Invalid registration certificate cannot form basis of infringement claim

In Ginvera Marketing Enterprise Sdn Bhd v Tohtonku Sdn Bhd (Case D-22(IP)-799-2002, June 3 2010), the High Court has ruled that the plaintiff’s certificate of registration was invalid, as it had not been issued in compliance with the provisions of the Trademarks Act 1976 and the Trademarks Regulations 1997.
The plaintiff, Ginvera Marketing Enterprise Sdn Bhd, developed an exfoliating gel product and marketed it under the name Marvel Gel. Ginvera subsequently applied to register the mark MARVEL GEL. The application was accepted by the registrar and advertised in the Government Gazette on December 20 2001. On February 7 2002 defendant Tohtonku Sdn Bhd filed a notice of opposition against the registration of MARVEL GEL. Notwithstanding Tohtonku's opposition, the registrar issued the certificate of registration on March 4 2002.
Between 2001 and 2003 Tohtonku, which traded under the name Follow Me, manufactured and sold a skin product under the name Follow Me UV White Marvel Gel. The name was then changed to Follow Me UV White Renewal Gel. Ginvera alleged:
  • trademark infringement; and
  • passing off based on Tohtonku’s use of the names Follow Me UV White Marvel Gel and, subsequently, Follow Me UV White Renewal Gel.
Tohtonku counterclaimed that the certificate of registration should be set aside. In contrast, Ginvera contended that the certificate of registration should be considered as prima facie evidence of the validity of the mark and, therefore, was valid and subsisting at all material times.

The High Court rejected Ginvera's argument, holding that the certificate of registration had been issued in violation of the act and the regulations, which expressly provide for an opposition procedure. As Tohtonku had been denied the right to be heard in the opposition proceedings, the certificate had been obtained in breach of the principles of natural justice and was thus invalid. As such, Ginvera’s claim for trademark infringement could not stand, as the MARVEL GEL mark was, in effect, unregistered at the material time.
The court then considered the passing-off claim and came to the conclusion that ordinary members of the public who bought skin products in Malaysia would not believe that Tohtonku’s product originated from, or was associated with, Ginvera. In particular, the court held as follows:  
  • The presentation of Tohtonku’s product was different from that of Ginvera's product. Ginvera’s product was sold under the name Ginvera Marvel Gel, while the packaging of Tohtonku’s product drew the public's attention to the brand Follow Me. The words ‘Follow Me’ constituted Tohtonku’s brand and were used on its other products. Hence, a reasonable person would recognise that the Follow Me UV White Marvel Gel product originated from Tohtonku.
  • There was no evidence that consumers were confused by Tohtonku’s use of the words 'Marvel Gel'. Although Ginvera submitted survey evidence, it was given no weight as:
    • the survey was carried out after the commencement of the suit; 
    • the survey forms were not produced before the court;
    • the persons who had conducted the interviews did not give evidence; and 
    • the questions were leading.
  • The term ‘Marvel Gel’ had a dictionary meaning and was descriptive of the product. The term had not lost its primary significance and had not acquired a secondary meaning. Therefore, Tohtonku could not be prevented from using this term, as long as it was clear that its brand was different from Ginvera's.
The court further held that Ginvera could not maintain its claim in relation to Tohtonku’s use of ‘Follow Me UV White Renewal Gel’, as such use had occurred after the commencement of the action.
The decision demonstrates that a certificate of registration obtained in violation of the act and the regulations cannot form the basis of an infringement claim. It also highlights the difficulties in establishing confusion where the subject mark:
  • is pitted against a distinctive brand name; and
  • is descriptive.
The decision is presently under appeal.

Joshinae Wong, Skrine, Kuala Lumpur

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