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February 1, 2019 Vol. 74 No. 2 Back to Bulletin Main Page

MALAYSIA: Business Cessation Does Not Necessarily Mean Abandonment of Trademark

In Kong Kin Loong & Anor v. Kong Sou Keet & Ors, [2018] 1 LNS 1203, Aug. 21, 2018, the originating summons concerned a decision by the Registrar of Trademarks dated November 23, 2017, which dismissed the opposition and allowed the registration of Trademark No. 04011659 for the CHANG JIANG mark (pictured right), in Class 30 filed in the name of Kong Sou Keet (first defendant). Kong Sou Keet, Kong Sou Yoke, and Kong Sou Haun (the defendants) were all trading as partners in the Chang Jiang White Coffee Enterprise, the defendants’ firm, whereas Kong Kin Loong and Foong Choa Mun, the plaintiffs, were both trading as partners in Chang Jiang Confectionary.

The issues raised were inter alia, whether the plaintiffs could cite the second and third defendants as co-defendants when they did not apply to register the Chang Jiang mark; whether the plaintiffs are barred from relying on grounds which were not stated in the plaintiffs’ opposition; who was the bona fide/first user of the Chang Jiang mark; if a partnership is the owner of a mark, whether one partner of the firm can apply for the registration of the mark without joining the other partner; whether the expiry of the registration of the partnership’s business amounts to an abandonment of the mark by the partnership; whether a likelihood of deception or confusion applies to a first user; whether the Chang Jiang Mark is distinctive of the first defendant’s goods; and whether the court has the power to order the registrar to register the plaintiffs’ trademark (see image left), in Class 30.

The High Court of Malaya held that as the second and third defendants were not previously parties before the registrar, the plaintiffs could not cite them in the originating summons. The plaintiffs were also barred from relying on new grounds as they were not stated in the Notice of Opposition, and the plaintiffs did not obtain leave of the court to rely on the new grounds. The court attached great weight to a Chinese newspaper publication and found that the first defendant was the first user of the Chang Jiang mark. Since the Trademarks Act 1976 does not prohibit a partner from applying in the partner’s own name to register a trademark which belongs to the partnership and the expiry of the registration of the defendants’ firm under the Registration of Businesses Act 1956 was actually the result of the transfer of the business to another company owned by the defendants, it did not mean that the defendants’ firm had abandoned the use of the Chang Jiang mark.

The court also held that the likelihood of deception or confusion as described in the first part of Section 14(1)(a) of the Trademarks Act does not apply to the first defendant as she's the first user of the Chang Jiang mark.

Finally, the court further clarified that it has no power under the Trademarks Act to order the registrar to register the plaintiffs’ trademark for goods in Class 30. This originating summons was dismissed with costs. The decision has been appealed to the Court of Appeal and is currently pending.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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