sold using the Applicant's Tangor Panda Mark within the country since 2010 amounting to cumulative sales in excess of MYR 17.7 million far exceeds the minimal threshold required under the law to establish goodwill. By any measure, this level of trading activity over a period of more than 14 years is substantial. Thus, it cannot be denied that the Applicant has acquired substantial and sufficient goodwill in respect of its Tangor Panda Mark since 2010. [91] In the absence of proof adduced by the Respondent to prove that the Respondent or any other party including Her Zhong Trading was using a mark identical and/or confusingly similar to the Applicant's Tangor Panda Mark as at 2010 or earlier, the members of the trade and public would naturally regard any goods bearing the Applicant's Tangor Panda Mark as originating from the Applicant and no one else. The panda device, as deployed on mandarin orange packaging, has become exclusively associated with the Applicant in the Malaysian marketplace.

Misrepresentation [92] The second element of the classical trinity requires the Applicant to demonstrate that the Respondent's use of the Respondent's Offending Mark constitutes a misrepresentation to the public, leading or likely to lead the public to believe that the Respondent's mandarin oranges are the goods of the Applicant, or that the Respondent's goods are in some way associated with or connected 46! ! to the Applicant. At the outset, it is an established principle of law that a misrepresentation need only cause either actual confusion or a likelihood of deception or confusion. There is no requirement for the Applicant to prove actual deception or confusion (see:! Seet Chuan Seng & Anor v Tee Yih Jia Food Manufacturing Pte Ltd [1994] 2 MLJ 770). This principle was affirmed in Telekom Malaysia Berhad & Anor v CA Multimedia Sdn Bhd & Ors [2019] MLJU 1664, where the Court, applying the objective test as laid down in Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor (Registrar of Trade Marks, Intervener) [2015] 4 MLJ 166 and!T.C. Pharmaceutical Industries Co Ltd & Anor v Koay Sai Leat & Ors [2016] 8 MLJ 779, further observed that confusion would be readily inferred in relation to identical goods or services. [93] It is an undisputed fact between the parties that the Respondent's Offending Mark is confusingly similar, if not identical, to the Applicant's Tangor Panda Mark. Both marks prominently feature a panda device, specifically, a depiction of a panda hugging a mandarin orange used in connection with identical goods, namely mandarin oranges. The goods are sold through the same trade channels to the same class of consumers. Critically, the products in question are mandarin oranges which, without their packaging and trademark, consumers are unlikely to be able to distinguish by source or origin. The trademark, get-up, and packaging therefore serve as the primary distinguishing indicia by which members of the trade and public identify the goods of one trader from another. In these circumstances, the striking similarity between the Applicant's Tangor Panda Mark and the Respondent's Offending Mark, particularly the shared adoption of the panda device, renders the 47! ! Respondent's use of its mark inherently likely to lead to confusion among the public. [94] In! Danone Biscuits Manufacturing (M) Sdn Bhd v Hwa Tai Industries Bhd [2010] 8 MLJ 500, the court held that where the defendant's trademark, get-up, and packaging were confusingly and deceptively similar to the plaintiff's, and where the identical goods were offered for sale side by side in the same sections of supermarkets and retail outlets, the likelihood of confusion was "extremely high." The court observed that purchasers who recognise a product by reference to the general get-up, colour, and shape of a product will be misled, particularly in respect of low-cost consumer goods where little time is spent scrutinising the respective get-ups. Similarly, in Seet Chuan Seng (supra), the then Supreme Court found misrepresentation where the use of a name, logo, and get-up not dissimilar to and almost resembling the respondent's products "did certainly tend to confuse," and the resultant effect was that the appellant's products could easily be passed off as those of the respondent. [95] Reverting to the present case, the Respondent has not adduced any evidence to suggest that consumers are able to distinguish between the Applicant's mandarin oranges bearing the Tangor Panda Mark and the Respondent's mandarin oranges bearing the Respondent's Offending Mark. To the contrary, the evidence before me demonstrates that confusion has in fact occurred. First, the very fact that the Respondent issued a letter of demand to the Second Defendant (a customer of the Applicant) upon seeing the Applicant's Tangor Panda Mark on Facebook demonstrates that even a party 48! ! within the trade who might be expected to exercise a higher degree of discernment was unable to distinguish between the two marks. [96] Second, and more significantly, the Respondent has itself admitted, through the averments in the Respondent's affidavit and submissions, that there have been instances of actual confusion amongst members of the public and consumers. The Respondent has acknowledged receiving complaints from its own customers arising from confusion between the Respondent's Offending Mark and the Applicant's Tangor Panda Mark. The Respondent has further admitted that its customers were confused and had purchased the products bearing the Applicant's Tangor Panda Mark in the belief that they were the products of the Respondent. This evidence of actual confusion further fortifies the finding that there is not merely a likelihood of confusion, but demonstrable real-world confusion between the products of the Applicant and the Respondent. [97] Applying the principles established in the foregoing authorities to the facts of the present case, I find that the Respondent's use of the Offending Mark—a mark that is identical or confusingly similar to the Applicant's Tangor Panda Mark in relation to identical goods— constitutes a misrepresentation to the public, whether intentional or otherwise, that the Respondent's mandarin oranges originate from or are associated with the Applicant. The likelihood of confusion is readily inferred given the identity of the goods, the striking similarity of the marks, the shared trade channels, and the identical consumer base. This finding is further strengthened by the evidence of actual confusion, including the Respondent's admission of receiving 49! ! complaints arising from consumer confusion between the two marks. In the premises, I find that the second element of the classical trinity is accordingly satisfied.

