An applicant for trademark invalidation must demonstrate actual interest and intention to use the mark, failing which, the application will be dismissed.

Introduction

[1] This is an appeal by the Plaintiff against the decision of this Court dismissing the Plaintiff's application under ss 46 and 47 of the Trademark Act 2019 ("TMA") for the invalidation and/or revocation of the Defendant's trademark from the Register of Trademarks.

[2] Below are my reasons why the Plaintiff' application was dismissed.

Background

[3] The Plaintiff was established in 1992 as a specialized agency under the Ministry of Agriculture of the People's Republic of China responsible for the certification and accreditation of "green food" in China. It is the first agency in China tasked with overseeing organic food standards. Essentially, "green food" refers to edible agricultural and processed products produced and grown organically, in pollution-free and safe environments, and in accordance with prescribed technical specifications and strict quality control.

[4] Since its establishment, the Plaintiff has certified various "green food" products and as an accreditation agency, the Plaintiff has also certified food products that have been exported to various parts of the world from China. The Plaintiff averred it has acquired an extensive reputation in the quality of its work in the certification and accreditation of green food products.

[5] The Plaintiff has accordingly registered its "green foods" certification and accreditation marks as trademarks in China, Australia, Singapore, the USA, the UK, France, Portugal, Finland, and the Russian Federation. The Plaintiff's registered trademark ("Plaintiff's Trademark") is as follows:

[6] On 12 June 2019, the Plaintiff through its trademark agent in Malaysia, NBS Intellectual Sdn Bhd, applied to register its trademark in Malaysia under classes 5, 29, 30, 31, 32, and 33. The application was refused by the Registrar of Trademarks for being identical to an existing registered trademark owned by the Defendant.

[7] Subsequent thereto, the Plaintiff conducted a search on the Defendant's trademark and it was uncovered that the application to register the Defendant's trademark had been submitted by a company known as Greenfood Enterprise Sdn Bhd (Greenfood Enterprise) on 24 April 2003 and the same was subsequently accepted for registration on 24 April 2013. The trademark bearing no 03004810 in Class 30 is as shown below:

[8] Greenfood Enterprise as the registered proprietor of that trademark had transferred the trademark to the Defendant on 3 March 2014. The application for the transfer was made to My IPO on 5 March 2014 and the registration of the trademark in the Defendant's name had been effected on 16 December 2014 ("Defendant's Trademark"). (Refer exhibit CCF-1 to the Defendant's affidavit affirmed on 14 January 2021).

The Plaintiff's And Defendant's Cases

[9] The Plaintiff's case is that the Defendant's Trademark should be invalidated or revoked and removed from the Register of Trademarks pursuant to ss 46 and 47 of the TMA on the following grounds:

(i) the Plaintiff is an aggrieved party under ss 46 and 47 of the TMA because the Plaintiff is unable to register the Plaintiff's Trademark in Malaysia despite the extensive use of the Plaintiffs Trademark by the Plaintiff;

(ii) that the Defendant's Trademark has not been put to use in good faith in Malaysia by the Defendant for a period of 3 years since the registration either by Greenfood Enterprise, which has been dissolved, nor by the Defendant, who is an individual and not a business entity;

(iii) the newspaper advertisement in the Chinese language which was exhibited by the Defendant in his affidavit (refer exhibit CCF-2 to the Defendant's affidavit affirmed on 14 January 2021) to show proof of his usage of the Defendant's Trademark cannot be accept