Bata powerless to cancel SPORTS POWER mark

Malaysia

The Court of Appeal of Malaysia has dismissed an appeal brought by Bata Ltd in relation to its action to expunge a SPORTS POWER device mark used for goods in Class 25 of the Nice Classification (Case W-02-285-2000, June 26 2006).

Bata, a long-established and well-known manufacturer of footwear in Malaysia, owns a registered POWER device mark. However, a disclaimer is placed on the word 'power'. In 2000, Bata filed a motion in the Kuala Lumpur High Court seeking an order to remove a 1988 registration for SPORTS POWER and a pictorial device in respect of socks and underwear in Class 25.

At the start of the expungement proceedings, the SPORTS POWER mark had been registered for more than seven years.

The motion failed in the High Court and Bata Ltd appealed to the Court of Appeal.

At the Court of Appeal the issue of conclusiveness of a registration after seven years as provided under Section 37 of the Malaysian Trademarks Act was carefully considered. The Court of Appeal reaffirmed the principle that once a mark has been registered for more than seven years its validity can only be challenged on the limited grounds stipulated in Section 37, namely:

  • the original registration was obtained by fraud;

  • the impugned mark continues to offend against the provisions of Section 14, which includes the grounds that it is likely to deceive or cause confusion; or

  • the impugned mark lacks distinctiveness.

The Court of Appeal held that the relevant time to consider the issue of continuing likelihood of confusion or lack of distinctiveness is at the time of the filing of the application for expungement.

On the issue of likelihood of confusion, the Court of Appeal declared that a mere possibility is not sufficient; instead, there must be "a real tangible danger of confusion". To answer this question, it held that it is necessary to take into account the following factors:

  • the idea of the mark;

  • the imperfect recollection of the mark;

  • the aural as well as visual aspects of the marks at issue; and

  • all the circumstances of trade.

In coming to a conclusion that there was no likelihood of confusion, the court placed great emphasis on the fourth factor and the fact that the trade channels of the respective parties' goods are different. The evidence adduced showed that Bata retails footwear in franchised Bata shops only, whereas SPORTS POWER goods are sold in general shops. Secondly, the court held that since the word 'power' has been disclaimed in Bata's mark, Bata could not claim exclusivity to its use.

In relation to the issue of lack of distinctiveness, the Court of Appeal held that Bata had failed to adduce evidence to prove that the SPORTS POWER trademark was not distinctive of the relevant goods at the commencement of the proceedings. Bata merely adduced evidence of non-distinctiveness at the time of registration.

Teo Bong Kwang and Michele Teh, Wong Jin Nee & Teo, Kuala Lumpur

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