Damage [98] The third and final element of the classical trinity requires the Applicant to demonstrate that it has suffered or is likely to suffer damage by reason of the Respondent's misrepresentation. It is well established that actual damage need not be proved; it is sufficient for the Applicant to demonstrate that there is a likelihood of damage (see:! Seet Chuan Seng & Anor (supra); Danone Biscuits Manufacturing (M) Sdn Bhd (supra) and Angel Candies Sdn Bhd v Loo Yan Wah & 2 Ors [2015] 5 CLJ 364). Furthermore, damage in the context of passing off is not confined to quantifiable financial loss; it extends to the erosion of goodwill, the diversion of trade, loss of sales, and the loss of control over the quality and reputation associated with the mark. Importantly, Malaysian courts have consistently held that where the parties' goods or products are in direct competition with one another, the court would readily infer the likelihood of damage to the plaintiff's goodwill. [99] In the present case, the Applicant's goods and the Respondent's goods are undeniably in direct competition with one another — both parties trade in identical goods, namely mandarin oranges. The Respondent's use of a confusingly similar, if not identical, mark in relation to these identical goods is inherently likely to cause damage to the Applicant's goodwill. Consumers who purchase the Respondent's mandarin oranges in the mistaken belief that they are 50! ! the Applicant's products may receive goods of a different quality, thereby damaging the Applicant's reputation and the goodwill attached to the Tangor Panda Mark. Furthermore, sales made by the Respondent under the confusingly similar mark represent a direct diversion of trade from the Applicant, and a loss of the exclusive use of the Applicant's Tangor Panda Mark. This is precisely the type of harm that is a likelihood of diversion of customers from one trader to another resulting in loss that the then Supreme Court recognised in Seet Chuan Seng (supra). [100] In Seet Chuan Seng the Supreme Court held that "there is a likelihood of diversion of customers from the respondent to the appellants which would result in loss to the respondent in view of the similarity in name, logo and get-up and type of product dealt with by both parties." [101] The Respondent has contended that the Applicant has failed to show that the Respondent's use of its mark has caused any damage or likely damage to the Applicant's trade, pointing to the Applicant's annual sales figures. I am unable to accept this contention. First, as stated above, it is not necessary for the Applicant to prove actual damage; a likelihood of damage suffices. Second, this is a case where the court is entitled to infer a likelihood of damage due to the use of identical or confusingly similar trademarks on competing goods. Third, and in any event, the evidence before me reveals that the Applicant did in fact record a noticeable and sustained decline in the annual sales of its mandarin oranges sold under the Tangor Panda Mark from the year 2016 onwards. This corresponds with the period when the Respondent arguably commenced use of the 51! ! Respondent's Offending Mark for the sale of mandarin oranges in Malaysia. The Applicant's annual sales figures demonstrate the following trend: Financial Year Annual Sales Figures (MYR) 2010 1,604,350.60 2011 1,503,426.30 2012 1,552,177.35 2013 1,550,916.47 2014 1,938,426.40 2015 1,359,695.10 2016 934,979.80 2017 964,087.30 2018 984,634.40 2019 759,487.10 2020 713,460.00 2021 434,776.60 2022 979,206.10 2023 1,285,207.10 2024 1,166,808.60 [102] The figures reveal that the Applicant's annual sales declined significantly from approximately MYR 1.94 million in 2014 to approximately MYR 934,979.80 in 2016, and continued to fall to approximately MYR 759,487.10 in 2019, prior to the further impact caused by the Covid-19 pandemic in 2020 and 2021. While I acknowledge that a decline in sales may be attributable to multiple 52! ! factors, the temporal correlation between the commencement of the Respondent's use of the Offending Mark and the downturn in the Applicant's sales is a relevant consideration that supports a finding of likely, if not actual damage. [103] Additionally, the Respondent has taken enforcement action based on its registration, issuing letters of demand to the Second and Third Defendants, who are the Applicant's downstream customers. This enforcement action has had the direct effect of interfering with the Applicant's trade and distribution network, causing real and tangible damage to the Applicant's business operations and commercial relationships. [104] In the circumstances, I am satisfied that the Applicant has demonstrated both actual and potential damage arising from the Respondent's misrepresentation. The goods of both parties are in direct competition. I find that there is evidence of a sustained decline in the Applicant's sales coinciding with the Respondent's adoption of the Offending Mark. Also, the Respondent's enforcement actions have directly disrupted the Applicant's trade. In the circumstances, the third element of the classical trinity is accordingly established. [105] Having found that all three elements of the classical trinity of passing off are satisfied, I conclude that the Applicant has established an earlier right in the Tangor Panda Mark that is protected under the law of passing off. Accordingly, the use of the Respondent's Offending Mark in Malaysia is prevented by virtue of the rule of law protecting the Applicant's unregistered trademark under Section 24(4)(a) of the TMA 2019. 53! ! v) Whether the registration was obtained by fraud or misrepresentation under section 47(6) of the TMA 2019 [106] Section 47(6) of the TMA 2019 provides: "(6) The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person or the Registrar on the ground of fraud in the registration or that the registration was obtained by misrepresentation." [107] The Applicant contends that the Respondent's registration of the Offending Mark was obtained by fraud or misrepresentation on the Registrar of Trade Marks. The Respondent denied this and contended that the Applicant has failed to adduce evidence to support this allegation. [108] The standard of proof for fraud in civil proceedings is the balance of probabilities, but the evidence required must commensurate with the gravity of the allegation. As Lord Nicholls stated in Re H (Minors) [1996] AC 563 at 586: "The more serious the allegation the less likely it is that the event occurred and, hence, the stronger should be the evidence before the court concludes that the allegation is established on the balance of probability." [109] In the context of trademark registration, fraud has been held to encompass situations where an applicant for registration knowingly makes a false statement or representation to the Registrar, or deliberately suppresses material information, in order to obtain registration. In Liwayway Marketing Corporation v. Oishi Group 54! ! Public Co Ltd [2017] 5 CLJ 133, the Court considered the circumstances in which a registration may be set aside for fraud. The Respondent, however, relies on the proposition that for section 47(6) to be invoked, the Applicant must show that, at the time of filing, the registrant practised fraud or misrepresentation upon the Registrar, and that fraud (in the strict sense) requires elements such as intention to deceive and actual knowledge. [110] Misrepresentation, on the other hand, may encompass both innocent and deliberate misrepresentations to the Registrar. A party who applies to register a mark while knowing that another party has been using the same or a confusingly similar mark in the course of trade may be said to have obtained registration by misrepresentation. Misrepresentation in this sense means a party has represented itself to the Registrar as the proprietor of the mark or as entitled to register the mark. [111] Based on the facts and circumstances of this present suit, the Applicant has commenced use of the Applicant’s Tangor Panda Mark since 2010. The Respondent has no legitimate reason to adopt a nearly identical mark, or a mark confusingly similar to the Applicant's, for the same goods other than to mislead the trade and public into believing that the Respondent's goods originate from the Applicant. The substantial similarity between the Applicant's Tangor Panda Mark and the Respondent's Offending Mark, especially concerning the panda device, reasonably infers that the Respondent copied the Applicant's mark. 55! ! [112] Having carefully considered the evidence adduced by the parties, I find that there are strong indicia of misrepresentation in the Respondent's registration of the Offending Mark. The standard of proof remains the balance of probabilities, though I am mindful that the evidence must be commensurate with the gravity of the allegation (see!Re H (Minors) [1996] AC 563 at 586, per Lord Nicholls). My reasoning is as follows. [113] First, the Respondent's own case is that the panda device mark "originated" from one Mr. Liu Wen Qing of Her Zhong Trading. The Respondent admits that it did not independently create or devise the panda device mark, but rather sought and obtained permission from Mr. Liu to use panda-branded packaging for mandarin oranges. Yet, on 23 December 2021, the Respondent applied to register the panda device mark as the Offending Mark in its own name, without any disclosure to the Registrar of Her Zhong Trading's alleged prior use or Mr. Liu's alleged ownership of the mark. In order to qualify to apply for registration, the Respondent must have represented itself to the Registrar as the proprietor of the mark. If the Respondent's narrative is to be believed, specifically, that the mark originated from Her Zhong Trading and was used with Mr. Liu's permission—then the Respondent was not the true proprietor and, therefore, had no right to register the mark in its own name. By claiming proprietorship under these circumstances, the Respondent made a demonstrably false representation to the Registrar. [114] This is directly analogous to the situation in!Luk Lamellan Und Kupplungsbau GmbH v. South East Asia Clutch Industries Sdn Bhd [1996] 3 CLJ 904, where the Court held that a party who 56! ! applied for and obtained registration of a mark knowing it belonged to another had made "a false claim made for a dishonest purpose" and that it was "a falsehood practised on the registrar to achieve a result that was adverse to the interests and rights of the [true] proprietors." The same reasoning applies here. The Respondent, on its own admission, was not the originator of the mark and yet represented itself to the Registrar as its proprietor. [115] Reverting to the present case, it is settled law that such an act on the part of the Respondent which entitled the Applicant, as the common law proprietor and first user of its Tangor Panda Mark in Malaysia, to seek invalidation of the Respondent’s registered mark on the ground of existence of fraud and / or representation in obtaining the registration of the mark. This is confirmed in the case of Luk Lamellan , where the Court held that the respondents in that case who went ahead to register the LUK mark despite having knowledge that the said mark belonged to the applicant amounted to a falsehood practised on the registrar. The Court stated, at pages 911-913 as follows: “I have already found that the applicants were the lawful proprietors of the trade mark in Malaysia before 25 January 1977. The entire evidence points to the respondents being aware of that fact. In addition, their claim that they had requested Tan of Jebsen & Jessen – the applicants' sole agents – to register the mark was, whether the claim was true or not, a clear admission that they knew the trade mark belonged to the applicants. If that claim were disregarded, what we have here are the following circumstances. The respondents imported and sold the applicants' clutch items bearing the applicants' LUK trade mark. The respondents also manufactured clutch 57! ! items. Knowing that the LUK trade mark belonged to the applicants, the respondents applied for and obtained registration of the trade mark as theirs in respect of their products. In making the application, they must have claimed that the trade mark belonged to them because, by s 25 of the Act, they had to claim that they were the proprietors of the trade mark in order to qualify to apply. Since they were not, it was a false claim made for a dishonest purpose, which was to become the registered proprietors of a trade mark that belonged to somebody else. It was a falsehood practised on the registrar to achieve a result that was adverse to the interests and rights of the applicants as the lawful proprietors of the trade mark. After the registration, the respondents continued to market the applicants' products and their own products, both bearing the LUK trade mark, in packages whose respective get-ups were practically identical one to the other. … So the circumstances that I have stated earlier before I entered upon a consideration of the matter of the discussion with Tan remain unaffected. The primary reason why the applicants claimed that the respondents' registration of the trade mark had been obtained by fraud was because in applying for registration, the respondents falsely claimed they were the proprietors of the trade mark. It was fraud directly on the registrar, and indirectly on the applicants and the public as well. For claiming fraud in that sense, the applicants relied primarily on the decision in the case of 'Gynomin' Trade Mark [1961] RPC 408, where the decision on that point was in the following words at p 414: Secondly, it is clear from the evidence that the respondents were well aware of the ownership and use by the applicants in Australia of the name 'Gynamin', and in my opinion, in view of the close relationship between the parties and the respondents, knowledge of the information which I have 58! ! held was communicated to them in confidence, they were not entitled to claim to be the proprietors of the trade mark 'Gynomin', as required by s 17(1) of the Act. In my view, the fact that they so described themselves amounts to 'fraud' within the meaning of s 13. I agree, and for the reasons that I have given, the registration by the respondents of the LUK trade mark was obtained by fraud.” [Underlined Emphasis added] [116] Second, the Respondent and the Applicant are competitors in the same industry that is the importation, distribution, and sale of mandarin oranges in Malaysia. Both parties operate in the same geographical market and sell to similar categories of customers. It is inherently improbable that the Respondent was unaware of the Applicant's use of the Tangor Panda Mark at the time of its application for registration on 23 December 2021. The Respondent denied such knowledge and contended that the Applicant has not adduced direct evidence establishing that the Respondent knew of the Tangor Panda Mark prior to or at the time of filing. Learned counsel for the Respondent further submitted that the authorities on inferred knowledge cited by the Applicant are distinguishable on their facts. [117] With respect, I am unable to agree. The Applicant had been using the Tangor Panda Mark for over a decade by the date of the Respondent's application. In the relatively small and specialised market for mandarin oranges in Malaysia, a seasonal product predominantly sold during the Chinese New Year period, it strains credulity to suggest that the Respondent, itself a participant in that 59! ! very market, was unaware of the Applicant's use of a confusingly similar mark. Knowledge in such circumstances may properly be inferred. [118] As observed in Yong Teng Hing (t/a Hong Kong Trading Co) v Walton International Ltd [2012] 10 MLJ 244, where Mohd Ghazali J (as he then was) found that the applicant had not independently devised the mark in question but had copied it from the respondent, the substantial similarity between the marks, coupled with the parties' operation in the same trade, gives rise to a reasonable inference that the respondent was aware of and copied the applicant's mark. [119] In Yong Teng Hing, the Court found that the respondent in that case is entitled as the common law and rightful proprietor of the GIORDANO trademark in respect of goods in class 18 after finding that the applicant has not independently devise the GIORDANO mark but had copied it from the respondent’s mark. The Court in finding so held as follows: “[45] I find that from the evidence adduced by the parties, it can deduced that the applicant adopted the typeface or font similar to that of the respondent's GIORDANO mark. I am of the view that he did not independently devise the GIORDANO mark but copied it from the respondent's mark. There is no merit in the applicant's allegation that the respondents's claim on ownership of the GIORDANO mark in Class 18 is frivolous or in bad faith. The respondent has adduced evidence to show that the Giordano group of companies has in fact genuinely traded and is still trading in goods bearing the said mark 60! ! on a substantial basis in Malaysia and in other countries, notably in Hong Kong and Singapore. [46] I would agree with the submission of counsel for the respondent that the material time to determine whether a trademark has been used by a foreign trader is at the date of application for registration by another local trader of the same mark. In the instant case, it has been shown that Giordano Ltd has already been using the GIORDANO trademark in relation to Class 18 goods in Malaysia at the date of applicant's application on 29 July 1992. I would also agree with the submission of counsel for the respondent that if at the date of application for registration by a local trader, the foreign trader's mark, although it has not been used in Malaysia, has become associated in the minds of the public with the foreign trader's goods, that local trader cannot appropriate or claim proprietorship on the foreign trader's mark. Further, a small amount of use of a trademark by the foreign trader is sufficient to prevent a local trader from claiming proprietorship in the foreign trader's trademark. … [51] In the instant case, the matter in dispute purely rest on finding of facts based on the evidence adduced by the parties. The facts clearly showed that the respondent has proved that the applicant have adopted the GIORDANO mark as may lead people, who have dealings with the respondent, to believe that the respondent's business is a branch of, or associated with the applicant and that may do damage to the respondent's business in all kinds of ways, eg, the quality of the goods and the kind of business carried out. This impression is created through the use of another provider's recognisable trademark, either by the production of an identical copy, or a closely comparable mark. All these things may immensely injure the respondent who is assumed wrongly to be associated with the applicant. Using the same GIORDANO mark clearly will cause confusion between the business activities of the parties in the instant case especially to prospective customers or consumers of the goods offered in the market. Premissed upon 61! ! what has been discussed earlier, I would conclude that the respondent is the rightful and lawful proprietor of the GIORDANO trademark and it should be allowed to be registered as the proprietor for goods specified in Class 18.” [Emphasis added] [120] In Yong Sze Fun (supra), the Court of Appeal recognised the principle that a party who registers a mark knowing that another party has prior and superior rights to the mark does not act bona fide. The Court affirmed that the true proprietor of a mark is the person who first used it in trade, and that a party who knowingly registers another's mark cannot claim to be acting in good faith. This principle is reinforced by the decision in Luk Lamellan (supra), where the Court held that applying for registration while knowing the mark belonged to another amounted to fraud directly on the Registrar, and indirectly on the true proprietor and the public. [121] I also address the Respondent's reliance on Deluxe Caterers Pvt Ltd v Food Stack Concepts Pte Ltd [2024] 9 MLJ 603 in support of its contention that the threshold for fraud or misrepresentation under Section 47(6) has not been met. As for the grounds under Section 47(6) of the TMA 2019, learned counsel for the Respondent submitted that the case of Deluxe Caterers is relevant where it was held at paragraph [103] that to invoke this section, the plaintiff would have to establish that, at the time the defendant applied to register its mark in Malaysia, it practised fraud or misrepresentation upon the Registrar. Further, at paragraph [105], for fraud to subsist, there must be (a) an actual deception and intention to deceive; (b) an actual injury or possible 62! ! injury by means of deceit and (c) actual knowledge that the act was calculated to injure one’s neighbour. [122] I accept the Applicant's submission distinguishing that authority. Unlike Deluxe Caterers, the present Applicant is a local trader with longstanding actual use of the Tangor Panda Mark in Malaysia, stretching back to 2010. The Respondent's own narrative that another trader originated the panda device mark further strengthens the inference that the Respondent knew it was not the bona fide proprietor when it applied for registration. The facts of the present case are far closer to those in Luk Lamellan and Yong Teng Hing, parties who registered marks belonged to others were found to have practised fraud or misrepresentation on the Registrar. [123] Taking all these circumstances into account — the Respondent's admission that the mark did not originate from it, its false representation of proprietorship to the Registrar, the strong inference that it knew of the Applicant's prior and longstanding use of the confusingly similar Tangor Panda Mark, and its subsequent enforcement conduct — I find on the balance of probabilities that the Respondent's registration of the Offending Mark was obtained by misrepresentation within the meaning of Section 47(6) of the TMA

