The Plaintiff lacked standing as a 'person aggrieved' under the Trade Marks Act and failed to prove any grounds to invalidate the Registered Trade Mark.

Judgement Key Points

Table of Content
1. court examines procedural matters in ownership disputes. (Para 1 , 2)
2. evidence regarding trademark usage and validity is crucial. (Para 3 , 4 , 5 , 6)
3. application and interpretation of statutory provisions (Para 7 , 8)
4. overall court decision and reason for dismissal (Para 9 , 10)

[1] The following questions, among others, arise in this originating summons (This OS):

(1) whether the plaintiff company (Plaintiff) can rely on 2 statutory declarations (SD) to support This OS;

(2) whether the Plaintiff is the legal, Common Law and/or beneficial owner of the registered trade mark bearing registration no. 85002490 for disposable gas lighters and smokers' articles in Class 34 [annexed as Annexure A to this judgment (Registered Trade Mark)];

(3) whether the following 3 assignments (3 Assignments) of the Registered Trade Mark are valid under, among others, s 55 of the Trade Marks Act 1976 ( TMA ):-

(a) the first assignment dated 27 March 2003 of the Registered Trade Mark (1st Assignment) from Tokai Cigarlite Industries Sdn Bhd (Tokai Cigarlite) to Fumakilla Malaysia Bhd (Fumakilla);

(b) the second assignment dated 6 June 2007 of the Registered Trade Mark (2nd Assignment) from Fumakilla to Texchem Consumers Sdn Bhd (Texchem Consumers); and

(c) the third assignment dated 2 January 2008 of the Registered Trade Mark (3rd Assignment) from Texchem Consumers to the defendant company (Defendant);

(4) whether the Plaintiff's "TOKAI" trade mark (annexed as Annexure B to this judgment) is well-known trade mark within the meaning of ss 14(2) and 70B(1) TMA read with reg 13B of the Trade Marks Regulations 1997 (TMR);

(5) whether the Plaintiff, a minority shareholder of Tokai Cigarlite, is a "person aggrieved" by the registration of the Registered Trade Mark and the 3 Assignments within the meaning of s 45(1)(a), 46(1)(a) and/or (b) TMA ;

(6) assuming that the Plaintiff is a "person aggrieved" by the registration of the Registered Trade Mark and the 3 Assignments, whether the Registered Trade Mark should be expunged from the Register of Trade Marks (Register) under s 45(1)(a) and/or 46(1)(b) TMA ;

(7) whether This OS can be defeated by estoppel and/or excessive delay on the part of the Plaintiff; and

(8) whether the Court should exercise its discretion to grant declaratory relief in This OS.

B. Plaintiff's Case

[2] In This OS, the Plaintiff prayed for the following relief against the Defendant:

(1) a declaration that the assignment of the Registered Trade Mark to the Defendant is an entry made in the Register without sufficient cause and the Registered Trade Mark registered in the Defendant's name, is an entry which remains wrongfully in the Register (Prayer 1);

(2) a declaration that the Plaintiff is the legal and beneficial owner of the Registered Trade Mark (Prayer 2);

(3) further or in the alternative, a declaration that there has been no use in good faith by the Defendant and/or the Defendant's predecessors in-title of the Registered Trade Mark for a continuous period of not less than 3 years and up to a month before the date of This OS (Prayer 3);

(4a) an O that the Registrar of Trade Marks (Registrar) rectify the Register by expunging the Defendant as the registered proprietor and by entering and recording the Plaintiff in substitution thereof as the registered proprietor of the Registered Trade Mark; or

(4b) in the alternative, by expunging and removing from the Register, the registration of the Registered Trade Mark and the whole of the entries relating to such registration

- within 14 days from the date of filing by the Plaintiff or its solicitors of an office copy of this Court O with the Registrar together with such forms and payment of fees as may be required by the Registrar (Prayer 4);

(5) costs of and incidental to This OS be borne by the Defendant; and

(6) such further or other relief as this Court deems fit.

[3] Mr Yoichi Ozawa (Mr. Yoichi), the Plaintiff's Vice-President and "Chief Administrator", affirmed the first aff

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