A trademark can be revoked for non-use regardless of its registration duration, and internal use does not meet the legal standard for active use.

Overview

[1] The Plaintiff has registered its Golden Goose trademarks in Class 18 (leather, imitations of leather, and articles made from these materials) and Class 25 (articles of clothing, boots, shoes and slippers) in several countries in Asia, North America, the Middle East and Europe. Its Marks look like this:

[2] However, its two applications to register its Marks in Malaysia in those same classes were refused because of four of the Defendant's word and figurative Goose trademarks ("the Defendant's Marks") that were also registered in Classes 18 and 25. The Defendant's Marks look like this:

[3] After its investigators reported that the Defendant has not been using the Defendant's Marks for goods in Classes 18 and 25, by this Originating Summons ("OS") the Plaintiff is applying under s 46(1)(b) of the Trade Marks Act, 2019 ("the Act") to remove all four of them from the Register for non-use.

The Issues

[4] There are five issues to be decided, the first two being overriding (ie they decide the OS without going into the merits) and the other three on the merits. They are:

(1) Whether the Defendant's Marks cannot be removed under s 46(1) of the Act as they have been registered for more than five years and are therefore taken to be valid in all respects under s 53 of the Act;

(2) Whether the Plaintiff is bound to exhaust its remedies under s 29(5) of the Act before applying to remove the Defendant's Marks under s 46(1);

(3) Whether the Plaintiff is aggrieved by the Defendant's Marks;

(4) If so, whether the Plaintiff has established prima facie that the Defendant is not using the Defendant's Marks for goods in Classes 18 and 25; and

(5) If so, whether the Defendant can show it is using the Defendant's Marks for goods in Classes 18 and 25, or provide proper reasons for non-use.

Issue 1: Whether The Defendant's Marks Cannot Be Removed Under Section 46(1) Of The Act As They Have Been Registered For More Than Five Years And Are Therefore Taken To Be Valid In All Respects Under Section 53 Of The Act

[5] The Certificate of Registration for the Defendants Marks were issued in 1994. This OS was filed in 2022. Section 53 of the Act provides that, after the expiration of five years from the date of registration, the original registration of the trademark shall be taken to be valid in all respect subject to the three exceptions in ss. (a), (b) and (c). None of those apply. Thus, the Defendant argues that the Defendant's Trademarks cannot be removed under s 46(1).

[6] I rejected this contention for two simple reasons. Firstly, this action is not about the original registration or the validity of the original registration of the Defendant's Marks; it is about revoking them for non-use.

[7] Secondly, s 46(1) is about revoking registered trademarks for non-use, irrespective of how long they have been registered. The fact of registration for over five years does not make a trademark immune from revocation for non-use. In other words, the length of time it is registered is irrelevant in the context of an application under s 46(1) of the Act. If it were otherwise, then an owner of a registered trademark could perpetually sit on its registered trademark and not use it ever after five years, and make redundant s 46(1) of the Act. That could never have been the intention of Parliament in enacting s 46(1). If it was, then s 46(1) would have come with the words "subject to s 53 of the Act" or words to that effect.

[8] I therefore find that the Defendant's Marks can be removed under s 46(1) of the Act for non-use even if they have been registered for over five years and the original registration is valid.

Issue 2: Whether the Plaintiff is bound to exhaust its remedies under s 29(5) of the Act bef