This constitutes an additional and independent ground for declaring the registration invalid. [124] Accordingly, I also declare the registration of the Respondent's Offending Mark invalid under Section 47(6) of the TMA 2019 on the ground that the registration was obtained by misrepresentation. 63! ! vi) Whether it is inequitable for the Applicant to seek invalidation [125] The Respondent has raised the argument that it is inequitable for the Applicant to seek invalidation of the Respondent's Offending Mark because the Applicant has purportedly been "sleeping on its rights" by failing to register the Tangor Panda Mark until recently and only upon a threat of litigation by the Respondent. In essence, the Respondent invokes a form of equitable defence akin to laches or acquiescence. This submission is consistent with the maxim of equity that 'equity does not lend her hand to assist the indolent' and that while equity assists the vigilant, it definitely does not assist those who 'slumber on their rights' (see Eagaivallinayagi Ammal v Chin Min Hua & Ors [2020] 2 MLJ 771, at [21]). [126] In support of this contention, the Respondent advances several specific arguments: i. that the Applicant only attempted registration of the Tangor Panda Mark after receiving the Respondent's demand letter, which indicates an absence of genuine interest in registering the mark earlier; ii. that the Respondent has used the Offending Mark for more than 10 years, built goodwill and reputation (including through social media promotions), and took the proactive step of registering the mark, which has since enjoyed statutory protection for more than three years; 64! ! iii. that the Respondent had procured consent or permission from the alleged first user, Her Zhong Trading, before using the mark; iv. that the Respondent had no knowledge of the Applicant's use of the Tangor Panda Mark; and v. that MyIPO issued a Provisional Rejection Notice regarding the Applicant's trademark application on the grounds that the word "Tangor" and the accompanying Chinese characters are common or non-distinctive; and vi. that MyIPO had previously rejected an application to register the word "TANGOR" alone, which the Respondent argues demonstrates the Applicant's mark faces registrability issues and underscores the inequity of granting invalidation. [127] I have considered the submissions advanced by learned counsel for the Respondent on this point. With respect, I find the arguments raised to be entirely without merits. [128] First, and most fundamentally, there is no statutory requirement under the TMA 2019 for a party to register its trademark in order to preserve its common law rights. Section 47(3)(b) read with Section 24(4)(a) of the TMA 2019 expressly recognises and protects unregistered trademarks and signs used in the course of trade. The entire framework governing provisions is designed to permit a party with an earlier unregistered right to challenge a subsequent registration. If the mere fact of non-registration were sufficient to disentitle a party from seeking invalidation, the provisions of Section 47(3)(b) and Section 24(4)(a) would be rendered nugatory. This 65! ! could not have been the intention of Parliament. By initiating the present invalidation proceedings, the Applicant is doing no more than exercising its statutory right as a common law proprietor under the mechanism expressly afforded to aggrieved parties by Section 47 of the TMA 2019. There is nothing inequitable about a party availing itself of a remedy that the legislature has specifically provided for circumstances such as these. [129] As regards the Respondent's reliance on the Provisional Rejection Notice issued by MyIPO in respect of the Applicant's trademark application, I accept the Applicant's submission that this point is irrelevant to the present inquiry. The question before this Court is not whether the word "Tangor" standing alone is distinctive or registrable. The question is who has the earlier right to the panda device mark as used in connection with mandarin oranges in Malaysia, and whether the Respondent's registration ought to be invalidated on the grounds advanced under Sections 47(3)(b) and 47(6) of the TMA 2019. [130] The registrability of the word element of the Applicant's composite mark is a matter to be addressed before MyIPO in the course of the Applicant's own registration proceedings. It certainly has no bearing on the Applicant's entitlement to seek invalidation of the Respondent's mark. In any event, the fact that a registrability objection has been raised against the Applicant's own application does not in any way diminish the Applicant's established common law rights as the first user of the panda device mark in Malaysia, nor does it render it inequitable for the Applicant to challenge the Respondent's registration. 66! ! [131] Second, the concept of "sleeping on one's rights" presupposes that the party against whom the defence is raised had knowledge of the offending conduct or registration and yet failed to act within a reasonable time. The evidence before this Court does not establish that the Applicant had knowledge of the Respondent's registration of the Offending Mark prior to receiving the Respondent's cease-and-desist letter dated 24 January 2024. The Applicant's unchallenged evidence is that, prior to receiving that letter, it had no knowledge of the Respondent's use or registration of the panda device mark, and that as far as it was aware, it was the only party in Malaysia selling mandarin oranges under packaging bearing a panda device. Upon learning of the Respondent's use and registration, the Applicant promptly took steps to protect its interests, including applying to register its own mark and commencing the present invalidation proceedings. [132] The Respondent's mark was registered on 23 December 2021, and the present Originating Summons was filed on 26 August 2024, approximately two years and eight months later. There is no express statutory limitation period under the TMA 2019 for applications under Section 47(3)(b) or Section 47(6). Furthermore, I note that this invalidation proceeding was commenced within the five-year period from the date of registration, before the registration could be deemed conclusive and valid pursuant to Section 53 of the TMA

