High Court varies UBS trademark registration

Malaysia

The Kuala Lumpur High Court has issued its ruling in the case of UBS AG v UBS Corporation Berhad (Originating Motion D4-25-12-2005, decision delivered on June 21 2006).

UBS AG, a global banking group, filed an application under Section 45 of the Trademarks Act 1976 for an order to expunge or, alternatively, vary a trademark registration for the mark UBS held by UBS Corporation Berhad (UCB). The registration was in Class 9 of the Nice Classification in respect of computer software.

The mark originally registered by UCB consisted of the letters 'UBS', the words 'User Business System' and a distinctive geometrical device. UCB subsequently successfully applied to alter the mark to its present form, UBS.

At the outset, UBS AG argued that it was a 'person aggrieved' within the scope of Section 45 of the act in that it would in some concrete way (ie, in a practical sense) be damaged or injured if UCB's registration were allowed to remain on the Trademarks Register. UBS AG relied on the following factors: (i) UCB's registration was the basis for the registrar's objections against several of UBS AG's applications in Class 9 for trademarks consisting of the letters 'UBS'; and (ii) UBS AG had been providing computer software to its clients and had invested heavily in IT companies and the creation of software products.

UBS AG argued that the registration should be expunged or varied because the alteration of the mark was outside the ambit of Section 44(1) of the act as it substantially affected the identity of the original mark. In addition, it contended that as UBS AG had prior rights over the mark UBS, registration of the altered mark was in contravention of Article 6(2) of the Paris Convention for the Protection of Industrial Property, Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and the following provisions of the act:

  • Section 10(1)(e) - the altered mark was not distinctive of and/or not capable of distinguishing the goods or services of UCB;

  • Section 25(1) - UCB was not the rightful owner of the altered mark;

  • Section 14(1)(a) - registration and/or use of the altered mark by UCB or any third party with its consent would be likely to deceive or cause confusion to the public or would be contrary to law;

  • Sections 14(1)(d) and (e), read with Section 14(2) - the altered mark was identical to or nearly resembled UBS AG's UBS mark, which was well known in Malaysia; and

  • Section 82(2) - use of the altered mark by UCB or any third party with its consent would constitute passing off.

The High Court allowed UBS AG's application and ordered that the registration be varied by restoring the altered mark to its original form. UCB has filed an appeal against the decision, which is now pending before the Kuala Lumpur Court of Appeal.

Michael Soo and Ng Kim Poh, Shook Lin & Bok, Kuala Lumpur

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