Onus of proof in non-use actions rests on the applicant


In E-Toyo Global Stationery v Toyo Ink ([2005] 1 MLJ 445), the High Court of Malaysia has held that in non-use expungement actions, the onus is on the applicant to establish a prima facie case of non-use.

E-Toyo Global Stationery, a Malaysian company, filed a motion for rectification of the Trademark Register seeking an order that (i) Popular Mate Sdn Bhd be expunged and removed as the registered user of the TOYO mark, on the grounds that the entry was made without sufficient cause or that it was an entry wrongfully remaining on the register, and (ii) Toyo Ink's registered mark TOYO in Class 16 be expunged and removed for non-use from the Trademark Register. E-Toyo argued that:

  • it has held the common law rights to use the trademark TOYO since early 1993;

  • Toyo Ink did not have a good-faith intention to use the trademark in Malaysia and had not used it for a period of 23 years; and

  • Popular Mate was trafficking in the trademark (the licensing or purported licensing of the use of a mark to traders who have no other connection with the licensor).

In response, Toyo Ink maintained that it has been the registered proprietor of the trademark in Class 16 for various types of stationery products since March 1979. Popular Mate claimed that it had been using the trademark since July 2002 and was entered on the register as the registered user on October 11 2002.

Case law indicates that courts must exercise caution when resolving disputes based on conflicting affidavit evidence. In the absence of oral evidence or cross-examination on the affidavits, courts should ignore the disputed allegations and come to a decision by considering only the undisputed facts.

In the case at hand, the court noted that the onus was on the applicant, E-Toyo, to establish a prima facie case of non-use. However, the court held that Toyo Ink and Popular Mate had provided evidence of some use of the trademark and it was irrelevant how limited that use had been during the relevant period.

Accordingly, the court dismissed E-Toyo's application for expungement.

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

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