In these circumstances, the Applicant's filing of the present application cannot be characterised as unreasonable delay, and the equitable maxim that equity will not assist those who slumber on their rights is inapplicable. This case is distinguishable from 67! ! authorities such as Eagaivallinayagi Ammal, relied upon by the Respondent, where the central issue was whether a limitation period to bring an action had lapsed. No such limitation issue arises here. [133] Third, the equitable defence of acquiescence requires the party invoking it to show that the rights holder, by its conduct, led the other party to believe that it would not enforce its rights, and that the other party acted in reliance on that belief to its detriment. The Respondent has adduced no evidence whatsoever to show that the Applicant made any representation, express or implied, that it would not enforce its rights in the Tangor Panda Mark. The mere fact that the Applicant did not register its mark does not constitute a representation that it would not object to another party registering a confusingly similar mark. Non-registration is not acquiescence. The Applicant's rights subsist independently of registration, and its silence in the absence of knowledge of the Respondent's registration cannot be construed as consent or encouragement. [134] In LB (Lian Bee) Confectionery Sdn Bhd v. QAF Ltd [2012] 3 CLJ 661, the Court held that the failure to register a trademark does not disentitle the common law proprietor from seeking to protect its rights against subsequent registrants. The right to seek invalidation under the Act is a statutory right available to aggrieved persons, and it is not defeated by the mere passage of time in the absence of clear evidence of acquiescence or estoppel. The present case falls squarely within the scope of that principle: the Applicant is the common law proprietor and first user of the Tangor Panda Mark, it acted promptly upon learning of the Respondent's registration, and 68! ! there is no evidence of any representation or conduct on the Applicant's part that could give rise to acquiescence or estoppel. [135] For all of these reasons, I reject the Respondent's argument that it is inequitable for the Applicant to seek invalidation of the Respondent's Offending Mark. The Applicant is entitled, as an aggrieved person and as the common law proprietor of the Tangor Panda Mark with an earlier right, to seek and obtain invalidation of the Respondent's registration under the TMA 2019. vii) The Respondent’s counterclaim for Trademark infringement against the Applicant [136] I now turn to the Respondent's counterclaim for trademark infringement against the Applicant (as First Defendant in the Counterclaim), the Second Defendant, and the Third Defendant. The counterclaim is premised on Section 54 of the TMA 2019, which provides, insofar as material, that a person infringes a registered trademark if, without the consent of the registered proprietor, he uses in the course of trade a sign that is identical with or similar to the registered trademark in relation to goods identical with or similar to those for which it is registered, resulting in the likelihood of confusion on the part of the public. [137] Section 54 of the TMA 2019, provides as follows: “54. Acts amounting to infringement of registered trademark

