Revocation and invalidation of trademarks requires proof of either actual use or genuine intention to use the trademark, and fraudulent registrations must be invalidated.

JUDGMENT

Mohd Radzi Harun J:

Introduction

[1] This Court allowed the Originating Summons filed by the Plaintiff under subsection 46(1) and subsections 47(1), (3) and (6) of the Trademarks Act 2019 ("TMA 2019") to revoke and invalidate the trademarks registered in the Defendant's name. This is an appeal against that decision.

Background

[2] Plaintiff is the registered proprietor of the trademark as depicted below, which will be referred to in this Judgment as "MENGNIU / Trademark":

[3] The Plaintiff is the principal operating subsidiary of the Hong Kong public listed conglomerate China Mengniu Dairy Company Limited ("CMDCL"). CMDCL is a Chinese manufacturing and distribution company of diary products with headquarters in Hohhot, inner Mongolia, manufacturing dairy products under the brand name "MENGNIU".

[4] The Plaintiff was established in 1999 and prides itself as one of the world's top-ranking dairy companies. The Plaintiff contended that it is the inventor and originator of the trademark consisting the words "MENGNIU / ". The word "MENGNIU" is taken from the full name of the Plaintiff, inner Mongolia Mengniu Diary (Group) Company Ltd, and the Chinese word "", which literally means Mongolian cow. Thus, the MENGNIU / Trademark depicts that the Plaintiff company is from Mongolia with its core business primarily diary products produced from Mongolian cow's milk.

[5] The status of the Plaintiffs trademarks registration in Malaysia are as follows:

[6] Apart from Malaysia, the Plaintiff's Trademark and "Mengniu" denomination are registered trademarks in various parts of the world including China, Mongolia, USA, UK, Singapore, New Zealand, Russia, Philippines, Switzerland, and at the EU Intellectual Property Office for Europe-wide recognition.

The Plaintiff's Case

[7] The Plaintiff discovered that the Defendant had secured registration at MyIPO for its trademark bearing registration nos 01014991 (Class 29), 01014992 (Class 30), 07021577 (Class 32), 07021578 (Class 30 and 07021579 (Class 29) in the Defendant's name (collectively referred to as "Defendant's Trademark") as follows:

[8] Upon that discovery, the Plaintiff filed the current case against the Defendant seeking the revocation and invalidation of the Defendant's Trademark on the following ground:

(a) revocation pursuant to s 46(1) on grounds of its non-use;

(b) invalidation pursuant to s 47(1) as it is likely to cause confusion, in breach of s 23(5) of the TMA 2019;

(c) invalidation pursuant to s 47(3) as it is in conflict with the Plaintiff's Trademark and that the Plaintiff had an earlier right over that mark, in breach of s 24(3); and

(d) invalidation pursuant to s 47(6) as there was fraud in the registration of that Defendant's Trademark.

Findings

Is Plaintiff An "Aggrieved Person"?

[9] Before determining whether the Plaintiff's application for revocation and invalidation could be sustained, ss 46 and 47 instructs this Court to resolve the fundamental legal issue as to whether or not the Plaintiff is an aggrieved person. If the answer to this question is in the affirmative, only then will this Court move on to consider the substantive issues of revocation and invalidation. On the contrary, if the answer to that question is in the negative, then the application shall be dismissed in limine.

[10] For the Plaintiff to pass the test and being recognised as an "aggrieved person" within the meaning of ss 46 and 47, it must firstly establish that it possesses the locus standi. Eusoffe Abdoolcader J (as His Lordship then was) in Tan Sri Hj Othman Saat v. Mohamed Ismail , , held that in determining one's locus standi in a matter involving declarations (such as the current case before this Court), the Plaintiff must assert an infringement of his statutory right of a statute which affects the Plaintiff's interests substantially or that the Plaintiff has some genuine interest in having his legal position declared, even though he could get no other relief. This proposition was expounded further b