The common law ownership of a trademark is determined by its use in trade, not merely by its creation, and a party must demonstrate standing to oppose trademark registration.

JUDGMENT

Azlan Sulaiman JC:

Introduction

[1] This Originating Summons No. WA-24IP-7-06/2023 ("OS-7") is one of two between the same parties. The other is Originating Summons No WA-24IP-8-06/2023 ("OS-8"). Save that the subject matter of OS-7 and OS-8 is a different trademark, the facts and issues of both Originating Summonses are essentially the same. Consequently, the parties have agreed that the decision I make on OS 7 will apply to OS 8.

[2] OS-7 and OS-8 are appeals against the decision of the 2nd Defendant, the Registrar of Trademarks ("Registrar") made on 18 May 2023 ("Registrar's Decision"):

(i) dismissing the Plaintiffs opposition to the 1st Defendant's application to register certain trademarks; and

(ii) allowing the 1st Defendant's application to register those trademarks.

However, having discontinued the Originating Summonses against the Registrar, this decision is between the Plaintiff and the 1st Plaintiff.

The Trademarks And The Salient Background Facts

[3] On 21 October 2019, the 1st Defendant lodged Application No: TM2019038724 and Application No: TM2019038729 (collectively, "1st Defendant's Trademark Applications") to the Registrar to register the following as trademarks, all under Class 41 (collectively, "1st Defendant's Marks"):

[4] In 2021, the Plaintiff lodged Application No: TM20210111128 and Application No: TM2021011140 (collectively, "Plaintiff's Trademark Applications") with the Registrar to register the following as trademarks, all under Class 41 (collectively, "Plaintiff's Marks"):

[5] For the purposes of this Judgment, the 1st Defendant's Marks and the Plaintiffs Marks consisting of the word Palmgold and the Palmgold logos shall be referred to collectively as "Palmgold Marks". After all, even the parties can hardly dispute that are identical / similar

[6] On 4 June 2021, the Plaintiff lodged its Notices of Opposition ("Notices of Opposition") together with its Grounds of Opposition ("Grounds of Opposition") to oppose the 1st Defendant's Trademark Applications.

[7] On 6 August 2021, the 1st Defendant submitted its Counterstatement to the Notices of Opposition and Grounds of Opposition ("Counterstatement").

[8] To support and fortify their respective stands in the Grounds of Opposition and Counterstatement:

(i) The Plaintiff lodged a Statutory Declaration In Support of Opposition affirmed by a director of the Plaintiff, Kok Yin San, on 11 April 2022 together with exhs 1 to 6 (collectively, "Plaintiffs SD");

(ii) The 1st Defendant lodged an Applicant's Statutory Declaration affirmed by a director of the Plaintiff, Dickson Tan Yong Loong ("Dato' Dickson Tan"), on 10 June 2022 together with Exhibits App-1 to App-13 (collectively, "1st Defendant's SD");

[9] On 6 September 2022 the 1st Defendant further submitted its Applicant's Written Submissions dated 6 September 2022 ("Applicant's Submissions"), and on 6 October 2022 the Plaintiff filed its Opponent's Written Submissions ("Opposition Submissions").

[10] The documents mentioned in paragraphs 3-8 above (collectively, "the Materials") were the basis on which the Registrar made the Registrar's Decision. The parties have also appropriately reproduced them here as exhibits to the affidavits in support of OS- 7 and OS-8.

[11] On 18 May 2023, the Registrar issued the grounds for the Registrar's Decision ("Registrar's Grounds").

[12] On 15 June 2023 and 16 June 2023, the Plaintiff filed OS-7 and OS-8 to appeal against the Registrar's Decision pursuant to s 35(10) of the Act.

The Approach To An Appeal Under Section 35 (10) Of The Act

[13] In Merck KGaA v. Leno Marketing (M) Sdn Bhd (Registrar of Trade Marks, interested party), [2018] 5 MLJ 1 , the first question on which leave to appeal to the Federal Court was granted was:

"Whether the High Court in exercising its powers under s 28(5), (6) and (7) of the Trade Marks Act 1976 ('the TMA ') is acting in its original jurisdiction or appellate jurisdiction?"

[14] The Federal Court held that the High Court was exercising its appellate j