A person infringes a registered trademark if he uses a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor. 69! !

A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign-

that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or

that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public.

For the purposes of this section, a person uses a sign if he-

applies it to goods or their packaging;

offers or exposes goods for sale under the sign;

puts goods on the market under the sign;

stocks goods under the sign for the purpose of offering or exposing them for sale or of putting them on the market;

offers or supplies services under the sign;

imports or exports goods under the sign;

uses the sign on an invoice, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or

uses the sign in advertising.

A person who-

applies a registered trademark to any material used or intended to be used for labelling or packaging goods; or

uses a sign in advertising or on any document described in paragraph

(3)(g), shall be treated as a party who uses the material which infringes the registered trademark if when he applied the trademark, he knew or had reason to believe that the application of the trademark was not duly authorized by the registered proprietor of the trademark or a licensee. 70! ! [138] Section 54(3) further elaborates that a person "uses" a sign if he, inter alia, applies it to goods or their packaging, offers or exposes goods for sale under the sign, puts goods on the market under the sign, imports or exports goods under the sign, or uses the sign in advertising. [139] At the risk of repeating myself, as I have alluded to earlier, it is common ground between the parties that the Applicant's Tangor Panda Mark and the Respondent's Offending Mark are identical or confusingly similar, particularly in relation to the panda device present in both marks. It is also not in dispute that both marks are used in relation to the same goods, namely mandarin oranges. I therefore do not propose to undertake a detailed comparative analysis of the two marks, as confusing similarity is conceded. For convenience I reproduce below both the Respondent’s and the Applicant’s marks: Applicant / First Defendant’s Tangor Panda Mark Respondent’s Offending Mark 71! ! [140] The question that remains is whether the Applicant's use of the Tangor Panda Mark constitutes actionable infringement of the Respondent's Offending Mark. [141] Having found in the preceding paragraphs of this judgment that: i. the Applicant is the first user and common law proprietor of the Tangor Panda Mark, having used it in the course of trade in Malaysia since circa 2009/2010; ii. the Respondent's Offending Mark is confusingly similar to the Applicant's Tangor Panda Mark; iii. the Applicant's use of the Tangor Panda Mark predates the Respondent's registration of the Offending Mark by over a decade; iv. the registration of the Respondent's Offending Mark is invalid under Sections 47(3)(b) and 47(6) of the TMA 2019 and is to be removed from the Register of Trade Marks; it follows that the Respondent's counterclaim for trademark infringement against the Applicant must fail. 72! ! [142] First, and most fundamentally, the foundation of the Respondent's counterclaim is the Respondent's registered trademark. A claim for trademark infringement under Section 54 of the TMA 2019 requires, as a threshold prerequisite, a valid and subsisting registered trademark. In Low Chi Yong v. Low Chi Hong & Anor [2018] 1 CLJ 287 (FC), the Federal Court held that the burden in a trademark infringement action lies on the plaintiff to establish, inter alia, ownership of a valid registered trademark, as there can be no infringement of an invalid mark. The same principle is affirmed in Boh Plantations Sdn Bhd v. Gui Nee Chuan & Ors [1975] 2 MLJ 213, and is consistent with the ingredients analysis in Fabrique Ebel SA v. Sykt Perniagaan Tukang Jam City Port & Ors [1989] 1 CLJ 919 and Leo Pharmaceutical Products Ltd A/S v. Kotra Pharma (M) Sdn Bhd (No 2) [2012] 10 CLJ 507. With the invalidation and removal of the Respondent's Offending Mark from the Register, the Respondent's counterclaim is deprived of its very foundation. The infringement claim necessarily falls away. [143] Second, even if, contrary to my findings, the Respondent’s registration was to remain on the Register, the Applicant would nevertheless have a complete statutory defence to any claim for trademark infringement. This is by virtue of section 55(2) of the TMA

