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2024 MarsdenLR 2697
HIGH COURT MALAYA KUALA LUMPUR
CHIN MEI KOON – Appellant
Versus
SOO YAH HOI – Respondent
[Originating Summons No: WA-24IP-14-09/2024]
A party seeking to invalidate a trademark must comply with procedural rules and demonstrate they are an aggrieved person with a genuine interest in the trademark.
Headnote:(A) Trademarks Act, 2019 – Sections 47(1), (3), and (6) – Application to invalidate registered trademark – Affidavit in support did not comply with procedural rules – Plaintiff incorrectly named – Plaintiff not an aggrieved person – Dismissal of Originating Summons with costs awarded. (Paras 2, 12, 19, 50)
(B) Compliance with procedural rules – Parties must adhere to rules and seek exemption if necessary – Non-compliance cannot be justified by convenience. (Paras 6, 10)
(C) Definition of 'aggrieved person' – Must demonstrate a genuine interest in the trademark – Mere filing of application does not confer standing. (Paras 21, 29)
Facts of the case: The Plaintiff sought to invalidate a registered trademark but failed to comply with procedural requirements and was incorrectly named, leading to the dismissal of the application. (Paras 2, 12)
Findings of Court: The Plaintiff was not an aggrieved person and had not been truthful in its claims regarding the trademark. (Paras 19, 39)
Issues: Whether the Plaintiff complied with procedural rules, whether the correct party was named, and whether the Plaintiff was an aggrieved person. (Paras 12, 19)
Ratio Decidendi: The court emphasized the necessity of compliance with procedural rules and the requirement for a party to demonstrate a genuine interest in the trademark to qualify as an aggrieved person. (Paras 10, 21)
Result: Originating Summons dismissed with costs of RM10,000.00 awarded to the Defendant. (Paras 50)
JUDGMENT
Introduction
[1] This Originating Summons involves an application under ss 47(1), (3) and (6) of the Trademarks Act, 2019 to invalidate the following Registered Trademark No: TM2022025665 that the Defendant had registered on 29 September 2022 in Class 10 for "Cleanroom face masks; facial masks for sanitary purposes; sanitary masks for pollen isolation purposes; sanitary masks for virus isolation purposes; sanitary masks for fungus isolation purposes; sanitary masks for germ isolation purposes":
[2] Below are my reasons for dismissing the Originating Summons.
Reason 1: The Affidavit In Support Of The Originating Summons Did Not Comply With Order 92 Rule 1 And Order 41 Rule 13 Of The Rules Of , 2012
[3] Order 92 r 1(1) and (4) of the Rules of , 2012 ("Rules") provides:
"1. Language of documents (O 92 r 1)
(1) Subject to paragraph (2), any document required for use in pursuance of these Rules shall be in the national language and may be accompanied by a translation thereof in the English language, except that the translation for the purpose of O 11, r 6(4) and r 7(1) shall be prepared in accordance with r 6(5) of that Order:
Provided that any document in the English language may be used as an exhibit, with or without a translation thereof in the national language.
(4) In cases of urgency, proceedings may be commenced or conducted partly in the English Language or wholly in the English language provided that:
(a) a certificate of urgency explaining the urgency of the matter is filed by the solicitor; and
(b) copies of all such documents in the national language shall be filed within two weeks or within such extended period as the Court may allow:
(a) any document in the national language may be used as an exhibit, with or without a translation thereof in the English language; and
(b) any document in the English language may be used as an exhibit, with or without a translation thereof in the national language."
[4] Order 41 r 13 of the Rules provides:
"13. Language of affidavit (O 41 r 13)
An affidavit of a deponent affirmed outside the jurisdiction may be filed in the English language and, unless the Court otherwise orders, need not be accompanied by a translation in the national language."
[5] The affidavit in support of the Originating Summons was affirmed by a Malaysian citizen, Chin Mei Koon, in Malaysia, is intituled in the national language and is called "Afidavit Sokongan". Apart from that, the rest of it is English. Chin Mei Koon had been duly advised of the requirements of O 92 r 1 and O 41 r 13, because he expressly states in para 4 of that Affidavit:
"Having been advised by the Plaintiff's Solicitors, I seek permission that this Affidavit is made and affirmed in English for Nanjing Lingdu E- commerce Co, Ltd's understanding unless otherwise directed by this Honourable Court."
[6] Affirming the affidavit in English "for Nanjing Lingdu E-commerce Co, Ltd's understanding" is no excuse for not complying with those provisions.
[7] Firstly, "permission" means and denotes getting the approval first and then only doing the act. Chin Mei Koon did not.
[8] Secondly, parties are required to comply with the provisions of the Rules and subsequently, if need be, seek exemption or dispensation from the Court. What Chin Mei Koon has done here is elect not to comply with the Rules because he believes that doing so will be convenient for him and "Nanjing Lingdu E-commerce Co, Ltd". That is simply not on. He could just have easily complied with the Rules by affirming his supporting affidavit in the national language and annexing a translation of his Affidavit in English to it.
[9] Thirdly, it is not for any party to unilaterally decide that he will comply with the Rules only if directed to by the Court. Parties are required to comply with the Rules, not wait on the Court's directions to comply with them.
[10] Fourthly, there was no urgency for the Plaintiff to invoke r 1(4). Instead, what appears to have occurred here is that Chin Mei
