Non-use under Section 46 of the Trademarks Act clarified by High Court

In Godrej Sara Lee Ltd v Siah Teong Teck ([2007] 7 MLJ 164, August 29 2007), the High Court has clarified what constitutes non-use of a registered trademark under Section 46 of the Trademarks Act 1976.

Godrej Sara Lee Ltd - which is involved in the business of manufacturing and providing goods such as mosquito repellent mats and coils, insecticides, pesticides and insect repellents - applied for the registration of the mark GOOD KNIGHT. The registrar rejected the application based on the earlier registered trademark GOOD KNIGHT, owned by Siah Teong Teck. Godrej brought a motion seeking that Teck's mark be expunged and removed from the Register of Trademarks.

The application for removal was based on Section 46(1) of the act - that is, Teck's mark had not been used for a continuous period of three years up to one month before the application for removal was filed in court. Godrej had carried out independent investigations to demonstrate this fact. On the other hand, Teck did not deny that it had not used the mark during the period in question, but alleged that:

• its mark had been used in 1996, as a company known as Sri Dapat Sdn Bhd had applied to the Pesticides Board for approval of the mark; and
  
  
• Teck had not used the mark during the period in question as there was a possible conflict of interest.

The High Court established that the relevant period was between January 5 2004 and January 5 2007 (ie, the period of three years up to one month before the application for removal was filed). The court held that under established case law, an applicant in rectification proceedings need only prove that there is a prima facie case of non-use; the burden then fell upon the registered proprietor to rebut the case and show evidence of use during the relevant period of time.

In the case at hand Godrej succeeded in proving a prima facie case of non-use. Moreover, the court found that Teck had failed to rebut Godrej's case for two reasons.

First, the court rejected Teck's argument that its mark had been used in 1996, as use of the mark must be in relation to the goods claimed in the registration. The court was of the opinion that merely seeking regulatory approval did not constitute actual use of the mark, as there is a clear distinction between actual use and intention to use a mark. Moreover, use of the mark, if any, would have been by Sri Dapat, which was neither the registered proprietor nor the registered user of the mark. In any event, the court held that any alleged use of the mark did not fall within the relevant period.

Second, the court referred to Section 46(4) of the act, which provides that non-use may be excused by special circumstances in the trade. The court referred to several UK decisions on Section 26 of the Trademarks Act 1994 and concluded that the following conditions must be satisfied:

• The special circumstances must be peculiar or abnormal, and external in nature; and
  
  
• Non-use must be a result of those circumstances.

The court rejected Teck's second argument, as the alleged conflict of interest arose from a commercial contract. The court found that non-use was purely a commercial choice, which was not due to any peculiar or abnormal event. Moreover, non-use was not caused by an external factor beyond the control of the proprietor.

The court's decision is interesting in that it sheds light on the factors needed to rebut an allegation of non-use. According to the court, use must be:

• in relation to the goods claimed in the registration;
  
  
• by the registered proprietor or user; and
  
  
• within the relevant period of time.

Further, while Section 46(4) of the act may provide an excuse for non-use of a trademark, a registered proprietor can avail itself of this section only if it can show that non-use was caused by special circumstances which were peculiar and external in nature.

Joshinae Wong, Skrine, Kuala Lumpur