[144] Section 55 of the TMA 2019 sets out certain acts that do not amount to infringement. In particular, section 55(2) provides that a person does not infringe a registered trademark by using an unregistered mark that is identical with or similar to the registered mark in relation 73! ! to identical or similar goods or services, provided that he, or his predecessor in business, has continuously used that unregistered mark in the course of trade from a date earlier than either: (a) the date of registration of the registered trademark; or (b) the date on which the registered proprietor, or its predecessor in business, first used the registered trademark, whichever is earlier. [145] The effect of section 55(2) is clear. It preserves the rights of a prior user of an unregistered trademark against a later registered proprietor. In other words, where a party can show continuous prior use of its unregistered mark in the course of trade, that party may rely on section 55(2) as a complete defence to an infringement action, notwithstanding the other party’s registration. Section 55(2) of the TMA 2019 provides that :

Acts not amounting to infringement

Notwithstanding section 54, a person does not infringe a registered trademark when-

he uses in good faith-

his name or the name of his place of business; or

(ii) the name of his predecessor in business or the name of his predecessor's place of business;

he uses in good faith a sign to indicate-

the kind, quality, quantity, intended purposes, value, geographical origin or other characteristics of goods or services; or

(ii) the time of production of goods or the rendering of services; or

he uses the trademark to indicate the intended purpose of goods which includes accessories or spare parts or service and such use is in accordance with honest practices in industrial or commercial matters. 74! !

Notwithstanding section 54, a person does not infringe a registered trademark by using an unregistered trademark that is identical with or similar to the registered trademark in relation to goods or services identical with or similar to those for which the trademark is registered if he has, or he and his predecessor in business have, continuously used in the course of trade the unregistered trademark in relation to those goods or services from a time before-

the date of registration of the registered trademark; or

the date the registered proprietor, or a predecessor in business, or a person who was a registered user under the repealed Act, first used the trademark, whichever is the earlier.

Notwithstanding anything contained in this Act, a person who uses a registered trademark does not infringe the trademark if such use-

is for a non-commercial purpose;

is for the purpose of news reporting or news commentary;

has at any time expressly or impliedly been consented to by the registered proprietor or licensee; or

of a trademark, which is one of two or more registered trademarks which are substantially identical, in the exercise of the right to the use of that trademark given by registration as provided by this Act.

