High Court supports registry's refusal to force company name change
In Toyo Ink Mfg Co v Registrar of Companies (D3-24-323-2003, August 24 2005), the Kuala Lumpur High Court has upheld the Malaysian registrar of companies' refusal to order Toyo Ink Group Berhad to change its name. The plaintiffs, Toyo Ink Mfg Co Ltd and Toyochem Corporation Berhad, argued that the name Toyo Ink Group Berhad was confusingly and/or deceptively similar to that of Toyo Ink Mfg Co Ltd, and implied an association between the two.
The plaintiffs filed an appeal with the High Court under Section 11(10) of the Companies Act 1965 after the registrar of companies rejected their request to order Toyo Ink Group Berhad to change its name. The plaintiffs argued, among other things, that the name Toyo Ink Group Berhad was undesirable within the meaning of Section 22(1) of the act and that the registry had not taken into consideration the fact that Toyo Ink Mfg Co had reputation and goodwill in the brand name Toyo Ink throughout the world, including Malaysia. They also argued that Toyo Ink Mfg Co Ltd and its subsidiaries were collectively known as the Toyo Ink Group throughout the world.
However, Toyo Ink Group Berhad, contended that its subsidiary, Toyo Ink Sdn Bhd, had been involved in the manufacture of printing inks and had used its brand name since being founded in 1979. As such, it argued that Toyo Ink Sdn Bhd was the common law proprietor of the TOYO mark. It also argued, among other things, that (i) the application and registration of Toyo Ink Mfg Co's trademark outside Malaysia was not relevant, and (ii) both plaintiffs were aware that Toyo Ink Sdn Bhd had been using the name Toyo since 1979 and had never objected to this before.
The Registry of Companies, argued, among other things, that although Toyo Ink Mfg Co Ltd had been registered in Japan since 1907, it had no jurisdiction over foreign-registered companies and was under no duty to be vigilant over whether foreign companies' names were similar to those registered with it.
The High Court dismissed the plaintiffs' application on the following grounds:
- The name Toyo Ink Group Berhad was not identical or similar to the plaintiffs' names.
- The plaintiffs had only identified themselves as the Toyochem Group since 1997 in Malaysia and had failed to show that the words 'Toyo', 'Ink' and 'Group' were not generic or commonly used as trade names in Malaysia, merely describing the plaintiffs' business in Malaysia.
- The second defendant's subsidiary, Toyo Ink Sdn Bhd, had been using the TOYO mark since 1979 and there had been no objections to this from the plaintiffs.
- Although Toyo Ink Mfg Co Ltd had indeed been registered in Japan since 1907, the Malaysian Registry of Companies had (i) no jurisdiction over the registration of foreign companies, and (ii) no duty to remain vigilant over names identical to those registered with it that were used outside its jurisdiction.
- The name Toyo had not been listed as a prohibited name in the Government Gazette 716/97 dated January 30 1997. As such, it was unfair for the plaintiff to claim a monopoly over the name's use.
- The plaintiff should have registered the name Toyo Ink and not Toyochem with the Malaysian registrar of companies if it believed that that it had goodwill residing in the name Toyo Ink.
Marie-Julie Wan Ullok, Skrine, Kuala Lumpur
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