Federal Court clarifies registrar's role in infringement and expungement actions


The appeal before the apex court of Malaysia in Ho Tack Sien v Rotta Research Laboratorium SpA ([2015] 4 CLJ 20, April 7 2015) arose out of an action brought by the first plaintiff, Rotta Research Laboratorium SpA, and its Malaysian distributor against the defendants based on the following causes of action: breach of confidence, trademark infringement and passing off.

Rotta has owned the registered trademark VIARTRIL-S in Class 5 in Malaysia since 1976. The third defendant registered the mark ATRIL-250 in Class 5 with effect from 2002. The High Court allowed the plaintiffs’ claim and ordered, among other things, that the third defendant's registered trademark be expunged.

The Court of Appeal affirmed the decision of the High Court, but reversed the High Court’s decision to expunge the impugned mark. It further held that the High Court ought to have received the evidence of the registrar before exercising its discretion to order the expungement of the third defendant's trademark.

The registrar of trademarks was allowed to intervene in the appeals.

The defendants and Rotta sought, and were granted, leave to appeal against the Court of Appeal's decision to the Federal Court, with the following questions of law being posed:    

  1. whether the evidence of the registrar, who had approved the registration of the third defendant’s mark after the commencement of the plaintiff’s infringement suit, was material to proving trademark infringement, in that the registrar was a key witness to establishing the likelihood of confusion; and
  2. whether it was a pre-requisite to name the registrar or the Intellectual Property Corporation of Malaysia (MYIPO) as a party in a writ or statement of claim in an application to expunge or rectify the Register of Trademarks; and, if the answer was in the affirmative, whether the several High Court decisions ordering the expungement/rectification of the Register of Trademarks without insisting on the registrar or MYIPO being named as a party in the suits were now bad in law.

The Federal Court held, among other things, that there is no necessity to bring in the registrar as a party to the suit where there is no cause of action against the registrar. This is especially so as there are no statutory provisions which require the registrar to be made a party to rectification and expungement proceedings.

The Federal Court further ruled that neither the court nor the registrar has any discretion to allow a mark that has been wrongfully registered to continue to remain on the register. The mark must be removed or expunged from the register once the grounds for revocation or removal of a mark have been made out. It is not the duty of the registrar to refer the matter to the court, as it is for the registered proprietor or owner of the aggrieved mark to bring an action in court to resolve any dispute concerning identical marks.

The court further held that the remedy of removal or expungement of a trademark from the register is not dependent on Section 62(1) of the Trademarks Act; that section cannot be read to mean that the registrar ought to be made a party to the action. Section 62(1) essentially provides that, in any legal proceedings in which the relief sought includes the alteration or rectification of the register, the registrar shall have the right to appear and be heard. The Federal Court held that these provisions merely accord the right to the court to call the registrar if the court requires their assistance.

Importantly, the Federal Court also ruled that a registration is merely a rebuttable presumption that the mark is valid. Once evidence is shown that a registered mark is invalid and should not have been registered in the first place, the natural remedy would be to remove the invalid mark. Registration is therefore not a defence in relation to marks that have been wrongly entered into the register. Based on the reasons above and those stated in the judgment, the Federal Court answered both questions in the negative.

Teo Bong Kwang and Boo Min Lee, Wong Jin Nee & Teo, Kuala Lumpur

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