Notwithstanding anything contained in this Act, a registered trademark is not infringed by the use of another registered trademark in relation to goods or services for which the latter is registered.” [146] The evidence before this Court establishes that the Applicant has continuously used the Tangor Panda Mark in the course of trade in relation to mandarin oranges in Malaysia since circa 2009/2010. This predates both the date of registration of the Respondent's Offending Mark (23 December 2021) and the earliest date on which the Respondent claims to have first used the mark (purportedly 2016). The Applicant therefore satisfies both limbs of Section 55(2). 75! ! [147] The Applicant's use of its Tangor Panda Mark in the course of its trade is not an act of infringement but the exercise of its own prior and proprietary right, protected by the express statutory defence under Section 55(2) of the TMA 2019. This provides a complete and independent answer to the counterclaim, standing on its own without reference to the invalidation of the Respondent's mark. [148] I turn briefly to address the Respondent's claim for damages in the counterclaim. The Respondent alleges that it suffered monetary losses and a drop in sales attributable to confusion caused by the Applicant's use of the Tangor Panda Mark, relying on its Profit and Loss Statements for the years 2016 to 2024 (Exhibit "A-13" of the Respondent's affidavit in reply) a noticeable decline in sales and net income during the period 2020 to 2023. Given my findings that the Applicant has not infringed the Respondent's Offending Mark, the question of damages does not arise. However, even if it did, I would observe that the Respondent's claim for losses is not supported by cogent evidence of a causal connection between the Applicant's use of the Tangor Panda Mark and the alleged decline in the Respondent's sales. [149] The Applicant has been selling mandarin oranges bearing the Tangor Panda Mark since 2010, a full six years before the Respondent claims to have commenced use of the Offending Mark. It is therefore unreasonable and illogical for the Respondent to attribute the drop in its sales during 2020 to 2023 to the Applicant's use of a mark that the Applicant had already been using for a decade. A far more cogent and probable explanation for the decline is the well-documented impact of the Covid-19 pandemic, including 76! ! the lockdowns and movement restrictions imposed throughout the country during that period, which significantly affected consumer spending habits and purchasing power, particularly for seasonal products such as mandarin oranges sold during the Chinese New Year period. This explanation is corroborated by the Applicant's own sales figures (as set out in paragraph 42 and Exhibit "CPP9" of the Applicant's affidavit in reply, and Exhibit "CPP21" of the Applicant's affidavit in reply), which demonstrate that the Applicant's sales similarly declined during the same period: Financial Year Annual Sales Figures (MYR) 2010 1,604,350.60 2011 1,503,426.30 2012 1,552,177.35 2013 1,550,916.47 2014 1,938,426.40 2015 1,359,695.10 2016 934,979.80 2017 964,087.30 2018 984,634.40 2019 759,487.10 2020 713,460.00 2021 434,776.60 2022 979,206.10 2023 1,285,207.10 2024 1,166,808.60 77! ! [150] The parallel decline in both parties' sales figures during the pandemic period strongly suggests that the downturn was attributable to extraneous market conditions rather than any conduct on the Applicant's part. [151] For all of the foregoing reasons the counterclaim for infringement against the Applicant / First Defendant is dismissed. LIABILITY OF THE SECOND AND THIRD DEFENDANTS IN THE COUNTERCLAIM The Second Defendant (Fruitglo Sdn Bhd) [152] I find that the Second Defendant's actions do not constitute infringement of the Plaintiff in the Counterclaim Action. [153] As I have found above, the registration of the Respondent's Offending Mark is invalid and is hereby ordered to be removed from the Register of Trademarks pursuant to Section 47(3)(b) and 47(6) of the TMA 2019. It is a well-settled principle that where a registered trademark is found to be invalidly registered, it is treated as though it had never been validly registered at all. Consequently, there is no valid registered trademark subsisting in the Register capable of being infringed. The entire edifice upon which the Plaintiff in the Counterclaim Action's infringement claim rests, namely, the existence of a valid and enforceable registered trademark has collapsed. Without a valid registration, no action for infringement of a registered trademark can be sustained under Section 54 of the 78! ! TMA 2019. The counterclaim for trademark infringement against the Second Defendant must therefore fail. [154] The Second Defendant was at all material times selling goods bearing the Applicant's Tangor Panda Mark, which I have found to be the Applicant's earlier right established through long and continuous use in the course of trade. The evidence before this Court establishes that the Second Defendant procured the Lukan Tangor products directly from the First Defendant in the Counterclaim Action (Poo Trading Import & Export Sdn Bhd), who is the common law proprietor of the Tangor Panda Mark. The products obtained by the Second Defendant originally and inherently came with packaging bearing the Tangor Panda Mark of the First Defendant in the Counterclaim Action, as exhibited in Exhibit "CCK- 3" in Enclosure 20. The Second Defendant did not independently create, design, or affix any mark to the goods. The Second Defendant merely received and resold products that had already been lawfully marked by their supplier the party with prior and superior rights to the mark. [155] The Second Defendant was, in substance and in law, a bona fide purchaser and downstream retailer of goods that had been lawfully marked by a party possessing an earlier and superior common law right to the mark. It is trite law that where goods are legitimately marked by a party who holds a prior and superior right to a trade mark, a downstream retailer or distributor who merely resells those goods in the ordinary course of trade does not thereby commit trademark infringement. The Second Defendant did nothing more than what any ordinary wholesaler and retailer of fruits would do. It 79! ! purchased goods from its supplier and offered them for sale in the open market. To hold otherwise would be to impose an impossible burden on retailers throughout the supply chain, requiring them to conduct independent trademark searches and adjudicate competing claims of proprietorship before placing any goods on their shelves. Such a proposition is untenable and finds no support in law. [156] The evidence further demonstrates that the Second Defendant acted in good faith at all times. The Second Defendant is a company engaged in the wholesale and retail of fruits, plants, agricultural, and natural products of various kinds. Its relationship with the First Defendant in the Counterclaim Action was that of a purchaser and supplier. This is a straightforward commercial arrangement. There was nothing in the circumstances of the transaction that ought to have put the Second Defendant on notice or aroused any suspicion that the goods it was purchasing bore any mark that was allegedly unauthorised or infringing. [157] Critically, upon receiving a phone call from the Plaintiff in the Counterclaim Action informing the Second Defendant about the alleged infringement, the Second Defendant acted promptly and responsibly. Without any admission of liability and without even pausing to verify the validity of the Plaintiff in the Counterclaim Action's registered trademark, the Second Defendant immediately withdrew all Lukan Tangor products from the open market. Simultaneously, the Third Defendant in the Counterclaim Action removed all advertising images of the Lukan Tangor from Facebook. In my considered view, these actions were taken swiftly, decisively, and in good faith, demonstrating the Second Defendant's respect 80! ! for intellectual property rights and its willingness to err on the side of caution pending the resolution of the dispute. [158] There is no evidence whatsoever before this Court of any deliberate, knowing, or wilful infringement on the part of the Second Defendant. There is no evidence that the Second Defendant acted with any intent to deceive the public or to ride on the goodwill of the Plaintiff in the Counterclaim Action. There is no evidence that the Second Defendant continued to sell the impugned products after being put on notice. To the contrary, the totality of the evidence points overwhelmingly to a party that acted honestly, commercially, and in complete good faith throughout the entire episode. [159] Section 54(4) of the TMA 2019 provides a specific and important statutory safeguard. It stipulates that a person who applies a registered trademark to labelling or packaging, or who uses a sign in advertising, shall only be treated as a party who uses material which infringes a registered trademark if, when he applied the trademark, he knew or had reason to believe that the application of the trademark was not duly authorised by the registered proprietor or a licensee. This provision reflects Parliament's recognition that not every person in the chain of commerce who comes into contact with a marked product should be held liable for infringement. In short liability attaches only where there is knowledge or reason to believe that the application of the mark was unauthorised. [160] In the present case, the Second Defendant had absolutely no reason to believe that the Applicant's Tangor Panda Mark was unauthorised. To the contrary, the First Defendant in the Counterclaim Action from whom the Second Defendant procured 81! ! the goods is the common law proprietor of the Tangor Panda Mark with a long, established, and well-documented history of use predating the Respondent's registration. The Second Defendant purchased the goods in the ordinary course of its business as a wholesaler and retailer of fruits. There was nothing irregular, suspicious, or unusual about the transaction that would have put the Second Defendant on inquiry. The element of knowledge or reason to believe required under Section 54(4) of the TMA 2019 is plainly absent, and accordingly, the Second Defendant cannot be treated as a party who used material which infringes a registered trademark within the meaning of that provision. [161] For all the foregoing reasons, I find that the Second Defendant in the Counterclaim Action (Fruitglo Sdn Bhd) is not liable for trademark infringement. The counterclaim against the Second Defendant is accordingly dismissed. The Third Defendant (Tam Chee Ming) [162] The Third Defendant, Tam Chee Ming, is an employee of the Second Defendant, holding the position of general manager. It is not in dispute that his involvement in the alleged infringement was limited to posting and sharing promotional images and videos of mandarin oranges bearing the Applicant's Tangor Panda Mark on his personal Facebook page. These images were edited versions provided by the Second Defendant and contained the Second Defendant's company logo and contact numbers, and were shared on platforms where the Second Defendant was tagged (Fruitglo – 82! ! Truly Tropical). The images depicted the Applicant's Tangor Panda Mark as it appeared on the Applicant's mandarin orange products. The images did not depict or promote the Respondent's products bearing the Offending Mark. The Third Defendant did not personally sell any mandarin oranges, nor did he derive any personal benefit from the posts. The sale of Tangor Lukan was at all material times solely the business of the Second Defendant. [163] For the same reasons as set out in relation to the Second Defendant, the Third Defendant has not infringed the Respondent's Offending Mark. I have found earlier that the registration of the Offending Mark is invalid and the Applicant has an earlier right to the panda device mark. As such, the use of the Applicant's Tangor Panda Mark by the Second Defendant's business which the Third Defendant was promoting was lawful. The Third Defendant acted in good faith in the course of his employment. [164] Beyond the primary finding of non-infringement, I consider it necessary to address two further grounds upon which the claim against the Third Defendant must fail. [165] The first is the question of whether the Third Defendant's acts constitute "use in the course of trade" within the meaning of Section 54 of the TMA 2019. Section 54(3) must be read with Section 54(2), which requires that the use of a mark must be in the course of the defendant's trade. In Maxcare Success Sdn Bhd v. Motionquest Sdn Bhd [2025] 2 MLRH 422, the High Court considered whether the publication of videos on a defendant's Facebook page constituted use of a mark in the course of that defendant's trade. 83! ! The Court held that the defendant's trade must necessarily be the sale of products bearing the relevant mark for the use to fall within the statutory definition. The Court found on the totality of the evidence that sharing of promotional material on Facebook did not constitute use of the mark in the course of the defendant's trade. The principle from Maxcare Success is apposite here. [166] The Third Defendant had no trade of his own in mandarin oranges. He did not sell, distribute, or deal in any goods bearing the Applicant's Tangor Panda Mark or any other mark. He merely shared, on Facebook, edited images that had been prepared and provided by the Second Defendant for the purpose of promoting the Second Defendant's business. Since the Third Defendant had no personal trade in the relevant goods, his acts of sharing the images cannot constitute use of any mark "in the course of trade" within the meaning of the TMA 2019. Accordingly, the statutory prerequisite for infringement under Section 54 is not satisfied as against the Third Defendant. [167] The second additional ground concerns the question of personal liability. The Third Defendant should not be held personally liable for acts performed in the course of his employment. It is a well-established principle of law that a company is a separate legal entity from its directors, shareholders, and employees. As the High Court observed in Chanel v. Melwani International Sdn Bhd & Ors and other suits [2017] 6 MLRH 175: "a company is a legal person which is separate from its directors, shareholders and employees … Accordingly, the general rule is that a company's 84! ! directors, shareholders, and employees should not be personally liable for the company's act or omission." [168] The Third Defendant was at all material times acting as an employee of the Second Defendant, performing his duties as general manager. His posting of the Facebook images was done in furtherance of his employer's business. The original photographs of the Tangor Lukan products were provided by the Applicant. It is worth noting here that the Second Defendant edited those photographs by adding its own company details. The Third Defendant obtained the edited images from the Second Defendant and shared them on Facebook. Any profits derived from the sale of the products were credited solely to the Second Defendant's business. There is no evidence that the Third Defendant had any personal or independent interest in the alleged infringing activity, that he acted outside the scope of his employment, or that he acted otherwise than in good faith and in the genuine belief that his employer was lawfully authorised to deal with the products in question. [169] I agree with the submission of counsel for the Third Defendant that to impose personal liability on an employee in these circumstances would set a dangerous precedent. It would mean that any employee who, within the scope of his duties and in good faith, promotes his employer's products with a genuine belief that the employer is lawfully authorised to deal with those products and the marks appearing thereon would be exposed to personal liability in a trademark infringement suit. Such a result would be unjust and contrary to the doctrine of separate legal personality. 85! ! [170] For the foregoing reasons I dismissed the Respondent's counterclaim against the Third Defendant. Conclusion [171] In conclusion I hereby find that: a) The Applicant is an “aggrieved person” under section 47 of the TMA 2019 and therefore had standing to bring the invalidation action. The Applicant had been trading in mandarin oranges in Malaysia since 1997, had used the Tangor Panda Mark continuously since about 2009/2010, and its ability to continue using and registering that mark was directly affected by the Respondent’s registered mark. b) The Applicant was the first user and common law proprietor of the Tangor Panda Mark in Malaysia. The Applicant’s documentary evidence, including purchase orders, invoices, bills of lading, inventory reports, packaging photographs, emails, social media posts, newspaper reports, marketing materials, and sales records, as showing continuous use of the mark in trade since around 2009/2010 predated the Respondent’s registration in December 2021 by more than a decade. c) The Respondent failed to prove earlier use of its panda device mark. At its highest, the Respondent’s evidence only showed use from around 2012 onward, which was later than the Applicant’s 86! ! proven use. The Respondent’s reliance on Her Zhong Trading and Mr. Liu Wen Qing was insufficient to show the usage of the panda device mark as a trademark in the course of trade in Malaysia before the Applicant. d) The Applicant was entitled to protection under the law of passing off. All the three elements of the classical trinity were satisfied. First, Applicant had acquired substantial goodwill in the Tangor Panda Mark through over 14 years of continuous sales, with cumulative sales exceeding RM17.7 million. Second, there was misrepresentation, because the two panda marks were admittedly confusingly similar and used on identical goods sold through the same channels. Third, there was damage, both in the form of likely diversion of trade and actual disruption caused by the Respondent’s enforcement action against Applicant’s downstream customer. e) The Respondent’s registration was obtained by misrepresentation under section 47(6) of the TMA 2019. The Respondent’s own case was that the panda device mark originated from Her Zhong Trading, yet it applied to register the mark in its own name without disclosing that fact or any valid transfer of rights. This amounted to a false representation of proprietorship to the Registrar. It can be inferred that, given the parties operated in the same niche market and the Applicant had been using the mark for years, the Respondent likely knew of Applicant’s prior use. f) The Respondent’s argument that it was inequitable for the Applicant to seek invalidation is rejected. There is no requirement under the TMA 2019 that a party must register its mark in order to 87! ! preserve common law rights, and that the Applicant had acted promptly after learning of the Respondent’s registration and cease-and-desist letter. There was no acquiescence, estoppel, or unreasonable delay. g) The counterclaim against the Applicant was dismissed. There was no trademark infringement by the Applicant. The main reason was that the Respondent’s mark had been declared invalid, and an invalid registration cannot find an infringement claim. Independently, even if the registration had remained valid, the Applicant would have had a complete defence under section 55(2) of the TMA 2019 as a prior continuous user of the unregistered Tangor Panda Mark. h) The counterclaim against the Second Defendant in the Counterclaim is dismissed. The Second Defendant was merely a bona fide downstream retailer that had purchased goods lawfully marked by the Applicant, the prior user. The Second Defendant did not create or affix the mark itself, acted in good faith, and promptly withdrew the goods and advertising once notified. i) The counterclaim against the Third Defendant in the counterclaim, Tam Chee Ming is dismissed. The Third Defendant had merely shared promotional images on Facebook in his capacity as an employee of the Second Defendant. The Second Defendant, did not trade in the goods personally, and should not be personally liable for acts done in the course of employment and in good faith. [172] In sum, I make the following orders: 88! !

