Federal Court clarifies that registrar of trademarks is not an inferior court

In Yong Teng Hing B/S Hong Kong Trading Co v Walton International Limited, the Federal Court of Malaysia has held that a decision of the registrar of trademarks is not a decision of a subordinate court.
Respondent Walton International Limited, a subsidiary of Giordano International Limited, acquired the GIORDANO trademark from Giordano International by an assignment and has owned the GIORDANO mark in Malaysia and worldwide since March 5 1991.
Applicant Yong Teng Hing B/S Hong Kong Trading Co applied for registration of the trademark GIORDANO with the Registry of Trademarks on July 25 1992 in respect of optical and sunglasses in Class 9 of the Nice Classification. The application was accepted and published in the Government Gazette dated June 8 1995. The respondent filed an opposition to the application on the basis that:
  • it was identical or similar to its GIORDANO mark; and
  • the respondent had acquired substantial goodwill and reputation in Hong Kong and elsewhere, including Malaysia, before the applicant filed its application.
The respondent further contended that its predecessor-in-title, Giordano Limited, was the originator and/or the good-faith proprietor of the mark.
The registrar of trademarks dismissed the opposition and the respondent appealed to the High Court, which dismissed the appeal. The respondent appealed to the Court of Appeal, which allowed the appeal. The applicant then filed an appeal against the decision of the Court of Appeal.
During the application for leave before the Federal Court, the respondent submitted a preliminary objection that the final appeal should be before the Court of Appeal in view of Section 96(a) of the Court of Judicature Act. Section 96(a) provides that:

"... an appeal shall lie from the Court of Appeal to the Federal Court with the leave of the Federal Court from any judgment of the Court of Appeal in respect of any civil cause decided by the High Court in the exercise of its original jurisdiction involving a question of general principle decided for the first time, or a question of importance upon which further argument and decision of the Federal Court would be to public advantage."
The respondent submitted that:
  • the High Court considered the decision of the registrar of trademarks as an appellate court; and
  • the registrar of trademarks, when presiding in opposition proceedings, was in fact assuming a judicial or quasi-judicial function, including the exercise of discretion as in a court of law.
The Federal Court, in examining whether the registrar was an inferior court under the Court of Judicature Act, held that:
  • a decision of the registrar was not a decision of a subordinate court; and
  • the High Court, when hearing an appeal from a decision of the registrar, was in fact exercising its original jurisdictions.
This case is pending hearing of the leave application.
Based on the decision, it would appear that appeals from decisions of the registrar of trademarks may be filed all the way up to the Federal Court, as the registrar does not fall within the definition of a 'subordinate or inferior court'.
Janet Toh Yoong San, Shearn Delamore & Co, Kuala Lumpur

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