No monopoly over GIORDANO mark

In Walton International Ltd v Hong Kong Trading Co ([2007] 4 MLJ 133), the High Court has held that Walton International Ltd could not claim a monopoly over the trademark GIORDANO in Malaysia.

Walton was an associated company of Giordano Limited and both parties were part of a group of companies owned by Giordano International Limited of Bermuda, a public listed company on the Hong Kong Stock Exchange.

Walton was the registered proprietor of the GIORDANO trademark for various goods in Malaysia and many countries throughout the world. The respondent was the sole proprietor of Hong Kong Trading Co and had also applied to register the GIORDANO mark in respect of glasses and sunglasses in Class 9 of the Nice Classification. The registrar of trademarks accepted the application.

Walton filed an opposition against registration of the mark. The registrar dismissed the opposition. Walton appealed to the High Court, contending that it was the originator of the GIORDANO trademark and that the respondent had copied the mark, thereby misappropriating the reputation, goodwill and commercial advantage of Walton's mark.

The respondent argued that it was the first user of the mark in respect of Class 9 goods in Malaysia, since it had been selling glasses and sunglasses under the GIORDANO mark since 1992.

Dismissing the appeal, the High Court held that the respondent was the first user of the GIORDANO mark in respect of Class 9 goods in Malaysia, and that there was no evidence of Walton's use of the mark in respect of Class 9 goods either prior to or after the respondent's trademark application. Therefore, Walton had no reputation or goodwill in the GIORDANO mark in connection with goods in Class 9.

Consequently, the court held that there was no risk of confusion. The court also made reference to the fact that Walton, having failed in its opposition against the Class 14 application for GIORDANO, opted not to appeal the decision, allowing the mark to proceed to registration. This was a clear indication to the court that Walton had accepted the fact that it could not claim a monopoly over the GIORDANO mark.

Walton has filed an application for leave to appeal to the Court of Appeal.

Michael Soo, Shook Lin & Bok Kuala Lumpur, Kuala Lumpur