Joshinae Wong explains the legal implications.
 
In Ginvera Marketing Enterprise Sdn Bhd v Tohtonku Sdn Bhd [2010] LNS 619, the High Court ruled that the Plaintiff’s Certificate of Registration was invalid and hence could not be used as the basis for its claim for trade mark infringement against the Defendant, as the Certificate was not issued in compliance with the provisions of the Trade Marks Act 1976 (“Act”) and Trade Marks Regulations 1997 (“Regulations”).
 
BRIEF FACTS
 
The Plaintiff developed an exfoliating gel product and started to market it under the brand name ‘Marvel Gel’. An application was made to register ‘Marvel Gel’ which was accepted by the Registrar and subsequently advertised in the Government Gazette on 20 December 2001. At this point, the Defendant filed a Notice of Opposition on 7 February 2002 opposing the registration of ‘Marvel Gel’. Notwithstanding the Defendant’s objection, the Registrar proceeded to issue the Certificate of Registration on 4 March 2002.
 
The Defendant, who traded under the brand name ‘Follow Me’ then manufactured and sold a skin product under the name ‘Follow Me UV White Marvel Gel’ from 2001 until 2003, and then changed the product name to ‘Follow Me UV White Renewal Gel’.
 
The Plaintiff claimed trade mark infringement, or alternatively, passing-off based on the Defendant’s use of “Follow Me UV White Marvel Gel”, and subsequently “Follow Me UV White Renewal Gel”. The Defendant counterclaimed for the Certificate of Registration to be set aside.
 
THE JUDGMENT
 
The Plaintiff contended that the Certificate of Registration should be taken as prima facie evidence of the validity of the registration and therefore, it was valid and subsisting at the material time. The High Court rejected this argument and held that the Certificate of Registration had been issued contrary to the Act and the Regulations which expressly provided for an opposition procedure.
 
As the Defendant had been denied the right to be heard in the opposition proceedings, a right provided for by the Act and Regulations, the Certificate was therefore obtained in breach of the principles of natural justice and was invalid. As such, the Plaintiff’s claim for trade mark infringement could not stand as the mark ‘Marvel Gel’ was in effect, unregistered at the material time.
 
NO PASSING OFF
 
The High Court then went on to consider the claim for passing-off and concluded that ordinary members of the public who bought skin products in Malaysia would not believe that the Defendant’s product was the Plaintiff’s product, or associated with the Plaintiff. The Court considered that:
 
(1)     the presentation of the Defendant’s product was different from that of the Plaintiff’s  - the Plaintiff’s product was ‘Ginvera Marvel Gel’ whereas the Defendant’s packaging focused on the brand ‘Follow Me’ in a manner where the public’s attention would be drawn to the words ‘Follow Me’. The Court emphasized that the words ‘Follow Me’ was the Defendant’s brand and was used on its other products. Hence, the Court felt that a reasonable person would recognise the ‘Follow Me UV White Marvel Gel’ product of the Defendant to be that of the Defendant, and not of the Plaintiff.
 
(2)     there was no evidence from the Plaintiff that customers were confused by the Defendant’s use of Marvel Gel – although the Plaintiff submitted survey evidence, the Court did not give weight to this as inter alia (i) the survey was carried out subsequent to commencement of the suit; (ii) the actual survey forms were not produced; (iii) the persons who conducted the interviews did not give evidence; and (iv) the questions were framed in a leading manner.
 
(3)     the term ‘Marvel Gel’ has a dictionary meaning and is descriptive of the product. The Court was of the opinion that the term had not lost its primary significance and had not acquired a secondary meaning distinctive of the Plaintiff’s products. The Defendant thus could not be prevented from using the same as long as it was made clear that their brand of the products were not the same brand as that of the Plaintiff’s.
 
The Court further found that the Plaintiff could not maintain its claim against the Defendant in relation to the Defendant’s use of ‘Follow Me UV White Renewal Gel’, as the use complained of occurred after the commencement date of the action and any amendments to the Writ would have to be dated back to the date of issuance of the Writ.
 
CONCLUSION
 
This recent decision demonstrates inter alia that a Certificate of Registration obtained in violation of the Act and the Regulations cannot form the basis of an infringement claim, and the difficulties in establishing confusion where the subject mark is used together with a distinctive brand name and where the subject mark is descriptive.
 
The decision is presently under appeal.