Janice Sim explains how to expunge a trade mark for non-use.
 
It is not unusual that an Applicant in a trade mark registration encounters objections by the Intellectual Property Corporation of Malaysia (MyIPO) to his application due to the existence of prior registrations of identical or similar trade marks (“cited mark”).
 
The objection is usually premised on Sections 14(1)(a), 19(1) and 19(2) of the Trade Marks Act 1976 (“the Act”). Section 14(1)(a) of the Act precludes a mark, or part of a mark, from being registered as a trade mark if the use thereof is likely to deceive or cause confusion to the public or would be contrary to law.
 
Sections 19(1) and 19(2) of the Act prohibits the registration of any trade mark in respect of any goods or services that is identical with a trade mark belonging to a different proprietor in respect of the same or closely related goods or services or description of goods or services. These sections also prohibit registration of a trade mark that resembles a registered trade mark as is likely to deceive or cause confusion.
 
The existence of a cited mark often puts the Applicant in a predicament, for not only is he unable to register the mark that he plans to use, or is already using, but he will face the prospects of being accused of infringing the cited mark.
 
NON-USE OF THE CITED MARK
 
If an Applicant finds that the cited mark has not been used by the proprietor for some time, he may consider taking steps to remove the cited mark from the Register. 
 
THE EXPUNGEMENT PROCEEDINGS
 
Section 46(1) of the Act provides that an aggrieved person may apply to the Court for an order for the removal of a trade mark from the Register in respect of which the mark is registered on either of the following grounds:
 
(a)     that the trade mark was registered without an intention in good faith, on the part of the applicant for registration, to use it in relation to those goods or services and there has in fact been no use in good faith of it in relation to those goods or services by the registered proprietor for the time being up to the date of one month before the date of the application for removal; or
 
(b)     that up to one month before the date of the application for removal, a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which they was no use in good faith of it in relation to those goods or services by the registered proprietor or registered user for the time being.
 
As it would be difficult to prove that the proprietor did not have any intention to use a trade mark, the Applicant will usually rely on section 46(1)(b). Section 46(1)(b) requires an Applicant who wishes to challenge the registered mark to establish 2 elements. Firstly, that the Applicant is an aggrieved person and secondly, that that the registered proprietor of the cited mark has not used the relevant mark for a continuous period of not less than three years plus one month in relation to the registered goods or services.
 
AGGRIEVED PERSON
 
In McLaren International Limited v Lim Yat Meen [2009] 4 CLJ 749, the Federal Court gave a narrow interpretation to the expression a “person aggrieved”. Their Lordships held that a person whose application for registration of his trade mark is jeopardized by Section 19(1) of the Act cannot, without more, qualify as a person aggrieved, because he could be a mere busybody.
 
The Federal Court has cited with approval the case of Re Arnold D. Palmer [1987] 2 MLJ 681 where it was held that:
 
“The registration of a trade mark in the name of a proprietor, once effected, ought not to be disturbed by persons who have no trading interest in the goods concerned. If an applicant for rectification has no such interest to begin with, and therefore cannot suffer any damage at all by the existence of a conflicting trade mark on the register, it cannot be right, in principle, that the mere filing of his application can confer the necessary locus standi on the application for the purpose of rectifying proceedings. Otherwise, the test of grievance propounded in Powell’s Trade Mark (1984) 11 RPC 7; [1984] A.C. 8 would be completely nullified by resorting to the simple expediency of applying to register the very mark the applicant seeks to expunge.”
 
According to the Federal Court, Re Arnold D. Palmer lays down the principle that a person aggrieved is a person who has used his mark as a trade mark – or who has 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.
 
In Lam Soon Edible Sdn Bhd v Hup Seng Perusahaan Makanan (M) Sdn Bhd [2010] 5 CLJ 975, the applicant had registered the mark “NATUREL” in respect of goods in Class 29 and had used the same substantially. Hence, the applicant had goodwill in the mark in respect of goods in Class 29. Subsequently, the applicant, with the intention to market different products using the mark “NATUREL”, applied to register the same mark in Class 30. In the course of the application, the examiner raised an objection based on the respondent’s registration of the mark “NATURELL” in Class 30.
 
The High Court agreed that by virtue of McLaren International Limited, an applicant could not claim that it has the locus standi to mount an action for rectification because of the mere filing of its application. However, the High Court distinguished McLaren International Limited on the facts and held that the applicant in the present case was clearly a person aggrieved as it was substantially interested in having the mark removed as it had a present and genuine intention to use the mark in question.
 
EVIDENCE OF NON-USE: THE RELEVANT PERIOD
 
Section 46(1)(b) requires an Applicant to establish that at the date of commencement of the cancellation proceedings, the cited mark had not been used in good faith by the registered proprietor or a registered user for a continuous period of 3 years plus 1 month since the cited mark became a registered trade mark.
 
The first issue that arises in respect of Section 46(1)(b) is whether the relevant period commences from the date of the trade mark application or from the date the mark was actually placed on the Register (the date the certificate of registration is issued).
 
In Industria De Diseno Textil, SA v Edition Concept Sdn Bhd [2005] 3 MLJ 347, the plaintiff applied to register the trade mark "ZARA" in respect of retail services on 3 August 1998. The mark was entered on the Register on 5 February 2002. The defendant filed an application to expunge the plaintiff's mark from the register on 3 March 2004.
 
The High Court held that the relevant date to calculate the 3 year period of non-use was the date on which the mark was entered on the Register, that is, on 5 February 2002 when the certificate of registration was issued and not the date of application for registration on 3 August 1998.
 
As such, the required three years plus one month period was not fulfilled as the period of non-use which had elapsed from 5 February 2002, the date of registration of the trade mark, to 3 March 2004, the date of commencement of expungement proceedings, was less than 3 years.
 
EVIDENCE OF NON-USE: BURDEN OF PROOF
 
The onus is on the Applicant to establish a prima facie case of non-use of the cited mark in Malaysia before the evidential burden is shifted to the Respondent to adduce the evidence of such use.
 
If the Applicant wishes to rely on a market survey to establish non-use by the registered proprietor, it is imperative that he ensures that the market survey report complies with the minimum criteria propounded in Imperial Group plc & Another v Philip Morris Limited & Another [1984] RPC 293. The nine criteria laid down in Imperial Group include the requirement that (i) interviewees be representative of the relevant cross-section of the public; (ii) the size to be statistically significant; (iii) the survey be conducted fairly; and (iv) the questions be not misleading.
 
In Lam Soon Edible Sdn Bhd, the market survey reports tendered by the applicant to establish non-use were deemed by the Court to be unreliable as they failed to meet the criteria laid down in Imperial Group plc.
 
It is possible for an Applicant to consider obtaining a detailed private investigator's report to substantiate the evidence of non-use. However, the admissibility and weight such evidence remains untested.
 
A WORTHWHILE PROCEEDING?
 
An applicant whose use of a trade mark is hindered by a stagnant trade mark registration should not hesitate to commence expungement proceedings if the above-mentioned elements can be proved. A trade mark is a live property and has to be used for it to retain its value, both commercially and legally. Registered trade marks which are not used for a continuous period of time should be revoked as it would be wrong for a registered proprietor to dominate the trade mark without using it, at the expense of bona fide parties who wish to use the same.