That the Applicant to be declared as the legal and common law owner of the trademark (Applicant’s Tangor Panda Mark) where it is used on or in relation to its fresh produce products in class 31, including but not limited to, mandarin oranges;

That the Respondent’s Trademark Registration No: TM2021036177 for the trademark (Respondent’s Trademark) in Class 31 in Malaysia (Respondent’s Registration) be declared invalid under Section 47(3) (b) and section 47(6) of the Trademarks Act 2019, and be cancelled and removed from the Register of Trademarks kept and maintained by the

That upon service of this Order on the Registrar of Trademarks in accordance with Regulation 52 of the Trademark Regulations 2019, the Registrar of Trademarks shall record the invalidation of the Respondent’s Trademark and thereafter cause such fact of invalidation of the registration to be published in the

That the Respondent’s counterclaim against the Defendant for trademark infringement is dismissed; 89! !

That cost in the sum of RM 20,000 be paid by the Respondent to the Applicant/First Defendant for this action, subject to the allocatur fee; and

That cost in the sum of RM 3,000 be paid by the Respondent to the Second and Third Defendants respectively for this action, subject to the allocatur fee. Dated this day of 27th February 2026. -sgd-EDWIN PARAMJOTHY MICHAEL MUNIANDY JUDICIAL COMMISSIONER COMMERCIAL DIVISION (NCC 7) HIGH COURT OF MALAYA KUALA LUMPUR 90! ! Counsel: For the Plaintiff/1st Defendant In the Counterclaim Steven Cheok and Soo An Qi (Messrs. Adnan Sundra & Low) For the Defendant/Plaintiff In the Counterclaim Edwin Lim and Amirul Rafie (Messrs. Koh Teh Law Chamber) For the 2nd and 3rd Defendants in the Counterclaim Koh Zhe Ping (Messrs. C L Boo & Associates)